5 Written questions
5 Matching questions
- After the Board renders a final decision in a post grant review, do any estoppels apply against the petitioner?
- May a party request rehearing of the final written decision?
- Can a patent owner respond to a petition for an inter partes review?
- Is applicant required to use the Office's certification and request form PTO/SB/424?
- Can a patent owner respond to a petition for a post grant review?
- a It is strongly recommended that applicants use the Office's certification and request form PTO/SB/424 to request prioritized examination, but the form is not required.
- b 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
- c Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.
- d 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.
- e 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.
5 Multiple choice questions
The request must specifically identify all matter the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.
- The AIA provides that the file of a post grant review is open to the public, except that a 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
- 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.
- 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 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
5 True/False questions
If a request for inter partes reexamination was granted under the SNQ standard, will the resulting proceeding continue until its conclusion under the SNQ standard? → The Substantial NEw Question of patentability (SNQ) standard is applicable in deremining whether the request for inter parted reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to the date of enactment of the AIA (i.e., September 16, 2011).
What is the effective date of the provisions effecting inter partes reexamination? → The effective date for the First Inventor to File provision of AIA is March 16, 2013
What statutory and regulatory requirements must a petitioner meet in a petition for a post grant review? → In a petiton for an inter partes review the petioned must by statute
1. identify all real parties of 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 petitioner must by rule
(i)identify the grounds for standing;
(ii)provide a claim construction for each challenged claim;
(iii) specifically explain the grounds for unpatentabliliy; and
(iv) specifically explain the relevance of evidence relied upon
What is inter partes review and when is it available? → A procedure for expedited review of a patent application for an additional fee. The Office's goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.
Can a party file a motion seeking relief at any time during the post grant review proceeding? → 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.