5 Written questions
5 Matching questions
- What is the fee for filing a post grant review petition?
- What is the effective date for the post grant review provision in the AIA?
- 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?
- Can a party appeal the Board's decision whether to institute an inter partes review?
- When can a petitioner bring an inter partes review for a patent?
- a No, a party is statutorily precluded from appealing the Board's decision whether to institute an inter partes review.
- b 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
- c 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 $35,800. For each additional claim challenged, there is a fee of $800
- d 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
- e The effective date for the post grant review provision in the AIA is September 16, 2012.
5 Multiple choice questions
- 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).
- 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.
If the petition does not meet the standard set for instituting the proceeding, then the petition will be denied even if there is no preliminary response from the patent owner. The patent owner, may, but is not required to , inform the Board if it does not intend to file a preliminary response.
- 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.
- The effective date for the derivation provision in the AIA is March 16, 2013
5 True/False questions
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? → 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.
What statutory requirements must a petitioner meet in a petition for a derivation proceeding? → 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
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 party request rehearing of the final written decision? → 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
Is an oral hearing permitted during an inter partes review? → Yes, the AIA permits either party to an IPR to request an oral hearing