5 Written questions
5 Matching questions
- In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way?
- Who may file for an inter partes review?
- 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?
- What type of discovery is permitted during a post grant review?
- If a post grant review is instituted, can the patent owner amend the claims during the review?
- a Yes, the partied to a derivation proceeding may resort to binding arbitration to determine inventorship.
- b YES
Only one motion to amend challenged claims.
Amendments may cancel any challenged claim and/or propose a reasonable number of substitute claims
- c 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
- 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 No. Only inventors are entitled to a patent. Someone who copies another's idea cannot be the inventor
5 Multiple choice questions
- 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
- 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.
- 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 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.
- 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.
5 True/False questions
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
What statutory and regulatory requirements must a petitioner meet in a petition for an inter partes review? → 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 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
Is an oral hearing permitted during an inter partes review? → Yes, the AIA permits either party to an IPR to request an oral hearing
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.