5 Written questions
5 Matching questions
- How long will a post grant review take?
- I'm an independent inventor planning on filing a new nonprovisional patent application on October 1, 2011. Will my patent application be subject to the first-inventor-to-file provisions?
- If an inter partes review is instituted, can the patent owner amend the claims during the review?
- What is the effective date of the provisions effecting inter partes reexamination?
- What are the requirements for seeking a derivation proceeding?
- 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 The effective date of the inter parted reexamination provisions is September 16, 2011
- c 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.
- d 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.
- e 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.
5 Multiple choice questions
- 1 year but may be extended up to 6 month with good cause
- 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 except upon a 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.
- The petitioner must demonstrate that there is reasonable likelihood that he/she would prevail as to at least one of the claims challenged to trigger an inter partes review. The Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) will decide petitions for inter partes review and conduct any ensuing reviews. In instituting a review, the Board may take into account whether, and reject the petition or request because, the same or substantially same prior art or arguments previously were presented to the Office
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.
- The AIA provides that a party may request relief during an inter partes review by filing a motion. In addition, the use of conference calls to raise and resolve issues in a 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 True/False questions
What is the impact of AIA's amendment to 35 U.S.C. 282(a)(3) concerning Best Mode? → 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.
Can a party to an inter partes review appeal the Board's final decision? → Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit
Can the parties to a post grant review settle? → YES
A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.
May a patent owner challenge the standing of a petitioner in the preliminary response? → Yes, a patent holder may challenge the standing of a petitioner in the preliminary response. For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petion or that the petitoner otherwise is estopped from challenging the patent owner's claims.
If a post grant review is instituted, can the patent owner respond during the review? → YES
A response may be filed