5 Written questions
5 Matching questions
- Can a party request rehearing of the Board's decision denying its petition?
- How will the Board handle multiple proceedings such as two or more inter partes reviews on the same patent?
- May a party request rehearing of the final written decision?
- 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?
- What statutory and regulatory requirements must a petitioner meet in a petition for an inter partes review?
- a In a petiton for an inter partes review the petioned must by statute
1. identify all real parties of interest;
2. identify all claims challenged and all grounds on which the challenge to each claim is based;and
3. provide copies of evidence relied upon. The petition must be accompanied by a fee. In addition, the petitioner must by rule
(i)identify the grounds for standing;
(ii)provide a claim construction for each challenged claim;
(iii) specifically explain the grounds for unpatentabliliy; and
(iv) specifically explain the relevance of evidence relied upon
- b 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.
- c 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
- d Yes
The request must specifically identify all matter the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.
- e Yes. If reexamination was ordered based on the SNQ standard, the SNQ standard will continue to be applied until the conclusion of the proceeding.
5 Multiple choice questions
- Yes, the AIA permits either party to an IPR to request an oral hearing
- The AIA authorized the Office to set standards and procedures for the taking of discovery during an inter parted review, including that discovery be limited the depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice
- 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.
- Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.
- 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.
5 True/False questions
What are the requirements for seeking a derivation proceeding? → The effective date for the Best Mode provision in the AIA is September 16, 2011.
Can the parties to an inter partes review settle? → 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.
If a request for inter partes reexamination is filed on September 16, 2012, how will it be treated? → Yes. If reexamination was ordered based on the SNQ standard, the SNQ standard will continue to be applied until the conclusion of the proceeding.
Does AIA's amendment to 35 U.S.C. 282(a)(3) impact current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112? → The failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As stated, above this new practice does not affect the patent examination practice.
The prioritized examination fee set forth in 37 CFR 1.17(c) is $4,800 for a non-small entity and $2,400 for a small entity. Is there a micro entity fee available for the prioritized examination fee under 37 CFR 1.17(c)? → NO
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