5 Written questions
5 Matching questions
- How does a party request an inter partes review?
- When can a petitioner bring a post grant review for a patent?
- In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way?
- Can the parties to a derivation proceeding engage in settlement?
- 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?
- a Prior to the date that is 9 mos. after the grant of a patent or issuance of a reissue patent
- b No. Only inventors are entitled to a patent. Someone who copies another's idea cannot be the inventor
- c Yes, the partied to a derivation proceeding may resort to binding arbitration to determine inventorship.
- d To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.
- 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
- 12 mos., on average, of the date that prioritized status was granted
- 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.
- Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted
- The effective date for the Best Mode provision in the AIA is September 16, 2011.
- 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
5 True/False questions
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
May a party submit supplemental information after one month from institution? → 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 appeal the Board's decision whether to institute an inter partes review? → NO
A part is statutorily precluded from appealing the Board's decision whether to institute a PGR
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? → 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
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.