5 Written questions
5 Matching questions
- What type of discovery is permitted during a post grant review?
- If a post grant review is instituted, can the patent owner amend the claims during the review?
- Can a party file a motion seeking relief at any time during the post grant review proceeding?
- What is the effective date for the post grant review provision in the AIA?
- Can a party to a post grant review be sanctioned?
- a The effective date for the post grant review provision in the AIA is September 16, 2012.
- b 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
- c YES
Only one motion to amend challenged claims.
Amendments may cancel any challenged claim and/or propose a reasonable number of substitute claims
- d 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.
- e 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.
5 Multiple choice questions
- No. Only inventors are entitled to a patent. Someone who copies another's idea cannot be the inventor
- 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.
- No. As this change is applicable only in patent validity or infringement proceeedings, it does not change current patent examination practices set forth in MPEP 2165
- The schedule for each proceeding will be set by the Board. Ordinarily, a patent owner will have three months to file a response and/or amendment.
The request must specifically identify all matter the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.
5 True/False questions
What is the effective date for the inter partes review provision in the AIA? → The effective date for the post grant review provision in the AIA is September 16, 2012.
How will the Board handle multiple proceedings for the same patent, such as two or more post grant reviews on the same patent? → Where another matter involving the same patent is before the Office during the pendency of the inter partes 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.
On what grounds may a petitioner challenge a patent in an inter partes review? → To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.
What is the standard for instituting a derivation proceeding and who will decide whether the standard is met? → 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.
How will the Board conclude a post grant review? → 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.