Smith-Leahy AIA

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What is the effective date for the Best Mode provision in the AIA?

The effective date for the Best Mode provision in the AIA is September 16, 2011.

Does AIA's amendment to 35 U.S.C. 282(a)(3) impact current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112?

No. As this change is applicable only in patent validity or infringement proceeedings, it does not change current patent examination practices set forth in MPEP 2165

What is the impact of AIA's amendment to 35 U.S.C. 282(a)(3) concerning Best Mode?

The failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As stated, above this new practice does not affect the patent examination practice.

What is the effective date for the derivation provision in the AIA?

The effective date for the derivation provision in the AIA is March 16, 2013

What are the requirements for seeking a derivation proceeding?

A derivation proceeding requires that an applicant for patent file a petition to institute the proceeding. The petition must set forth with particularly the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention.

What statutory requirements must a petitioner meet in a petition for a derivation proceeding?

In a petition for a derivation proceeding, the petitioner must (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

What is the standard for instituting a derivation proceeding and who will decide whether the standard is met?

A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition. The Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) will decide petitions and conduct any ensuing derivation proceeding.

How will the Board conclude a derivation proceeding?

The AIA provides that where a derivation proceeding is instituted and not dismissed, the Board shall issue a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application without authorization.

Can a party to a derivation proceeding appeal the Board's final decision?

Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit

In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way?

Yes, the partied to a derivation proceeding may resort to binding arbitration to determine inventorship.

Can the parties to a derivation proceeding engage in settlement?

Yes, the AIA permits the parties to a derivation proceeding to settle. A settlement in a derivation proceeding will be accepted by the Board unless inconsistent with the evidence of record.

What is the effective date of the First Inventor to File provision of AIA?

The effective date for the First Inventor to File provision of AIA is March 16, 2013

I'm an independent inventor planning on filing a new nonprovisional patent application on October 1, 2011. Will my patent application be subject to the first-inventor-to-file provisions?

No. The first-inventor-to-file provisions become effective on March 16, 2013. Thus, an application filed before that date would not be subject to the first-inventor-to-file provisions. The application will be treated under the first-to-invent provisions of the law in effect on September 15, 2011.

Once the first-inventor-to-file provisions take effect on March 16, 2013, would someone who copies my idea and files a patent application on the subject matter before I do be entitled to a patent?

No. Only inventors are entitled to a patent. Someone who copies another's idea cannot be the inventor

My co-inventor disclosed our invention at a trade show one month before the filing date of our application. Will that disclosure prevent us from obtaining a patent?

No, regardless of whether the application was filed before or after the first-inventor-to-file provisions take effect on March 16, 2013, disclosure one month prior to a filling date is not prior are to the claimed invention by virtue of a one year grace period.

What is the effective date of the provisions effecting inter partes reexamination?

The effective date of the inter parted reexamination provisions is September 16, 2011

Did the AIA change the standard for inter partes reexamination?

Yes, Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. The standard for ex parte reexamination remains unchanged.

If a request for inter partes reexamination was filed before the enactment date of the AIA, but a determination on the request has not yet been issued, which standard will be applied in determining whether to grant inter partes
reexamination?

The Substantial NEw Question of patentability (SNQ) standard is applicable in deremining whether the request for inter parted reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to the date of enactment of the AIA (i.e., September 16, 2011).

If a request for inter partes reexamination was granted under the SNQ standard, will the resulting proceeding continue until its conclusion under the SNQ standard?

Yes. If reexamination was ordered based on the SNQ standard, the SNQ standard will continue to be applied until the conclusion of the proceeding.

What is inter partes review and when is it available?

Inter partes review replaces inter parted reexamination as an avenue for a third party's patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012.

When inter partes review under section 6 of the AIA takes effect on September 16, 2012, will pending inter partes reexaminations be converted to inter partes review proceedings?

No. Pending inter partes reexaminations will not be converted into inter partes review proceedings. Proceedings for inter partes reexamination filed prior to September 16, 2012, will proceed to conclusion even if the proceedings last beyond September 16, 2012

If a request for inter partes reexamination is filed on September 16, 2012, how will it be treated?

Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted

What is the effective date for the inter partes review provision in the AIA?

The effective date for the inter partes review provision in the AIA is September 16, 2012.

What patents are eligible for an inter partes review?

All patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-inventor provisions in current Title 35.

When can a petitioner bring an inter partes review for a patent?

after the later of:
(i) 9 months after the grant of a patent or issuance of a reissue of a patent; or
(ii) the date of termination of any post-grant review of the patent

Who may file for an inter partes review?

