In November 2019, the United States Patent and Trademark Office published a second edition of the America Invents Act (AIA) Trial Practice Guide (Practice Guide) to incorporate the Practice Guide updates released in August 2018 and July 2019 into the original August 2012 Practice Guide. The second edition consolidates all updates of the Practice Guide into a single document. This second edition also includes additional revisions for greater consistency across all sections of the newly consolidated guide.

Beyond consolidation of revisions made to the Trial Practice Guide August 2018 and July 2019, the current Guide contains additional updates regarding:

  • Institution of trial after SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018)
  • Use of sur-replies in lieu of observations
  • How parties may contact the Board to request an initial conference call
  • Use of word counts
  • Updates to the sample scheduling order for derivation proceedings
  • Updates to the default protective order

The consolidated Trial Practice Guide can be accessed here.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.

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