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America Invents Act › Trial Practice Guidance

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -
Fitch, Even, Tabin & Flannery LLP

[Webinar] Discretionary Denial and Beyond: Recent Developments in AIA Trial Practice - July 27th, 9:00 am - 10:00 am PDT

Fitch, Even, Tabin & Flannery LLP on

Since the introduction of inter partes review proceedings in 2012, AIA trial practice has been constantly evolving and the USPTO has signaled that big changes may be ahead. Starting with the USPTO director’s 2022 memorandum...more

Perkins Coie

Real Parties-in-interest: Guidance On Who Is An RPI —and Who Is Not—in Post-grant Proceedings

Perkins Coie on

In post-grant review proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, practitioners who omit any of the parties with an interest in the matter could face consequences as severe as...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned

Mintz - Intellectual Property Viewpoints on

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more

Womble Bond Dickinson

Proposed Novel PTAB Discretionary Denial Analysis in View of Parallel Petitions

Womble Bond Dickinson on

The authors have recently proposed alternative analyses for the discretionary denial of IPR and PGR petitions involved in parallel district court litigation, as well as for the discretionary denial of serial petitions filed...more

Jones Day

BREAKING: PTAB Publishes Final Rule Package

Jones Day on

On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide. The one substantive change of note is the removal to deference...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Will The USPTO Codify Its Discretionary Determination Of Deciding Whether To Institute AIA Trials?

Rothwell, Figg, Ernst & Manbeck, P.C. on

On October 20, 2020, the United States Patent and Trademark Office (“USPTO” or “Office”) published in the Federal Register “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board”...more

Jones Day

PTAB Requests Comments Regarding Discretionary Institution Issues

Jones Day on

The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 PTAB Year in Review: Analysis & Trends: Petitioners Beware Discretionary Denial

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more

Wilson Sonsini Goodrich & Rosati

2019 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati on

Wilson Sonsini Goodrich & Rosati is pleased to present our 2019 PTAB Year in Review. We begin the 2019 PTAB Year in Review with a review of 2019 petition filings at the Patent Trial and Appeal Board (PTAB) and then take a...more

Fish & Richardson

2019 Post-Grant Report

Fish & Richardson on

The Patent Trial and Appeal Board (PTAB) remains the forum of choice for challenging the validity of patent claims. However, it is notable that a comparison of 2019 and 2018 statistics reveals about a 30 percent decline in...more

Jones Day

Practice Tool: PTAB Publishes Consolidated Practice Guide

Jones Day on

In November 2019, the United States Patent and Trademark Office published a second edition of the America Invents Act (AIA) Trial Practice Guide (Practice Guide) to incorporate the Practice Guide updates released in August...more

WilmerHale

Potential Changes to PTAB Practice on Multiple IPR Petitions

WilmerHale on

An important set of factors the Patent Trial and Appeal Board considers when deciding whether to institute inter partes review concerns the filing of multiple petitions challenging the same patent. Part I of this two-part...more

Fish & Richardson

PTAB Publishes Consolidated Trial Practice Guide

Fish & Richardson on

The USPTO has published a new, consolidated edition of the Patent Trial Practice Guide (TPG) that incorporates updates released in August 2018 and July 2019 into the original August 2012 TPG. ...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - October 2019

Wilson Sonsini Goodrich & Rosati on

Nothing Personal: Supreme Court Says Feds Lack Post-Grant Standing - With post-grant trials passing their seventh anniversary, the courts are still working out the kinks. The U.S. Supreme Court has already provided...more

Kilpatrick

5 Key Takeaways - PTAB Trials Insights and Strategies-Leveraging Recent Development at the PTAB

Kilpatrick on

Kilpatrick Townsend partners John Alemanni, Tina McKeon, and Wab Kadaba recently presented to clients on the topic of “PTAB Trials Insights & Strategies – Leveraging Recent Developments at the PTAB” at the annual Kilpatrick...more

Jones Day

August Boardside Chat Recap Regarding Trial Practice Guide Update

Jones Day on

On August 8, 2019, the Patent Trial Appeal Board held a Boardside Chat webinar to discuss the July 2019 changes to the AIA Trial Practice Guide. Vice Chief Administrative Judges Michael Tierney and Tim Fink led the discussion...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

Jones Day

Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

Jones Day on

On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The...more

Knobbe Martens

USPTO Publishes PTAB Trial Practice Guide Update

Knobbe Martens on

On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant...more

Jones Day

NEWS: USPTO Issues Updates To PTAB Trial Practice Guide

Jones Day on

The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board. The USPTO published the original TPG in August 2012, concurrent with the...more

Polsinelli

PTAB Issues a Second Update to the AIA Trial Practice Guide

Polsinelli on

The Patent Trial and Appeal Board (PTAB) has just issued a second update to the American Invents Act (AIA) Trial Practice Guide.     The updated sections of the Trial Practice Guide include...more

Jones Day

PTAB Issues Updated Guidance on Motions to Amend in AIA Trials

Jones Day on

On March 7, 2019, the PTAB issued a new precedential order that helps to clarify a petitioner’s briefing rights in view of a recent update to the AIA Trial Practice Guide....more

Troutman Pepper

Year In Review: Changes In PTAB Practice In 2018

Troutman Pepper on

A number of significant changes occurred in 2018 at the U.S. Patent and Trademark Office (USPTO). To begin with, in February 2018, a new USPTO Director took office. ...more

WilmerHale

Key Takeaways from the First Updates to the AIA Trial Practice Guide

WilmerHale on

On August 13, the Patent Trials and Appeal Board (PTAB or Board) published updates to the AIA Trial Practice Guide (the TPG Update). The TPG Update is a supplement to the original Trial Practice Guide (TPG), which the PTAB...more

Knobbe Martens

Recent Update on Patent Trial Practice Guide

Knobbe Martens on

The United States Patent and Trademark Office (USPTO) published an update to the AIA Trial Practice Guide (‘‘Trial Practice Guide’’) in August 2018 to revise guidance on practices before the Patent Trial and Appeal Board...more

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