5 Written questions
5 Matching questions
- What is inter partes review and when is it available?
- 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 derivation proceeding?
- What is the effective date for the Best Mode provision in the AIA?
- Can a party file a motion seeking relief at any time during the post grant review proceeding?
- a 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.
- b 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
- c 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.
- d 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.
- e The effective date for the Best Mode provision in the AIA is September 16, 2011.
5 Multiple choice questions
- 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.
- after the later of:
(i) 9 months after the grant of a patent or issuance of a reissue of a patent; or
(ii) the date of termination of any post-grant review of the patent
- 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 $35,800. For each additional claim challenged, there is a fee of $800
- 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, Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. The standard for ex parte reexamination remains unchanged.
5 True/False questions
How will the Board conclude an inter partes review? → 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.
Can a party appeal the Board's decision whether to institute a post grant review? → No, a party is statutorily precluded from appealing the Board's decision whether to institute an inter partes review.
My application has been granted special status under the prioritized examination program. When can I expect the final disposition of the application? → 12 mos., on average, of the date that prioritized status was granted
After the Board renders a final decision in an inter partes review, do any estoppels apply against the petitioner? → 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
Does a patent owner have to file a preliminary response to avoid having a proceeding instituted? → 3 months