Six-Month Report Card: Post-Issuance Proceedings Under the AIA


Introduction -

On September 16, 2012, the U.S. Patent and Trademark Office (USPTO) implemented the provisions of the America Invents Act (AIA) to provide post-issuance patent challenge options to third parties (referred to herein as the opposition program). The opposition program includes post-grant review. inter partes review (IPR), and the Transitional Program for Covered Business Methods (covered business method review, or CBM) challenge proceedings, all held before the newly formed Patent Trial and Appeals Board (PTAB).

Post-issuance proceedings are intended to provide a streamlined alternative to litigation, with the PTAB potentially issuing final validity decisions within one year after a challenge is filed. Post-issuance proceedings may be used as a strategy to stay district court litigation, develop claim construction positions, or focus arguments on particular claims. Additionally, post-issuance proceedings may decrease potential costs to the patent challenger. Indeed, the PTAB recently limited discovery in a post-grant proceeding, explicitly noting that "discovery is limited as compared in district court" and clarifying that discovery is not available for material "likely to yield relevant, admissible evidence," but only for material that is itself relevant and admissible.

Please see full white paper below for more information.

LOADING PDF: If there are any problems, click here to download the file.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDermott Will & Emery | Attorney Advertising

Written by:


McDermott Will & Emery on:

Popular Topics
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.