2014 supplement Flashcards
inter partes review
when
who
request to do?
timing
appeal the decision not to initiate? appeal the final decision
start from 9.16.2012, replace inter partes reexam
any person who’s not the patent owner may file
available for any patent
grounds: patent and printed publication, 102, 103
may request to cancel as unpatentable claims:
1, only on ground that could be raised under 102 or 103; 2, only on the basis of prior art consisting of patents or printed publications
may be filed after the later of either 1, 9 months after the grant of a patent or issuance of a reissue of a patent; or 2, if a post-grant review is instituted, the date of the termination of that post-grant review
may not be instituted if filed more than 1 year after the date on which the petitioner, real party in interest or privy of the portioner is served with a complaint alleging infringement of the patent
final determination issues within a year
pick a line jurisdiction against federal
inter parte review came from the PTAB
no appeal for the decision not to initiate; final decision can be appealed to United States Court of Appeals for the Federal Circuit.
post grant review
AIA: available for patents issued from app that have an EFD on or after 3.16.2013
grounds could be raised include 102 or 103, 101 and 112 with the exception of best mode compliance
3rd party must file within 9 months after the grant of a patent or issuance of a reissue of a patent
standard: may be instituted upon showing that it is more likely than not that at least one claim challenged is unpatenable (very low)
decision must be issued within 1 year (extendable for good cause by 6 months)
inter partes review
requirements petition may be considered if
1, payment of fee
2, identify real party in interest
3, identify in writing and with particularity: each claim challenged, the grounds based, evidence that supports the ground (patents and printed publications, affidavits or declarations of expert)
timing of bringing challenges
protest: prior to the date the app was published or a notice of allowance was mailed (post-publication u need applicant to consent)
3rd party submission (1134):
prior to the earlier of: (1) The date a notice of allowance; or (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner.
derivation (AIA):
within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier app’s claim to the invention
supplemental examination (beginning 9.16.2012): any time within the enforceability of the patent (6 years after expiration)
post grant review (AIA):
must be filed within 9 months after the grant of a patent or issuance of a reissue of a patent
citation of prior art: (existing and expanded 9.16.2012)
ex parte reexam:
inter parte reexam:
11/29/1999 - 9.15.2012, 9/16/2011 standard change
protest
against pending apps, will enter record if served upon the applicant
prior to the date the app was published or a notice of allowance was mailed (post-publication u need applicant to consent)
3rd party involvement ends after she files
any info
3rd party submission
1134
patents, published patent apps, or other printed publications, along with explanation
A third-party submission must be filed “"”prior to””” the earlier of: (1) The date a notice of allowance; or (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner.
so the last day to submit is one day earlier than the date resulted from above calculation
derivation
AIA
1 year of the first publication of the offending one
claim the “"”same or substantially the same””” invention
for PTO to maintain jurisdiction, one of the parties must have a pending app (no derivation between 2 patents)
must be supported by substantial evidence of derivation
supplemental examination
beginning 9.16.2012
2800
filed by patent owner only
for any patent
any time within the enforceability of the patent (6 years after expiration)
standard: SNQ
any item to be considered and corrected through a post-issuance look
if patent survives, the issues and items dealt at the PTO cannot form the basis of a subsequent fraud defense in court
within 3 months of receipt of the request, decision rendered
If SNQ is raised, then ex parte reexam will be ordered
citation of prior art
2200
At any time during the period of enforceability of a patent, any person may file a written submission (6 years after expiration)
as of 9.2012, admissible documents have been expanded, from patents and printed publications only, to include written statements of the patent owner filed in proceedings before a federal court or the PTO (not ITC) taking a position on the scope of a patent claim
the AIA prohibits the use of the statement for any purpose other than determining the claim scope in a proceeding that has already been ordered or instituted. can’t be used to determine whether to institute reexam or not
any patent app
no duties to supplement
ex parte reexam:
Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501.
SNQ
no claim broadening, no auto extension of time
inter partes reexam
11/29/1999 - 9.15.2012
3rd party, appeal to board or CAFC
apply to all patents issued from app filed on or after 11/29/1999
conditioned on statutory estoppel against a subsequent separate review, either by the office or by a federal court, of the issues that were or could have been raised in the reexam
standard raised from SNQ to reasonable likelihood that the requester would prevail on 9.16.2011
Only consider patent and printed publications
inventorship CANNOT be challenged.
transitional program for covered business method patents
9.16.2012 - 2020
all grounds
generally financial products or services that dont have a significant technology component
may not file for this unless and until the person has been sued for or charged with infringement of the patent
PLTIA
effective 11/18/2013
1, filing day requirements reduced to only spec (claims and drawings can follow)
*if drawing add new matter then drawing filing date is the filing date
2, restoration of priority to foreign app or provisional app, or PCT, extend 2 months with fee after the expiration of the 1 year based on unintentionally delay
3, revival of abandoned app and acceptance of delayed maintenance fee solely on the basis of unintentional delay, no unavoidable anymore
ethics
representation of others
no referral: can’t split fee who dont do proportional work
third party submission
1134
