5 Written questions
5 Matching questions
- Can a party file a motion seeking relief at any time during the post grant review proceeding?
- If a post grant review is instituted, can the patent owner respond during the review?
- How will the Board handle multiple proceedings for the same patent, such as two or more post grant reviews on the same patent?
- What is the effective date for the derivation provision in the AIA?
- What statutory and regulatory requirements must a petitioner meet in a petition for a post grant review?
- a A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.
- b The effective date for the derivation provision in the AIA is March 16, 2013
- c 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.
- d YES
A response may be filed
- e 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
5 Multiple choice questions
- A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition. The Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) will decide petitions and conduct any ensuing derivation proceeding.
- 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.
- Yes, the partied to a derivation proceeding may resort to binding arbitration to determine inventorship.
- Yes, Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. The standard for ex parte reexamination remains unchanged.
- 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
5 True/False questions
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
Can a party request rehearing of the Board's decision on the petition? → 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
May I file a petition for extension of time to extend the time period for filing a reply to an Office action? → 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
What type of discovery is permitted during a post grant review? → 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.
How can a party to a post grant review protect confidential information? → 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