5 Written questions
5 Matching questions
- How does a party request an inter partes review?
- May I file a petition for extension of time to extend the time period for filing a reply to an Office action?
- What is the fee for filing a post grant review petition?
- 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
- How does a party request a post grant review?
- a To intiate a post grant review, a party must file a petion establishing certain statutory requirements
- b To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.
- c While such request will be acted upon as per MPEP 710.02, if applicant files a petition for an extension of time to file a reply or a request for a suspension of action, the prioritized examination of the application will be terminated
- d 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).
- e 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
5 Multiple choice questions
- 3 months
- A derivation proceeding requires that an applicant for patent file a petition to institute the proceeding. The petition must set forth with particularly the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention.
- No, a party is statutorily precluded from appealing the Board's decision whether to institute an inter partes review.
- 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.
- In a petition for a derivation proceeding, the petitioner must (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.
5 True/False questions
Once the first-inventor-to-file provisions take effect on March 16, 2013, would someone who copies my idea and files a patent application on the subject matter before I do be entitled to a patent? → The effective date of the inter parted reexamination provisions is September 16, 2011
Can a party to an inter partes review be sanctioned? → Yes, then AIA requires the Office to prescribe sanctions for
abuse of discovery
abuse of process
or any other improper use of an IPR, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding
After the Board renders a final decision in a post grant review, do any estoppels apply against the patent owner? → 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.
How long will an inter partes review take? → A post grant review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.
What is prioritized examination? → A procedure for expedited review of a patent application for an additional fee. The Office's goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.