Patent Office Litigation – Second Edition 2017

“If you want bogus advice, half-baked opinions, and nonsense from amateurs, this is the wrong book. But if you want practical guidance, detailed statistics, and specific recipes that will allow you to win patent office litigation, you have arrived.” – Greg Dovel, Dovel & Luner LLP

The second edition of Patent Office Litigation provides a fresh and comprehensive exploration of all aspects of the contested patent proceedings before the PTAB.

This edition explores the interplay with the Federal court system and other governmental agencies and its impact on the global patent landscape. The first edition of Patent Office Litigation was created in response to the biggest changes in patent law in 60 years stemming from the 2012 America Invents Act. Five years later, this extensively updated edition of Patent Office Litigation covers all aspects of the contested patent proceedings before the United States Patent & Trademark Office, including Inter Partes Reviews (IPRs), Covered Business Method Reviews (CBMs), Post Grant Reviews (PGRs), Derivations, and Supplemental Examination. To view our promotional flyer which features a discount code, please click here.

Table of Contents

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1. The Evolution of Patent Office Litigation
2. New Global Patent Landscape
3. The Petition
4. Petitioner’s Expert Declaration
5. Petitioner Reply
6. Patent Owner Preliminary Response
7. Patent Owner Response
8. Pre- and Post-Institution Decision Petitioner and Patent Owner Practice
9. Evidentiary Issues
10. Oral Hearing and Demonstratives
11. Post Final Written Decision Practice and Estoppels
12. Challenges Under the Administrative Procedure Act (“APA”)
13. Office-District Court Interface
14. Section 337 and the American Invents Act: The Effect of the AIA on Parallel Patent Enforcement Proceedings Before the United States International Trade Commission
15. Office-Federal Court Interface
16. PTO–IPR and CBM Proofing Patents
17. Design Patents
18. Trade Secrets: Considerations in Light of the American Invents Act
19. Post-Grant Proceedings for Biologics and Biosimilars
20. Anti-Counterfeiting (and Brand Enhancement and Protection Strategies)
21. Interplay Between Hatch-Waxman and the American Invents Act: The New Face of Pharmaceutical Litigation
22. EU Enforcement
23. Foreign Invalidity and Nullity Proceedings
24. Third-Party Submissions Derivation Proceedings
25. Ex Parte Reexamination (XPREX)
26. Inter Partes Reexamination (IPREX)
27. Supplemental Examination
    Also Includes: Table of Laws and Rules and Table of Cases