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5 Written questions

5 Matching questions

  1. What is the effective date of the First Inventor to File provision of AIA?
  2. Can a party appeal the Board's decision whether to institute an inter partes review?
  3. 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)?
  4. After the Board renders a final decision in an inter partes review, do any estoppels apply against the patent owner?
  5. 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?
  1. 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
  2. b The effective date for the First Inventor to File provision of AIA is March 16, 2013
  3. c No. Only inventors are entitled to a patent. Someone who copies another's idea cannot be the inventor
  4. d No, a party is statutorily precluded from appealing the Board's decision whether to institute an inter partes review.
  5. e Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a
    way that it was denied during the proceeding.

5 Multiple choice questions

  1. With limited exceptions, only those patent issuing from applications subject ti first-inventor-to-file provisions of the AIA. The first-inventor-to-file provision of the AIA is not effective until March 16, 2013
  2. Yes, the partied to a derivation proceeding may resort to binding arbitration to determine inventorship.
  3. The effective date for the Best Mode provision in the AIA is September 16, 2011.
  4. 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. Yes, a petitioner in an IPR 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 IPR.
    Similarly, a petioner in an IPR may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petioned raised or reasonably could have been raised in the IPR

5 True/False questions

  1. How can a party to an inter partes review protect confidential information?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

          

  2. After the Board renders a final decision in a post grant review, do any estoppels apply against the patent owner?Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a
    way that it was denied during the proceeding.

          

  3. What is prioritized examination?A procedure for expedited review of a patent application for an additional fee. The Office's goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.

          

  4. Can a party request rehearing of the Board's decision denying its petition?Yes
    The request must specifically identify all matter the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.

          

  5. 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.