A person is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition for an inter parted review of the patent.

On what grounds may a petitioner challenge a patent in an inter partes review?

A petitioner for inter partes review may request to cancel as unpatentable one or more claims of a patent on a ground that could be raised under 102 or 103 and only on the basis of prior art consisting of patents or printed publications

How does a party request an inter partes review?

To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.

What statutory and regulatory requirements must a petitioner meet in a petition for an inter partes review?

In a petiton for an inter partes review the petioned must by statute
1. identify all real parties of interest;
2. identify all claims challenged and all grounds on which the challenge to each claim is based;and
3. provide copies of evidence relied upon. The petition must be accompanied by a fee. In addition, the petitioner must by rule
(i)identify the grounds for standing;
(ii)provide a claim construction for each challenged claim;
(iii) specifically explain the grounds for unpatentabliliy; and
(iv) specifically explain the relevance of evidence relied upon

What is the fee for filing an inter partes review petition?

The AIA requires the Director to set the fee for a post grant review in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review. The fee for filing a petition challenging the patentability of up to 20 claims is $27,200. For each additional claim challenged, there is a fee of $600.

Can a patent owner respond to a petition for an inter partes review?

Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.

How long does a patent owner have to file a preliminary response after receiving notice that a petition has been filed challenging the patentability of one or more of its claims?

3 months

Does a patent owner have to file a preliminary response to avoid having a proceeding instituted?

No.
If the petition does not meet the standard set for instituting the proceeding, then the petition will be denied even if there is no preliminary response from the patent owner. The patent owner, may, but is not required to , inform the Board if it does not intend to file a preliminary response.

May a patent owner challenge the standing of a petitioner in the preliminary response?

Yes.
For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petiton or that the petitioner otherwise is stopped from challenging the patent owner's claims

What is the standard for instituting an inter partes review and who will decide whether the standard is met?

The petitioner must demonstrate that there is reasonable likelihood that he/she would prevail as to at least one of the claims challenged to trigger an inter partes review. The Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) will decide petitions for inter partes review and conduct any ensuing reviews. In instituting a review, the Board may take into account whether, and reject the petition or request because, the same or substantially same prior art or arguments previously were presented to the Office

Can a party request rehearing of the Board's decision denying its petition?

Yes
The request must specifically identify all matter the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.

Can a party appeal the Board's decision whether to institute an inter partes review?

No, a party is statutorily precluded from appealing the Board's decision whether to institute an inter partes review.

If an inter partes review is instituted, can the patent owner respond during the review?

Yes, a patent owner may file a response after the instituion of IPR

If an inter partes review is instituted, can the patent owner amend the claims during the review?

A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an inter partes review. Amendments may cancel any challenged patent claim and/or propose a reasonable
number of substitute claims.

How much time does a patent owner have to file a response and/or amendment after review is instituted?

The schedule for each proceeding will be set by the Board. Ordinarily, a patent owner will have three months to file a response and/or amendment.

If an inter partes review is instituted, can the petitioner file additional information?

Yes, a petitioner may supplement information provided in the petition for inter parted review by filing motion within one month of the date trial is instituted.

May a party submit supplemental information after one month from institution?

A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly excep upon showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.

How can a party to an inter partes review protect confidential information?

The AIA provided that the file of an IPR is open to the public, except that party may seek to have a document sealed by filing a motion to seal. The AIA also provides for protective orders to govern the exchange and submission of confidential information

Is discovery permitted during an inter partes review?

The AIA authorized the Office to set standards and procedures for the taking of discovery during an inter parted review, including that discovery be limited the depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice

What type of discovery is permitted during an inter partes review?

Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery

During an inter partes review, how can a party seek relief?

The AIA provides that a party may request relief during an inter partes review by filing a motion. In addition, the use of conference calls to raise and resolve issues in a expedited manner is encouraged. A party seeking relief may contact the Board and request a conference call, explaining why the call is needed. The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days

May a party file a motion seeking relief at any time during the inter partes review proceeding?

A motion will notbe entered w/o Board authorization. Authorization may be provided in order of general applicabiliy, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

Is an oral hearing permitted during an inter partes review?

Yes, the AIA permits either party to an IPR to request an oral hearing

How long will an inter partes review take?

1 year but may be extended up to 6 month with good cause

How will the Board conclude an inter partes review?

Where IPR is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentablilty of any challenged patent claim and any new claim added via amendment during the inter partes review.

May a party request rehearing of the final written decision?

Yes, the request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition

After the Board renders a final decision in an inter partes review, do any estoppels apply against the petitioner?

