5 Written questions
5 Matching questions
- Can a party request rehearing of the Board's decision on the petition?
- How can a party to an inter partes review protect confidential information?
- What patents are eligible for an inter partes review?
- The prioritized examination fee set forth in 37 CFR 1.17(c) is $4,800 for a non-small entity and $2,400 for a small entity. Is there a micro entity fee available for the prioritized examination fee under 37 CFR 1.17(c)?
- On what grounds may a petitioner challenge a patent in an inter partes review?
- a NO
This final rule implement the fee for prioritized examination as set forth in section 11 (h) of AIA and is not an exercise of the Office's fee-setting authority under section 10 of the AIA such that a micro-entity fee would apply
- b Yes
The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed
- c 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
- d 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.
- e 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
5 Multiple choice questions
- The effective date for the First Inventor to File provision of AIA is March 16, 2013
- 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.
- It is strongly recommended that applicants use the Office's certification and request form PTO/SB/424 to request prioritized examination, but the form is not required.
- 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
- The effective date for the derivation provision in the AIA is March 16, 2013
5 True/False questions
What is the impact of AIA's amendment to 35 U.S.C. 282(a)(3) concerning Best Mode? → 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.
If a request for inter partes reexamination was filed before the enactment date of the AIA, but a determination on the request has not yet been issued, which standard will be applied in determining whether to grant inter partes
reexamination? → The Substantial NEw Question of patentability (SNQ) standard is applicable in deremining whether the request for inter parted reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to the date of enactment of the AIA (i.e., September 16, 2011).
How will the Board conclude a derivation proceeding? → The AIA provides that where a derivation proceeding is instituted and not dismissed, the Board shall issue a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application without authorization.
If an inter partes review is instituted, can the petitioner file additional information? → Yes, a patent owner may file a response after the instituion of IPR
Can a party to a post grant review be sanctioned? → Yes, then AIA requires the Office to prescribe sanctions for
1. abuse of discovery,
2. abuse of process, or
3. any other improper use of a post grant review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.