Written by four former Administrative Patent Judges of the U.S. Patent and Trademark Office (PTO), this treatise is an invaluable reference that provides guidance to patent professionals regarding all PTO post-issuance procedures to challenge invalid patents and address possible mistakes made during the prosecution of a patent application, including mistakes made by the PTO. It provides an in-depth analysis of post-grant review, including covered business method patent review and inter partes review under the AIA, reissue, disclaimers, certificates of correction, and interference practice. It also reviews relevant PTAB and federal case law, and provides the regulations and U.S. Code sections relating to post-grant practice.
In addition to its in-depth analyses of the AIA review and derivation proceedings, the treatise examines many other important procedures, including reissue, ex parte and inter partes reexamination, disclaimers, certificates of correction and interference practice.
The Second Edition of Post-Grant Patent Practice, co-published with the American Intellectual Property Law Association (AIPLA), significantly and thoroughly revises the First Edition based on the AIA’s U.S. Code sections, technical corrections, and final regulations, as well as the PTAB interlocutory and final decisions issued since the First Edition was published. The Second Edition also adds expanded coverage based on recent developments, including relevant federal court case law. Finally, the Second Edition includes the PTO’s final regulations and the U.S. Code sections governing all post-grant practice making the Second Edition a complete reference guide to post-grant practice.
Highlights in the Second Edition include:
The 2016 Supplement adds:
Praise for the first edition of Post-Grant Patent Practice
“Post-Grant Patent Practice 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.”
Associate General Counsel for Intellectual Property Biotechnology Industry Organization, Washington, DC
“This comprehensive treatise provides not only proper legal background and support, but 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. I consider the book a must-buy for agency practitioners and district court litigators alike.”
Partner and Head of Intellectual Property Section Patton Boggs, LLP, Washington, DC
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