5 Written questions
5 Matching questions
- Can a party to an inter partes review be sanctioned?
- What is the effective date for the post grant review provision in the AIA?
- Can a party appeal the Board's decision whether to institute an inter partes review?
- If an inter partes review is instituted, can the patent owner amend the claims during the review?
- Is an oral hearing permitted during an inter partes review?
- a Yes, the AIA permits either party to an IPR to request an oral hearing
- b The effective date for the post grant review provision in the AIA is September 16, 2012.
- c No, a party is statutorily precluded from appealing the Board's decision whether to institute an inter partes review.
- d A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an inter partes review. Amendments may cancel any challenged patent claim and/or propose a reasonable
number of substitute claims.
- e 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 Multiple choice questions
- Yes, a patent owner may file a response after the instituion of IPR
A petition filed under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petion under 37 CFR 1.181
A petitioner may supplement information within 1 month of the date trial is instituted
The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed
- No. As this change is applicable only in patent validity or infringement proceeedings, it does not change current patent examination practices set forth in MPEP 2165
5 True/False questions
What statutory requirements must a petitioner meet in a petition for a derivation proceeding? → 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
If a request for inter partes reexamination was filed before the enactment date of the AIA, but a determination on the request has not yet been issued, which standard will be applied in determining whether to grant inter partes
reexamination? → Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.
What is the effective date of the First Inventor to File provision of AIA? → The effective date for the inter partes review provision in the AIA is September 16, 2012.
After the Board renders a final decision in an inter partes review, do any estoppels apply against the petitioner? → 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.
Is discovery permitted during a post grant 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