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5 Written questions

5 Matching questions

  1. Can the parties to a derivation proceeding engage in settlement?
  2. Can a party to a derivation proceeding appeal the Board's final decision?
  3. What is the fee for filing an inter partes review petition?
  4. Can a patent owner respond to a petition for an inter partes review?
  5. What statutory requirements must a petitioner meet in a petition for a derivation proceeding?
  1. a 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 $27,200. For each additional claim challenged, there is a fee of $600.
  2. b Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.
  3. c Yes, the AIA permits the parties to a derivation proceeding to settle. A settlement in a derivation proceeding will be accepted by the Board unless inconsistent with the evidence of record.
  4. d Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit
  5. e In a petition for a derivation proceeding, the petitioner must (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

5 Multiple choice questions

  1. 1 year but may be extended up to 6 month with good cause
  2. The effective date for the First Inventor to File provision of AIA is March 16, 2013
  3. 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.
  4. Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery
  5. A derivation proceeding requires that an applicant for patent file a petition to institute the proceeding. The petition must set forth with particularly the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention.

5 True/False questions

  1. May a party submit supplemental information after one month from institution?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.


  2. What is the standard for instituting a derivation proceeding and who will decide whether the standard is met?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.


  3. Is an oral hearing permitted during an inter partes review?Yes, the AIA permits either party to an IPR to request an oral hearing


  4. In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way?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.


  5. 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.


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