5 Written questions
5 Matching questions
- If an inter partes review is instituted, can the petitioner file additional information?
- What is the effective date for the post grant review provision in the AIA?
- What patents are eligible for an inter partes review?
- Does AIA's amendment to 35 U.S.C. 282(a)(3) impact current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112?
- What is the effective date for the derivation provision in the AIA?
- a Yes, a petitioner may supplement information provided in the petition for inter parted review by filing motion within one month of the date trial is instituted.
- b No. As this change is applicable only in patent validity or infringement proceeedings, it does not change current patent examination practices set forth in MPEP 2165
- c 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.
- d The effective date for the derivation provision in the AIA is March 16, 2013
- e The effective date for the post grant review provision in the AIA is September 16, 2012.
5 Multiple choice questions
A petition filed under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petion under 37 CFR 1.181
- 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
- To intiate a post grant review, a party must file a petion establishing certain statutory requirements
- 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
- 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.
5 True/False questions
If a post grant review is instituted, can the patent owner amend the claims during the review? → YES
Only one motion to amend challenged claims.
Amendments may cancel any challenged claim and/or propose a reasonable number of substitute claims
Did the AIA change the standard for inter partes reexamination? → 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.
Is discovery permitted during a post grant review? → 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.
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? → The Petitioner must statue
1.identify all real parties in 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 petioner must by rule
1, identify the grounds of standing
2. provide a claim construction for each challenged claim
3 specifically explain the grounds for unpatentability; and
4.specifically explain the relevance of evidence relied upon
How can a party to an inter partes review protect confidential information? → 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