PTAB Handbook, Fourth Edition

New from Bloomberg BNA, this invaluable handbook gathers intellectual property (IP) decisions issued by the Patent Trial and Appeal Board (Board or PTAB) of the United States Patent and Trademark Office (USPTO) into a single, useful reference that informs readers of the best methods for conducting work before the Board.

Price: $215 Main Volume

Meet The Author

William P. Atkins


Practice before the Patent Trial and Appeal Board with confidence

The PTAB Handbook, Fourth Edition provides detailed, thoughtful analyses of the various rules, regulations, and caselaw which dictate the practice at the Patent Trial and Appeal Board (Board or PTAB) of the United States Patent and Trademark Office (USPTO). The Handbook comprehensively summarizes and organizes the enormous number of PTAB decisions and their appeals into a single, useful reference which advises readers on the best practices for conducting work before the PTAB. This invaluable Handbook helps readers navigate this process better by (1) explaining how the PTAB has been making decisions and applying its rules, (2) providing timely, comprehensive guidance from the PTAB’s ever-growing and ever-evolving body of caselaw, (3) offering extensive citations to and analysis of the ever-growing and ever-changing PTAB decisions issuing from the 270+ PTAB Administrative Patent Judges since the start of the PTAB as well as from the PTAB appeals to the Federal Circuit.


As PTAB petitions continue to be filed in record numbers and the PTAB cases and procedure continue to change and evolve, the Fourth Edition charts and incorporates these new decisions and developments to help readers employ the latest strategies in the most effective way.  Also new in the Fourth Edition:


  • Analysis of Supreme Court decisions in Oil States finding that IPR does not violate Article III or the Seventh Amendment, and in SAS Institute Inc. v. Iancu prohibiting the PTAB from partially instituting an inter partes proceeding

  • August 2018 updates to the Office Patent Trial Practice Guide

  • Immunity claims after the Federal Circuit’s decision affirming the PTAB’s rejection of immunity from IPRs in Mylan Pharms. Inc. v. Allergan Inc.

  • New discussions of non-institution; request for rehearing; appellate recourse; and termination of PTAB proceedings

  • USPTO guidance on motions to amend after Aqua Products rejected its burden-shifting regulation, and general guidance on procedures for motions to amend

  • The implications and ramifications of the Federal Circuit overruling of Achates, determining that the time-bar determinations under §315(b) are appealable

  • Patent agent privilege at the PTAB under 37 C.F.R. §42.57

  • USPTO procedures for remand from the Federal Circuit for further proceedings

Revisions of this handbook are published three times per year on Bloomberg Law and provided in an annual revised print edition.


Summary of Contents
Chapter 1. Introduction

  • Chapter 2. General Prefiling Considerations
  • Chapter 3. General Procedure
  • Chapter 4. The Petition
  • Chapter 5. Patent Owner’s Preliminary Response and Mandatory Notices
  • Chapter 6. Discovery and Evidence
  • Chapter 7. Motions
  • Chapter 8. Institution
  • Chapter 9. Preliminary Board Decisions Relating to Other Proceedings
  • Chapter 10. Scheduling Orders and Issues
  • Chapter 11. Patent Owner’s Response After Institution
  • Chapter 12. Petitioner’s Reply to Patent Owner’s Response
  • Chapter 13. Amending Claims
  • Chapter 14. Oral Hearings and Post-Trial
  • Chapter 15. Appeals to the Federal Circuit
  • Appendices • Index • Table of Cases


Pillsbury Winthrop Shaw Pittman LLP is a full-service law firm with a keen industry focus on energy & natural resources, financial services, real estate & construction, and technology. Based in the world's major financial, technology and energy centers, Pillsbury counsels clients on global regulatory, litigation and corporate matters. 


William P. Atkins is a partner in the Intellectual Property Section of Pillsbury Winthrop Shaw Pittman LLP. Bill has been lead counsel in more than 100 intellectual property litigations during his 23 years with the firm. He is a trial attorney and a registered patent attorney and is particularly grateful to the many Pillsbury attorneys and law clerks that helped make this publication a reality.



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