5 Written questions
5 Matching questions
- Who may file for a post grant review?
- What patents are eligible for a post grant review?
- How will the Board conclude an inter partes review?
- What is the effective date of the provisions effecting inter partes reexamination?
- I received a decision dismissing my request for prioritized examination. Can I file a petition if I think the decision is not proper?
- a 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
- b Where IPR is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentablilty of any challenged patent claim and any new claim added via amendment during the inter partes review.
- c The effective date of the inter parted reexamination provisions is September 16, 2011
- d YES
A petition filed under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petion under 37 CFR 1.181
- e 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.
5 Multiple choice questions
- 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.
- No. The first-inventor-to-file provisions become effective on March 16, 2013. Thus, an application filed before that date would not be subject to the first-inventor-to-file provisions. The application will be treated under the first-to-invent provisions of the law in effect on September 15, 2011.
- 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.
- 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.
- All patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-inventor provisions in current Title 35.
5 True/False questions
What is the standard for instituting a post grant review 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.
How can a party to a post grant review protect confidential information? → Yes, then AIA requires the Office to prescribe sanctions for
1. abuse of discovery,
2. abuse of process, or
3. any other improper use of a post grant review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.
Can a party to an inter partes review appeal the Board's final decision? → Yes, a party dissatisfied with the final written decision in a IPR may appeal to the Federal Circuit
On what grounds may a petitioner challenge a patent in a post grant review? → 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
How long will a post grant review take? → 1 year but may be extended up to 6 month with good cause