BOOK

Post-Grant Patent Practice, Second Edition, With 2016 Supplement

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.

MEET THE AUTHORS
book-image
Bruce H. Stoner, Jr.
A former Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences of the USPTO
Carol A. Spiegel
Former Administrative Patent Judge on the Board of Patent Appeals and Interference of the USPTO

DESCRIPTION

 

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: 

  • Analysis of post-grant practices based on key PTAB and federal court decisions
  • Significantly expanded discussion of AIA statutes and final regulations governing, inter alia, discovery, claim construction and amendment, real party in interest, joinder, concurrent/multiple proceeding
  • Revised tables and appendices including the AIA, statues, and regulations governing all post-grant practice 

 


Supplement Information

The 2016 Supplement adds:

  • Changes to PTO rules and guidance
  • Decisions from the Patent Trial and Appeal Board and from the federal courts affecting post-grant practices
  • Insight into how pending Supreme Court cases and proposed statute and rule changes might affect post-grant practice
  • Revised tables and appendices including the AIA, other statutes, and rules governing post-grant practices

 


AUTHORS

Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.
He served as Chief Judge until his retirement from federal service when he joined Greenblum & Bernstein P.L.C. Judge Stoner serves as Chairman of G&B’s Reexamination and Post-Grant Review Group and as an expert witness and consultant on patent office practice and procedure.

Nancy J. Linck formerly served as the Solicitor for the USPTO and as an Administrative Patent Judge  on the Board of Patent Appeals and Interferences of the USPTO, currently the Patent Trial and Appeal Board. Judge Linck is now with the intellectual property law firm of Rothwell, Figg, Ernst & Manbeck in Washington, DC, where she focuses on post-grant practice before the Office and is a member of the firm’s USPTO Trial Practice Group.

Judge Spiegel is a Master at Giles Rich American Inn of Court and maintains membership in the American Bar Association, the American Intellectual Property Law Association, and the American Society for Clinical Pathology.

Richard Torczon is Of Counsel in the Washington, D.C. office of Wilson Sonsoni Goodrich & Rosati, where he is a member of the patent litigation practice. Previously he was an Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB), where he worked on patent interferences and appeals. During his tenure at the PTAB, he wrote more than a thousand opinions and orders on patent appeals, petitions, motions, and briefs.

CONTENTS

View full tables of contents and read the book’s preface or introduction.

REVIEWS

Read what others have to say about this Bloomberg BNA book.

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.”

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 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.”

Dr. Scott A. Chambers

Partner and Head of Intellectual Property Section Patton Boggs, LLP, Washington, DC