Yes, a petitioner in an IPR may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the IPR.
Similarly, a petioner in an IPR may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petioned raised or reasonably could have been raised in the IPR

After the Board renders a final decision in an inter partes review, do any estoppels apply against the patent owner?

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a
way that it was denied during the proceeding.

Can a party to an inter partes review appeal the Board's final decision?

Yes, a party dissatisfied with the final written decision in a IPR may appeal to the Federal Circuit

How will the Board handle multiple proceedings such as two or more inter partes reviews on the same patent?

Where another matter involving the same patent is before the Office during the pendency of the inter partes review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation,
or termination of any such matter. Joinder may be requested by a patent owner or petitioner.

Can the parties to an inter partes review settle?

The AIA permits the parties to an inter partes review to settle. A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision

Can a party to an inter partes review be sanctioned?

Yes, then AIA requires the Office to prescribe sanctions for
abuse of discovery
abuse of process
or any other improper use of an IPR, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding

What is the effective date for the post grant review provision in the AIA?

The effective date for the post grant review provision in the AIA is September 16, 2012.

What patents are eligible for a post grant review?

With limited exceptions, only those patent issuing from applications subject ti first-inventor-to-file provisions of the AIA. The first-inventor-to-file provision of the AIA is not effective until March 16, 2013

When can a petitioner bring a post grant review for a patent?

Prior to the date that is 9 mos. after the grant of a patent or issuance of a reissue patent

Who may file for a post grant review?

A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition for a post grant review of the patent.

On what grounds may a petitioner challenge a patent in a post grant review?

A petitioner for post grant review may request to cancel as unpatentable one or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. 282(b) relating to invalidity (i.e., novelty, obviousness, written
description, enablement, indefiniteness, but not best mode).

How does a party request a post grant review?

To intiate a post grant review, a party must file a petion establishing certain statutory requirements

What statutory and regulatory requirements must a petitioner meet in a petition for a post grant review?

The Petitioner must statue
1.identify all real parties in interest
2.identify all claims challenged and all grounds on which the challenge to each claim is based; and
3.provide copies of evidence relied upon. The petition must be accompanied by a fee.
In addition the petioner must by rule
1, identify the grounds of standing
2. provide a claim construction for each challenged claim
3 specifically explain the grounds for unpatentability; and
4.specifically explain the relevance of evidence relied upon

What is the fee for filing a post grant review petition?

The AIA requires the Director to set the fee for a post grant review in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review
The fee for filing a petition challenging the patentability of up to 20 claims is $35,800. For each additional claim challenged, there is a fee of $800

Can a patent owner respond to a petition for a post grant review?

Yes, a patent owner may file a preliminary response to a post grant review petition to provide reasons why no post grant review should be instituted.

How long does a patent owner have to file a preliminary response after receiving notice that a petition has been filed challenging the patentability of one or more of its claims?

3 months

Does a patent owner have to file a preliminary response to avoid having a proceeding instituted?

No.
If the petition does not meet the standard set for instituting the proceeding , then the petition will be denied even if there is no preliminary response from the patent owner. The patent owner may, but is not required to, inform the Board if it does not intend to file a preliminary response.

May a patent owner challenge the standing of a petitioner in the preliminary response?

Yes, a patent holder may challenge the standing of a petitioner in the preliminary response. For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petion or that the petitoner otherwise is estopped from challenging the patent owner's claims.

What is the standard for instituting a post grant review and who will decide whether the standard is met?

The petitioner must demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable to trigger PGR. Alternatively, the petioner may show that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. The Patent Trail and Appeal Board will decide petitions for PGR and conduct any ensuing reviews. In instituting a review, the Board may take into account whether, and reject the petition or request b/c the same or substatially same prior art or arguments previously were presented to the Office.

Can a party request rehearing of the Board's decision on the petition?

Yes
The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed

Can a party appeal the Board's decision whether to institute a post grant review?

NO
A part is statutorily precluded from appealing the Board's decision whether to institute a PGR

If a post grant review is instituted, can the patent owner respond during the review?

YES
A response may be filed

If a post grant review is instituted, can the patent owner amend the claims during the review?

YES
Only one motion to amend challenged claims.
Amendments may cancel any challenged claim and/or propose a reasonable number of substitute claims

How much time does a patent owner have to file a response and/or amendment after review is instituted?

The schedule for each proceeding will be set by the Board. Ordinarily, a patent owner will have three months to file a response and/or amendment.

If a post grant review is instituted, can the petitioner file additional information?

YES
A petitioner may supplement information within 1 month of the date trial is instituted

May a party submit supplemental information after one month from institution?

A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented
and that it is in the interests of justice for the Board to consider the information.

