5 Written questions
5 Matching questions
- How will the Board conclude a post grant review?
- Is discovery permitted during an inter partes review?
- During a post grant review, how can a party seek relief?
- How much time does a patent owner have to file a response and/or amendment after review is instituted?
- Can the parties to an inter partes review settle?
- a The AIA permits the parties to an inter partes review to settle. A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision
- b 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.
- c 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.
- d 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
- e The AIA provides that a party may request relief during a post grant review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an 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.
5 Multiple choice questions
- To intiate a post grant review, a party must file a petion establishing certain statutory requirements
- 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.
- 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.
- 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
- 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
5 True/False questions
How can a party to an inter partes review protect confidential information? → The AIA provided that the file of an IPR is open to the public, except that party may seek to have a document sealed by filing a motion to seal. The AIA also provides for protective orders to govern the exchange and submission of confidential information
What is the standard for instituting a post grant review 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.
May a party submit supplemental information after one month from institution? → 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.
How will the Board conclude an inter partes 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.
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 excep upon 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.