When the America Invents Act, creating the post-grant review process before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board, was first implemented, a patent owner was barred from including testimonial evidence in the optional patent owner preliminary response. However, the PTO recently implemented a set of new rules for AIA inter partes review (IPR) petitions, which took effect May 2, 2016. In this article,  Lionel M. Lavenue, R. Benjamin Cassady, and  Kara A. Specht will address how one of these newly implemented rules allows patent owners to provide more robust preliminary responses to petitions, which can now include testimonial evidence

Previously published in Bloomberg BNA

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