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IP: The Good, The Bad and The Ugly of Discovery in PTO Contested Cases

  • 12.18.12
  • Jon E. Wright; Jason D. Eisenberg
  • Inside Counsel

Patent re-examinations used to have no provisions for discovery. Under their duty of disclosure, patent owners had to provide all material relevant to patentability to the Patent and Trademark Office (PTO), but that was it—no depositions, no document discovery, no protective orders. Now, with the new contested proceedings available under the America Invents Act (AIA), limited discovery is available to the parties and the PTO has the authority to manage and to enforce it.

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