5 Written questions
5 Matching questions
- What is the effective date for the Best Mode provision in the AIA?
- How does a party request an inter partes review?
- What statutory requirements must a petitioner meet in a petition for a derivation proceeding?
- I'm an independent inventor planning on filing a new nonprovisional patent application on October 1, 2011. Will my patent application be subject to the first-inventor-to-file provisions?
- Can a party to a post grant review be sanctioned?
- a No. The first-inventor-to-file provisions become effective on March 16, 2013. Thus, an application filed before that date would not be subject to the first-inventor-to-file provisions. The application will be treated under the first-to-invent provisions of the law in effect on September 15, 2011.
- b The effective date for the Best Mode provision in the AIA is September 16, 2011.
- c In a petition for a derivation proceeding, the petitioner must (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.
- d To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.
- e Yes, then AIA requires the Office to prescribe sanctions for
1. abuse of discovery,
2. abuse of process, or
3. any other improper use of a post grant review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.
5 Multiple choice questions
- 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.
- The effective date for the First Inventor to File provision of AIA is March 16, 2013
A response may be filed
- A petitioner for inter partes review may request to cancel as unpatentable one or more claims of a patent on a ground that could be raised under 102 or 103 and only on the basis of prior art consisting of patents or printed publications
- 3 months
5 True/False questions
How long will an inter partes review take? → A post grant review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.
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
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.
Can a patent owner respond to a petition for a post grant review? → 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.
May a patent owner challenge the standing of a petitioner in the preliminary response? → 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.