5 Written questions
5 Matching questions
- Who can I contact if I have questions about a decision dismissing my Request for Prioritized Examination or about how to file a Request for Prioritized Examination via EFS-Web?
- How will the Board conclude a post grant review?
- What is the effective date for the post grant review provision in the AIA?
- Can a party request rehearing of the Board's decision on the petition?
- My application has been granted special status under the prioritized examination program. When can I expect the final disposition of the application?
- a 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.
- b 12 mos., on average, of the date that prioritized status was granted
- c Contact the person who signed the decision dismissing the request if there is a question about the dismissal. In addition, each Technology Center (TC) will have a few representatives who can be contacted about a specific decision dismissing a request for prioritized examination. Questions related to the filing of a request for prioritized examination via EFS-Web can be directed to the Patent Electronic Business Center.
GQs about the prioritized examination program cab be directed to the Office of Patent Legal Administration
- d The effective date for the post grant review provision in the AIA is September 16, 2012.
- e Yes
The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed
5 Multiple choice questions
- Yes, a patent owner may file a response after the instituion of IPR
- 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.
- 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.
- 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.
- Yes, a petitioner in an IPR may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the IPR.
Similarly, a petioner in an IPR may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petioned raised or reasonably could have been raised in the IPR
5 True/False questions
May a party file a motion seeking relief at any time during the inter partes review proceeding? → 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.
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.
Can a party appeal the Board's decision whether to institute a post grant review? → Yes, a patent owner may file a preliminary response to a post grant review petition to provide reasons why no post grant review should be instituted.
If a request for inter partes reexamination was filed before the enactment date of the AIA, but a determination on the request has not yet been issued, which standard will be applied in determining whether to grant inter partes
reexamination? → The AIA provides that a party may request relief during an inter partes review by filing a motion. In addition, the use of conference calls to raise and resolve issues in a expedited manner is encouraged. A party seeking relief may contact the Board and request a conference call, explaining why the call is needed. The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days
Who may file for an inter partes review? → 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.