Mind + Muscle

technical minds + legal muscle


"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

Patent Office Litigation, 2nd Edition

Table of Contents


  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

  25. Derivation Proceedings

  26. Ex Parte Reexamination (XPREX)

  27. Inter Partes Reexamination (IPREX)

  28. Supplemental Examination

    Also Includes: Table of Laws and Rules and Table of Cases



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.



Product Details

Paperback: 954 Pages

Publisher: Thomson Reuters Westlaw

Release Date: 2017

Language: English


Price: $375.00


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