The New Post-Issuance Procedures: The PTO's Final Rules on Discovery and Trial Practice

The PTO’s newly-issued rules governing these proceedings provide discovery and evidentiary provisions that allow parties to develop and present evidence that to date has only been available through federal court litigation.

The landscape for patent disputes is changing rapidly. The Patent and Trademark Office recently issued rules that will govern the implementation of four new procedures for challenging issued patents (84 PTCJ 653, 8/17/12). These new procedures, authorized by the 2011 Leahy-Smith America Invents Act, will substantially expand the bases upon which patents can be challenged before the PTO, and will incorporate discovery and trial practice more familiar to litigators from federal court and administrative proceedings like International Trade Commission trials.

Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 84 PTCJ 828, 09/14/2012. Copyright 2012 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com