PTAB Trials

The most comprehensive patent reform in over sixty years was brought about by the Leahy-Smith America Invents Act (“AIA”), which includes a complete restructuring of the post-grant patent proceedings at the U.S. Patent & Trademark Office (“USPTO”).

Included in these reforms are the new post-grant procedures intended to provide a faster, more affordable alternative to traditional patent litigation in federal district court. Not only do these procedures have statutory time limits for completion, usually within one year of institution of a proceeding, but they impose significant restrictions on the breadth of discovery available to parties in order to facilitate compliance with the statutory time limits. Given the expedited timelines and significant differences from traditional patent litigation, to take advantage of these new processes for challenging patents, practitioners must possess a thorough understanding of the complexity of the AIA as well as how the Patent Trial and Appeal Board (“PTAB”) the entity charged with handling these proceedings, is interpreting the Act.

Patent Prosecution Experience:

Our patent lawyers’ knowledge of patent prosecution, familiarity with the operations of the USPTO, and our courtroom skills differentiate us from competitors. Baker Botts lawyers have handled more than 600 proceedings before the PTAB. This combination of skills and experience makes our lawyers the natural choice for clients looking to pursue this new patent prosecution avenue.

Baker Botts maintains a team of accomplished and experienced professionals dedicated to understanding all aspects of the post-grant proceedings and are constantly monitoring all aspects of the AIA, including the various orders and decisions being issued by the PTAB on a near-daily basis. This team issues its Post-Grant Report on a regular basis commenting on key aspects of the AIA and provides context to important PTAB decisions.

In addition, Baker Botts IP lawyers are already recognized as skilled practitioners in the field. We were involved in the rulemaking regarding the creation of the PTAB following passage of the AIA, including post-grant review, inter partes review, and covered business method review.

Final Rules:

On August 14, 2012, the USPTO published final rules in the Federal Register to implement various Sections of the AIA, which became effective on September 16, 2012.

These rules address the following:

• Inter Partes Disputes (IPR)
• Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings and Transitional Program for Covered Business Method Patents
• Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions
• Office Patent Trial Practice Guide