5 Written questions
5 Matching questions
- How much time does a patent owner have to file a response and/or amendment after review is instituted?
- Is discovery permitted during an inter partes review?
- What statutory and regulatory requirements must a petitioner meet in a petition for a post grant review?
- If an inter partes review is instituted, can the petitioner file additional information?
- During a post grant review, how can a party seek relief?
- a The AIA provides that a party may request relief during a post grant review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an 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.
- b The schedule for each proceeding will be set by the Board. Ordinarily, a patent owner will have three months to file a response and/or amendment.
- c The Petitioner must statue
1.identify all real parties in 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 petioner must by rule
1, identify the grounds of standing
2. provide a claim construction for each challenged claim
3 specifically explain the grounds for unpatentability; and
4.specifically explain the relevance of evidence relied upon
- d The AIA authorized the Office to set standards and procedures for the taking of discovery during an inter parted review, including that discovery be limited the depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice
- e Yes, a petitioner may supplement information provided in the petition for inter parted review by filing motion within one month of the date trial is instituted.
5 Multiple choice questions
- 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
- To intiate a post grant review, a party must file a petion establishing certain statutory requirements
- 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 $27,200. For each additional claim challenged, there is a fee of $600.
The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed
- Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted
5 True/False questions
Can the parties to an inter partes review settle? → 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
If an inter partes review is instituted, can the patent owner respond during the review? → YES
A petitioner may supplement information within 1 month of the date trial is instituted
Can a patent owner respond to a petition for an inter partes review? → Yes, the AIA permits either party to an IPR to request an oral hearing
Can a party to a derivation proceeding appeal the Board's final decision? → Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit
May a party file a motion seeking relief at any time during the inter partes 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.