5 Written questions
5 Matching questions
- My co-inventor disclosed our invention at a trade show one month before the filing date of our application. Will that disclosure prevent us from obtaining a patent?
- How can a party to an inter partes review protect confidential information?
- Can a party to a derivation proceeding appeal the Board's final decision?
- If an inter partes review is instituted, can the patent owner amend the claims during the review?
- What is the impact of AIA's amendment to 35 U.S.C. 282(a)(3) concerning Best Mode?
- a 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.
- b No, regardless of whether the application was filed before or after the first-inventor-to-file provisions take effect on March 16, 2013, disclosure one month prior to a filling date is not prior are to the claimed invention by virtue of a one year grace period.
- c 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.
- d Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit
- e 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
5 Multiple choice questions
- No. The first-inventor-to-file provisions become effective on March 16, 2013. Thus, an application filed before that date would not be subject to the first-inventor-to-file provisions. The application will be treated under the first-to-invent provisions of the law in effect on September 15, 2011.
- 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.
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.
- Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a
way that it was denied during the proceeding.
- 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.
5 True/False questions
On what grounds may a petitioner challenge a patent in an inter partes review? → A petitioner for inter partes review may request to cancel as unpatentable one or more claims of a patent on a ground that could be raised under 102 or 103 and only on the basis of prior art consisting of patents or printed publications
What is the effective date for the derivation provision in the AIA? → The effective date for the inter partes review provision in the AIA is September 16, 2012.
What is the effective date of the First Inventor to File provision of AIA? → The effective date for the derivation provision in the AIA is March 16, 2013
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 Substantial NEw Question of patentability (SNQ) standard is applicable in deremining whether the request for inter parted reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to the date of enactment of the AIA (i.e., September 16, 2011).
After the Board renders a final decision in a post grant review, do any estoppels apply against the patent owner? → Prior to the date that is 9 mos. after the grant of a patent or issuance of a reissue patent