5 Written questions
5 Matching questions
- May a patent owner challenge the standing of a petitioner in the preliminary response?
- Can a patent owner respond to a petition for an inter partes review?
- Is discovery permitted during an inter partes review?
- On what grounds may a petitioner challenge a patent in an inter partes review?
- Can the parties to an inter partes review settle?
- a 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
- b 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
- c Yes.
For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petiton or that the petitioner otherwise is stopped from challenging the patent owner's claims
- d Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.
- e The AIA permits the parties to an inter partes review to settle. A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision
5 Multiple choice questions
- 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.
- 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.
- All patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-inventor provisions in current Title 35.
- Contact the person who signed the decision dismissing the request if there is a question about the dismissal. In addition, each Technology Center (TC) will have a few representatives who can be contacted about a specific decision dismissing a request for prioritized examination. Questions related to the filing of a request for prioritized examination via EFS-Web can be directed to the Patent Electronic Business Center.
GQs about the prioritized examination program cab be directed to the Office of Patent Legal Administration
- Where another matter involving the same patent is before the Office during the pendency of the post grant review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation,
or termination of any such matter. Joinder may be requested by a patent owner or petitioner.
5 True/False questions
Can a party to a post grant review be sanctioned? → 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
What is the effective date for the derivation provision in the AIA? → The effective date for the Best Mode provision in the AIA is September 16, 2011.
What is the standard for instituting an inter partes review and who will decide whether the standard is met? → The petitioner must demonstrate that there is reasonable likelihood that he/she would prevail as to at least one of the claims challenged to trigger an inter partes review. The Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) will decide petitions for inter partes review and conduct any ensuing reviews. In instituting a review, the Board may take into account whether, and reject the petition or request because, the same or substantially same prior art or arguments previously were presented to the Office
When can a petitioner bring an inter partes review for a patent? → after the later of:
(i) 9 months after the grant of a patent or issuance of a reissue of a patent; or
(ii) the date of termination of any post-grant review of the patent
Is an oral hearing permitted during a post grant review? → Yes, the AIA permits either party to a post grant review to request an oral hearing.