Tag Archives: expert declarants

Lessons From The First Year Of Post Grant Proceedings In The U.S.

By Tom Engellenner Much has occurred during the first year after the America Invents Act (AIA) established several new procedures for the public to challenge issued patents and a new administrative court to hear these cases. Here are some observations … Continue reading

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What is Inconsistent Information and When Must Such Information be Disclosed?

By Kelly E. Rose As we’ve previously discussed, the inter partes review (IPR) and post grant review (PGR) procedures in the USPTO allow for parties to take discovery.  Specifically, Rule 42.51 enumerates the permitted categories of discovery, including: (a) mandatory … Continue reading

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PTAB Issues Guidelines on Foreign Language Testimony

by Tom Engellenner The new AIA post grant proceedings not only authorize depositions but also make provisions for deposing witnesses in a foreign language. Similar to rules that have governed foreign language depositions in PTO interference proceedings (37 C.F.R. 41.157(d)), … Continue reading

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Using Experts in AIA Inter Partes Review Proceedings – Part 1

By Tom Engellenner Although an “expert opinion” in the form of a declaration is not a mandatory part of a petition for patent review under the new AIA proceedings (i.e., inter partes review, CBM review or post-grant review), opinions of … Continue reading

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