5 Written questions
5 Matching questions
- Is discovery permitted during an inter partes review?
- Does a patent owner have to file a preliminary response to avoid having a proceeding instituted?
- How long will an inter partes review take?
- What is the effective date for the post grant review provision in the AIA?
- If an inter partes review is instituted, can the patent owner respond during the review?
- a 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.
- b 1 year but may be extended up to 6 month with good cause
- c Yes, a patent owner may file a response after the instituion of IPR
- d The effective date for the post grant review provision in the AIA is September 16, 2012.
- e 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
5 Multiple choice questions
- 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.
- 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.
- 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.
- 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.
- To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.
5 True/False questions
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
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
Can a party appeal the Board's decision whether to institute 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.
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.
Who may file for an inter partes 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.