5 Written questions
5 Matching questions
- What is the standard for instituting a post grant review and who will decide whether the standard is met?
- May a party submit supplemental information after one month from institution?
- What are the requirements for seeking a derivation proceeding?
- What is the standard for instituting a derivation proceeding and who will decide whether the standard is met?
- During a post grant review, how can a party seek relief?
- a 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.
- b A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition. The Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) will decide petitions and conduct any ensuing derivation proceeding.
- c The petitioner must demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable to trigger PGR. Alternatively, the petioner may show that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. The Patent Trail and Appeal Board will decide petitions for PGR and conduct any ensuing reviews. In instituting a review, the Board may take into account whether, and reject the petition or request b/c the same or substatially same prior art or arguments previously were presented to the Office.
- d A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly excep upon showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.
- e 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.
5 Multiple choice questions
- 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.
- 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
- The effective date for the inter partes review provision in the AIA is September 16, 2012.
- 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
- 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
5 True/False questions
My application has been granted special status under the prioritized examination (Track I) program. Will the application remain in that special status until either issuance or abandonment of the application? → 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
After the Board renders a final decision in an inter partes review, do any estoppels apply against the petitioner? → Yes, a petitioner in an IPR 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 IPR.
Similarly, a petioner in an IPR may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petioned raised or reasonably could have been raised in the IPR
On what grounds may a petitioner challenge a patent in a post grant review? → A petitioner for post grant review may request to cancel as unpatentable one or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. 282(b) relating to invalidity (i.e., novelty, obviousness, written
description, enablement, indefiniteness, but not best mode).
Can a patent owner respond to a petition for an inter partes review? → Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.
How can a party to an inter partes review protect confidential information? → The AIA provided that the file of an IPR is open to the public, except that 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 confidential information