5 Written questions
5 Matching questions
- What is inter partes review and when is it available?
- Can a party to post grant review appeal the Board's final decision?
- How long does a patent owner have to file a preliminary response after receiving notice that a petition has been filed challenging the patentability of one or more of its claims?
- Does a patent owner have to file a preliminary response to avoid having a proceeding instituted?
- If a post grant review is instituted, can the patent owner respond during the review?
- a 3 months
- b Inter partes review replaces inter parted reexamination as an avenue for a third party's patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012.
- c 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.
- d YES
A response may be filed
- e Yes, a party dissatisfied with the final written decision in a post grant review may appeal to the Federal Circuit.
5 Multiple choice questions
This final rule implement the fee for prioritized examination as set forth in section 11 (h) of AIA and is not an exercise of the Office's fee-setting authority under section 10 of the AIA such that a micro-entity fee would apply
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.
- A post grant review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.
A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.
- 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
If an inter partes review is instituted, can the petitioner file additional information? → Yes, a patent owner may file a response after the instituion of IPR
What type of discovery is permitted during a post grant review? → 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
May a party submit supplemental information after one month from institution? → A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented
and that it is in the interests of justice for the Board to consider the information.
If an inter partes review is instituted, can the patent owner amend the claims during the review? → A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an inter partes review. Amendments may cancel any challenged patent claim and/or propose a reasonable
number of substitute claims.
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.