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.

September 14, 2012

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) 

The articles on our website include some of the publications and papers authored by our attorneys, both before and after they joined our firm. The content of these articles should not be taken as legal advice. The views and opinions expressed in this article are those of the author(s) and do not necessarily reflect the views or official position of Robins Kaplan LLP.


Christopher K. Larus


Chair, National IP and Technology Litigation Group

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