Book

The PTAB Handbook, Third 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: $210.00 Main Volume


Meet The Author

William P. Atkins
Editor-in-Chief
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Description

Practice before the Patent Trial and Appeal Board with confidence

The PTAB Handbook, Third Edition comprehensively summarizes intellectual property (IP) decisions issued by the Patent Trial and Appeal Board (Board or PTAB) of the United States Patent and Trademark Office (USPTO) and their appeals into a single, useful reference that advises readers on the best methods for conducting work before the PTAB.

This invaluable handbook:

  • Helps readers navigate this process more successfully
  • Continues to provide timely, comprehensive guidance from the PTAB’s growing body of decisions on how to work within the complex rules and procedures governing the Board
  • Offers extensive citations to and analysis of the PTAB decisions issuing from the 270+ Administrative Patent Judges since the start of the PTAB and the related PTAB appeals to the Federal Circuit
  • Explains how the Board is and has been making decisions and applying its rules

As IPRs are being filed in record numbers in 2017, and the decisions issuing from the PTAB continue to define uncharted areas and change even the existing caselaw, the Third Edition charts these new decisions to help readers employ the latest strategies in the most effective way.  

Also new in the Third Edition:

  • Discussion of the most recent PTAB decisions, as well as the U.S. Supreme Court’s and Federal Circuit’s latest decisions
  • Many more developing trends and insights into PTAB litigation

Revisions of this handbook are published three times per year on Bloomberg Law and provided in an annual print edition, and the book continues to grow along with the PTAB’s body of work.

  • 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

Author

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.

 

Contents

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