The PTAB Discovery Procedure under Post-Grant Proceedings

• Main Author: 陳冠穎
• Other Authors: 馮震宇
• Format: Others
• Language: zh-TW
• Published: 2016
• Online Access: http://ndltd.ncl.edu.tw/handle/49460803080065248962

碩士 === 國立政治大學 === 科技管理與智慧財產研究所 === 104 === Intellectual property plays a critical role in corporate development nowadays. Its management, protection and strategy-forming can be difficult for companies at times. Patent management, for instance, is one of the most challenging issues. Many companies use patent litigation in U.S. as a tool to exclude their competitors from entering the market, or to extract large amounts of damages and loyalties, causing Taiwanese companies to spend more money on litigation and settlement rather than on technology studies and development. As the scale of patent litigations starts to distort patent system, the U.S. government decided to take action. In 2011, the Leahy–Smith America Invents Act (AIA) was passed by Congress and was signed into law by President Barack Obama on September 16, 2011. Representing the most significant change to the U.S. patent system since 1970, AIA creates administrative remedy proceedings to be conducted by the Patent Trial and Appeal Board (PTAB) as a cost-effective alternative to litigation. However, to comply with statutory provisions and legislative intent of the AIA, the strong public policy leads to a limit discovery in AIA proceedings. Therefore, the scope of discovery in AIA proceedings before PTAB differs significantly from the scope of discovery, which is generally available under Federal Rules of Civil Procedure in district court litigation. To gain better understanding of the practice of discovery in AIA trials, and the trend regarding how PTAB accomplish AIA’s legislative intent through its decisions on motions for additional discovery, this study will start with introduction of the AIA post grant remedies including PGR, IPR and CBM. By stating the clarification of discovery concept in Federal Rules of Civil Procedure, this study will navigate the implementation of discovery in AIA trials and analyze decisions given by PTAB. Through observing the trend of PTAB discovery decisions, this study propose some possible solutions and strategies for Taiwanese company participating in post-grant proceedings before PTAB.