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5 Written questions

5 Matching questions

  1. What patents are eligible for a post grant review?
  2. Can the parties to a derivation proceeding engage in settlement?
  3. When can a petitioner bring an inter partes review for a patent?
  4. If a request for inter partes reexamination was granted under the SNQ standard, will the resulting proceeding continue until its conclusion under the SNQ standard?
  5. If a post grant review is instituted, can the petitioner file additional information?
  1. a YES
    A petitioner may supplement information within 1 month of the date trial is instituted
  2. b 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
  3. c Yes. If reexamination was ordered based on the SNQ standard, the SNQ standard will continue to be applied until the conclusion of the proceeding.
  4. 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
  5. e 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.

5 Multiple choice questions

  1. A person 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 an inter parted review of the patent.
  2. 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. 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
  4. No.
    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.
  5. 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

5 True/False questions

  1. What is the effective date of the provisions effecting inter partes reexamination?The effective date for the First Inventor to File provision of AIA is March 16, 2013

          

  2. 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

          

  3. 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

          

  4. What statutory and regulatory requirements must a petitioner meet in a petition for a post grant review?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. Is discovery permitted during an inter partes 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.