Preface

• Author: Erika Harmon Arner - Kathleen A. Daley - Michael J. Flibbert
• Pages: xxi-xxii

XXI

This book seeks to assist practitioners representing patent owners and chal-

lengers in trials before the Patent Trial and Appeal Board (PTAB) of the

United States Patent and Trademark Ofce (the Ofce). It is intended to be

a concise, practical desk reference for practicing attorneys, in-house coun-

sel, and nonattorney professionals (e.g., patent agents) involved in PTAB

proceedings. We have included many practical tools throughout the book,

including strategic tips and checklists. Perhaps the most useful, we hope, is

Chapter 5, which provides a comprehensive synthesis of the PTAB’s rules,

important decisions, formal guidance, and informal guidance, organized

by topic.

PTAB trials, introduced to U.S. patent law by the 2012 Leahy-Smith

America Invents Act, are a hybrid of conventional patent prosecution and

patent litigation practices. Successfully navigating a PTAB trial may entail

such varied tasks as analyzing highly technical prior art, drafting persuasive

petitions, arguing motions, deposing scientic experts, drafting patent-claim

amendments, and arguing at an oral hearing before an expert three-judge

panel. This book’s lead authors, all seasoned patent ofce practitioners and

experienced patent litigators, are uniquely qualied to provide guidance to

practitioners faced with the myriad challenges of a PTAB trial.

Disclaimer

We provide the material in this guide for information purposes only and

do not render legal advice or provide a substitute for legal counsel. The

information found here may or may not reect the most current legal devel-

opments or rules. Accordingly, practitioners must review current rules to

identify changes the PTAB may have adopted and conduct independent

Preface

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