Joel Miller, Esq.

Published September 2017, 416 pp., 7 x 10 softcover. ISBN: 978‑1‑936543‑03‑8.

To purchase the book, please visit PG Direct.

This book presents the procedural requirements for practice before the USPTO Patent Trial and Appeal Board, and covers appeals from patent examination and the America Invents Act trial proceedings: inter partes review, post‑grant review, covered business method patent review, and derivation. The book draws from statutes, legislative history, final rules and rulemaking notices, the USPTO Manual of Patent Examining Procedure (MPEP), and case law, as well as principles of appellate and trial advocacy tailored to practice before the Board.

The second edition incorporates Federal Circuit and PTAB opinions rendered since the publication of the first edition of this book in 2013, including many discussing procedural issues arising in trial proceedings. Since a significant number of the appeals pending at that time were governed by the 2004 rules, the first edition covered both the 2004 and the 2011 versions of the rules; the second edition focuses solely on the 2011 rules, simplifying the discussion of appeal procedures

Chapter Overview

Part I — The Board
 1  Jurisdiction and precedent
 2  The Board – structure and operation

Part II — Appeals
 3  Overview of the appeal process
 4  Matters from which an appeal may be taken
 5  Laying the groundwork for appeal
 6  Pre-appeal brief requests for review
 7  The notice of appeal
 8  Amendments, affidavits, and evidence
 9  The appeal brief
10  The examiner’s answer
11  Reply and rebuttal briefs
12  Jurisdiction over the appeal

Part III — Trials
13  Overview of the trial process
14  Grounds and eligibility
15  Preparing and filing trial documents
16  Petitions and motions
17  Protective orders and motions to seal
18  Institution of a trial proceeding
19  Responding to the petition
20  Discovery, testimony, and evidence
21  Settlement, estoppel, and intervening rights

Part IV — Decision making and judicial review
22  Oral hearings and arguments
23  The Board’s decision-making process
24  Judicial review

Organization of the book

The book is divided into four parts: the Board, appeals, trials, and decision making and judicial review. Part I covers the legal, structural, and operational background of the Board. The second and third parts provide overviews of the respective appellate and trial processes at the Board and discuss the legal and procedural requirements for each. Part II focuses on the appeal process, from the application stage through briefing, offering advice on drafting persuasive and compliant appeal briefs, while Part III discusses eligibility requirements, petitions, motion practice, discovery, and estoppel in trial proceedings. The fourth and final part covers oral argument, the Board’s decision-making process, judicial review, and standards of review.

The reader should have a thorough understanding of patent prosecution practice. Part III, trials, was written with the assumption that the reader possesses the skills for conducting oral and written discovery and motion practice in the courts.

Periodically, new developments, rule changes, and other resources will be posted on this website at Current Developments at the PTAB.