5 Written Questions
5 Matching Questions
- Can a patent owner respond to a petition for a post grant review?
- Can a party appeal the Board's decision whether to institute a post grant review?
- May a party submit supplemental information after one month from institution?
- After the Board renders a final decision in a post grant review, do any estoppels apply against the petitioner?
- What is the fee for filing a post grant review petition?
- a 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.
- b 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
- c 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.
- d 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.
- e NO
A part is statutorily precluded from appealing the Board's decision whether to institute a PGR
5 Multiple Choice Questions
- 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 request must specifically identify all matter the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.
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.
- 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.
- 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.
5 True/False Questions
How does a party request a post grant review? → To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.
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.
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.
Is an oral hearing permitted during an inter partes review? → Yes, the AIA permits either party to a post grant review to request an oral hearing.
What is the effective date for the derivation provision in the AIA? → The effective date for the First Inventor to File provision of AIA is March 16, 2013