The first comprehensive treatise offering full coverage of post-grant practice after AIA
Post-Grant Patent Practice, written by four former Administrative Patent Judges of the United States Patent and Trademark Office (USPTO), is an invaluable reference that provides guidance to patent professionals regarding all USPTO post-issuance procedures that are designed to address possible mistakes made during the prosecution of a patent application, including mistakes made by the USPTO. This new treatise from Bloomberg BNA marks a turning point between the ebb of the first-to-invent system and the flow of the “first-inventor-to-file” system, capturing the full nuance of the still-persisting “patent interference” practice before the USPTO and the now-superseded “inter partes reexamination.”
Post-grant practice has expanded significantly due to the availability of inter partes proceedings, particularly those introduced by the America Invents Act (AIA). Post-Grant Patent Practice analyzes the procedures introduced by the AIA beginning September 16, 2012, both in text and in charts, explaining them from pre-filing considerations through appeal to the U.S. Court of Appeals for the Federal Circuit, or, alternatively, to a district court and then the Federal Circuit. Analyzed procedures consist of:
The treatise also examines many other important procedures, including reissue, ex parte and inter partes reexamination, disclaimers, certificates of correction, and interference practice.
This comprehensive treatment of the old and the new post-grant practice before the USPTO, coming in the immediate aftermath of the AIA, serves as an invaluable reference for both patent practitioners appearing before the USPTO and patent litigators. Post-Grant Patent Practice offers the only comprehensive coverage of post-grant practice, including new procedures introduced by the AIA.
About the AuthorsNancy J. Linck is an Attorney at Rothwell, Figg, Ernst & Manbeck, P.C. where she specializes in intellectual property law, particularly in the biotechnology and pharmaceutical areas.
Bruce H. Stoner, Jr. is Of Counsel at Greenblum & Bernstien, P.L.C. He was a former Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office.
Lee E. Barrett serves as Of Counsel at Oblon Spivak in the firm's Electrical and Mechanical Patent Prosecution and Patent Reexamination/Reissue groups.
Carol A. Spiegel is on the Patent Trial and Appeal Board and was a former Administrative Patent Judge on the Board of Patent Appeals and Interferences.
“Growing the patent-minding role of the USPTO, which was made feasible by the AIA’s revolutionary changes to the patent law, will make an understanding of the Office’s handling of contested matters involving issued patents a fundamental aspect of the catechism of all patent practitioners, whether aspiring or long-tenured. Practitioners, thus, may best serve their inventor-clients by reserving a place for this treatise in a fingertips-accessible location at the center of their desks.” —Robert A. Armitage, Formerly Senior Vice President and General Counsel, Eli Lilly and Company, and Immediate Past Chair, American Bar Association Section of Intellectual Property Law
“This comprehensive treatise provides a thorough, authoritative, and urgently needed examination of post-grant patent practice as it will unfold under the 2011 America Invents Act. Geared towards patent practitioners and IP managers in corporate and private practice, this valuable resource combines in-depth explanations of the new post-grant proceedings with practice tips and strategic considerations to guide its readers through some of the biggest changes to U.S. patent law in living memory.”—Hans Sauer, Associate General Counsel for Intellectual Property, Biotechnology Industry Organization, Washington, DC
“This comprehensive treatise provides not only proper legal background and support, but also insight into how the Patent Office’s Board of Appeals is actually likely to address the varying aspects of post-grant patent practice. Such an understanding is invaluable for practitioners facing the dramatic changes brought about by the America Invents Act. The book is a must-buy for agency practitioners and district court litigators alike.”—Scott Chambers, Patton Boggs, Washington, DC
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