5 Written questions
5 Matching questions
- What statutory and regulatory requirements must a petitioner meet in a petition for an inter partes review?
- During an inter partes review, how can a party seek relief?
- Can a party appeal the Board's decision whether to institute a post grant review?
- If an inter partes review is instituted, can the petitioner file additional information?
- My co-inventor disclosed our invention at a trade show one month before the filing date of our application. Will that disclosure prevent us from obtaining a patent?
- a 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.
- b 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
- c In a petiton for an inter partes review the petioned must by statute
1. identify all real parties of 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 petitioner must by rule
(i)identify the grounds for standing;
(ii)provide a claim construction for each challenged claim;
(iii) specifically explain the grounds for unpatentabliliy; and
(iv) specifically explain the relevance of evidence relied upon
- d No, regardless of whether the application was filed before or after the first-inventor-to-file provisions take effect on March 16, 2013, disclosure one month prior to a filling date is not prior are to the claimed invention by virtue of a one year grace period.
- e NO
A part is statutorily precluded from appealing the Board's decision whether to institute a PGR
5 Multiple choice questions
A petition filed under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petion under 37 CFR 1.181
- Yes, a petitioner in a post grant review 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 post grant review.
Similarly, a petitioner in a post grant review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the post grant review.
- 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.
- The effective date for the derivation provision in the AIA is March 16, 2013
- 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.
5 True/False questions
What is the effective date for the inter partes review provision in the AIA? → The effective date for the inter partes review provision in the AIA is September 16, 2012.
How can a party to an inter partes review protect confidential information? → 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 inter partes review and when is it available? → Inter partes review replaces inter parted reexamination as an avenue for a third party's patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012.
May a patent owner challenge the standing of a petitioner in the preliminary response? → 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.
How long will a post grant review take? → A person who 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 a post grant review of the patent.