5 Written questions
5 Matching questions
- What is the fee for filing an inter partes review petition?
- If an inter partes review is instituted, can the petitioner file additional information?
- May a patent owner challenge the standing of a petitioner in the preliminary response?
- Once the first-inventor-to-file provisions take effect on March 16, 2013, would someone who copies my idea and files a patent application on the subject matter before I do be entitled to a patent?
- If a post grant review is instituted, can the patent owner amend the claims during the review?
- a YES
Only one motion to amend challenged claims.
Amendments may cancel any challenged claim and/or propose a reasonable number of substitute claims
- b 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.
- c 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.
- d No. Only inventors are entitled to a patent. Someone who copies another's idea cannot be the inventor
- e Yes, a patent holder may challenge the standing of a petitioner in the preliminary response. For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petion or that the petitoner otherwise is estopped from challenging the patent owner's claims.
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.
- The failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As stated, above this new practice does not affect the patent examination practice.
The request must specifically identify all matter the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.
- 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
- 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
5 True/False questions
In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way? → Yes, the partied to a derivation proceeding may resort to binding arbitration to determine inventorship.
How much time does a patent owner have to file a response and/or amendment after review is instituted? → To intiate a post grant review, a party must file a petion establishing certain statutory requirements
What is the effective date for the derivation provision in the AIA? → The effective date for the derivation provision in the AIA is March 16, 2013
What type of discovery is permitted during a post grant 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
How will the Board handle multiple proceedings such as two or more inter partes reviews on the same patent? → Where IPR is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentablilty of any challenged patent claim and any new claim added via amendment during the inter partes review.