How can a party to a post grant review protect confidential information?

The AIA provides that the file of a post grant review is open to the public, except that a party may seek to have a document sealed by filing a motion to seal. The AIA also provides for protective orders to govern the exchange and submission of
confidential information.

Is discovery permitted during a post grant review?

The AIA authorizes the Office to set standards and procedures for the taking of discovery during a post grant review, including that discovery be limited to evidence directly related to factual assertions advanced by either party in the proceeding.

What type of discovery is permitted during a post grant review?

Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party
may file an authorized motion seeking additional discovery

During a post grant review, how can a party seek relief?

The AIA provides that a party may request relief during a post grant review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an expedited manner is encouraged. A party seeking relief may contact the Board
and request a conference call, explaining why the call is needed. The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days.

Can a party file a motion seeking relief at any time during the post grant review proceeding?

A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

Is an oral hearing permitted during a post grant review?

Yes, the AIA permits either party to a post grant review to request an oral hearing.

How long will a post grant review take?

A post grant review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.

How will the Board conclude a post grant review?

The AIA provides that where a post grant review is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentability of any challenged patent claim and any new claim added via amendment
during the post grant review.

May a party request rehearing of the final written decision?

Yes, either party may request rehearing of the Board's decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition.

After the Board renders a final decision in a post grant review, do any estoppels apply against the petitioner?

Yes, a petitioner in a post grant review may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the post grant review.
Similarly, a petitioner in a post grant review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the post grant review.

After the Board renders a final decision in a post grant review, do any estoppels apply against the patent owner?

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a
way that it was denied during the proceeding.

Can a party to post grant review appeal the Board's final decision?

Yes, a party dissatisfied with the final written decision in a post grant review may appeal to the Federal Circuit.

How will the Board handle multiple proceedings for the same patent, such as two or more post grant reviews on the same patent?

Where another matter involving the same patent is before the Office during the pendency of the post grant review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation,
or termination of any such matter. Joinder may be requested by a patent owner or petitioner.

Can the parties to a post grant review settle?

YES
A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.

Can a party to a post grant review be sanctioned?

Yes, then AIA requires the Office to prescribe sanctions for
1. abuse of discovery,
2. abuse of process, or
3. any other improper use of a post grant review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

What is prioritized examination?

A procedure for expedited review of a patent application for an additional fee. The Office's goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.

Who can I contact if I have questions about a decision dismissing my Request for Prioritized Examination or about how to file a Request for Prioritized Examination via EFS-Web?

Contact the person who signed the decision dismissing the request if there is a question about the dismissal. In addition, each Technology Center (TC) will have a few representatives who can be contacted about a specific decision dismissing a request for prioritized examination. Questions related to the filing of a request for prioritized examination via EFS-Web can be directed to the Patent Electronic Business Center.
GQs about the prioritized examination program cab be directed to the Office of Patent Legal Administration

Is applicant required to use the Office's certification and request form PTO/SB/424?

It is strongly recommended that applicants use the Office's certification and request form PTO/SB/424 to request prioritized examination, but the form is not required.

The prioritized examination fee set forth in 37 CFR 1.17(c) is $4,800 for a non-small entity and $2,400 for a small entity. Is there a micro entity fee available for the prioritized examination fee under 37 CFR 1.17(c)?

NO
This final rule implement the fee for prioritized examination as set forth in section 11 (h) of AIA and is not an exercise of the Office's fee-setting authority under section 10 of the AIA such that a micro-entity fee would apply

My application has been granted special status under the prioritized examination (Track I) program. Will the application remain in that special status until either issuance or abandonment of the application?

The prioritized examination program grants special status until 1 of the following occurs:
1. Applicant files a petition for extension of time to extend the time period for filing a reply
2. Applicant files an amendment to amend the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim
3.Applicant subsequently files a RCE
4Applicant files a notice of appeal
5. Applicant files a request for suspension of action
6. A notice of allowance is mailed
7. A final Office action is mailed
8. The application is abandoned
9. Examination is completed as defined in 37 CFR 41.102

My application has been granted special status under the prioritized examination program. When can I expect the final disposition of the application?

12 mos., on average, of the date that prioritized status was granted

I received a decision dismissing my request for prioritized examination. Can I file a petition if I think the decision is not proper?

YES
A petition filed under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petion under 37 CFR 1.181

May I file a petition for extension of time to extend the time period for filing a reply to an Office action?

While such request will be acted upon as per MPEP 710.02, if applicant files a petition for an extension of time to file a reply or a request for a suspension of action, the prioritized examination of the application will be terminated

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