5 Do's and Don'ts in Post-Grant Proceedings

Sept. 16, 2013, marked the one-year anniversary for post-grant proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). The first oral arguments were heard in a covered business method review (CBM) and in an inter partes review (IPR) resulting in one final decision in SAP America Inc. v. Versata Development Group Inc., CBM2012-0001, paper No. 70, June 11, 2013.

The PTAB also publishes representative decisions and orders in which it discusses issues ranging from scheduling orders and motions to amend to motions for additional discovery. We provide below a top five do’s and don’ts list.

The representative decisions and orders issued by the PTAB provide guidance to those handling post-grant proceedings. While there are many do’s and don’ts, we offer the following top five based on our experience as lead counsel in a number of these proceedings, our review of the various PTAB decisions and orders and our analysis of the statistics.

To read the full list of dos and don'ts, click here: 5 Do's and Don'ts in Post-Grant Proceedings