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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
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