5 Written questions
5 Matching questions
- Can the parties to a derivation proceeding engage in settlement?
- Can a party file a motion seeking relief at any time during the post grant review proceeding?
- Can a party appeal the Board's decision whether to institute a post grant review?
- Can a party request rehearing of the Board's decision denying its petition?
- Who may file for an inter partes review?
- a Yes
The request must specifically identify all matter the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.
- b NO
A part is statutorily precluded from appealing the Board's decision whether to institute a PGR
- c 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.
- d 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.
- e 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.
5 Multiple choice questions
- 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.
- 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
- 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
- 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
- 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.
5 True/False questions
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.
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.
Can a party to an inter partes review 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 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.
My application has been granted special status under the prioritized examination program. When can I expect the final disposition 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