5 Written questions
5 Matching questions
- How will the Board conclude a post grant review?
- Can a party to an inter partes review be sanctioned?
- How can a party to a post grant review protect confidential information?
- Can a party request rehearing of the Board's decision denying its petition?
- What is the effective date for the post grant review provision in the AIA?
- a Yes
The request must specifically identify all matter the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.
- b The AIA provides that the file of a post grant review is open to the public, except that a 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
- c 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
- d The effective date for the post grant review provision in the AIA is September 16, 2012.
- e The AIA provides that where a post grant review is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentability of any challenged patent claim and any new claim added via amendment
during the post grant review.
5 Multiple choice questions
- No, a party is statutorily precluded from appealing the Board's decision whether to institute an inter partes review.
- The AIA authorizes the Office to set standards and procedures for the taking of discovery during a post grant review, including that discovery be limited to evidence directly related to factual assertions advanced by either party in the proceeding.
- 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.
- 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.
- Where another matter involving the same patent is before the Office during the pendency of the inter partes 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
If a post grant review is instituted, can the patent owner amend the claims during the review? → YES
A response may be filed
What patents are eligible for an inter partes review? → 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.
During an inter partes review, how can a party seek relief? → The AIA provides that a party may request relief during an inter partes review by filing a motion. In addition, the use of conference calls to raise and resolve issues in a 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
How long will an inter partes review take? → A person 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 an inter parted review of the patent.
May a party submit supplemental information after one month from institution? → 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