Challenge the app or patent

Question 1

What actions challenges application?

What actions challenges patent

Answer 1

challenge applicaiton:

1. third party submission
2. protest
3. Derivation

challenge patent:

1. citation
2. reexamination
3. PGR, only for AIA
4. IPR
5. CBM, only for financial products.

Question 2

based on what?
EPR:
IPR:
PGR:
CBM:

Answer 2

IPR:
102, 103, only in the form of printed publication, patent.
No inverntorship, no sale, pub use, oral presentation.

ex parte reexamination:
SNQ, 102, 103, only in the form of printed publication, patent.
No inverntorship, no sale, pub use, oral presentation.
No broadening claims

PGR and CMB:
101, 102, 103, 112 (double patenting, NOT best mode)

Question 3

standard the PTO use to initiate challenging the patent, using PGR, IPR, CMB, EPR.

Answer 3

PGR: more likely than not
CBM: same as PRG

IPR: a reasonable likelihood

EPR: substantial new question

Question 4

About time:
PGR
IPR
IP reexaminatin
EPR
CMB
Derivatiion

Answer 4

PGR: only post-AIA, within 9M from patent issue, finish in 12M
CMB: only post-AIA, after end of PGR, finish in 12M
IPR: pre-AIA, after issue; post-AIA: after 9M or end of PGR, finish in 12M

IP reexamination: Only before 09-16-2012

EPR: anytime before 6Y after the expiration of the patent. Done within 2M!
Extension need reason, no retroactive.

Derivation, within 12M of publication, only for AIA

Question 5

reexamination, public assess, parties involve

Answer 5

Anyone can obtain reexamination file.
Hearing is open to the public, unless request by the patent owner not to open to the public.

Anyone can request, including patent owner.

Question 6

More about reexamination

Answer 6

Third party can submit prior art, but cannot involve any further
Can never broaden claims (different from reissue)

No continuation
Cannot be withdrawn or canceled.
Can file appeal for final rejection
Can be revived if unintentional.

If patent owner don’t response: Director will make decision for the certificate (affirm or cancel claims). 1.550(d)

Fail to response won’t result in abandonment.

PTO will issue Reexamination Certificate at the end, even if office action not responded. No abandonment happens.

Question 7

what to file if forget to claim earlier priority?

Answer 7

certificate of correction

Question 8

about citation:
fee?
who?
time?
what would PTO do on it?
materials?

Answer 8

No fee
Anyone could file citation
After issue.
PTO won’t examine it, just put it on record.

Question 9

About derivation: use when someone steal your invention and file earlier…

Question will likely be: how to deal with conflict in application, that someone else disclosed your invention in an earlier app?

Depends on whether there are same claims in different apps.

Answer 9

Affidavit 130: no same claims in that earlier app.

Petition derivation: same claims appears in that earlier app

Question 10

When filing derivation

what need to be show? hint: two points.

Who deals with it?

When to file?

arbitration?
The conflict could be settled via arbitration. R42.410

Answer 10

Need to show:

1. same claims
2. no authorization.

The petition is filed to the PTO, the Director institute it.
PTAB deals with the petition and makes the decision.

File within 1 year of the date of the first publication of that claim. R42.403

Cannot be between two patents. Need to have at least one app pending at PTO.

Question 11

third party submission, MPEP 1134

timing?

who?

for what?

Answer 11

3 dates:
A. Notice of allowance; B. 6M from pub; C. first rejection.
Compare B and C, the later one denoted by D;
Compare A and D, the earlier one denoted by E
submitted before E (R1.290(b)).

Anyone can submit, can be anonymous.

Only to present evidence, not to tell what PTO should do.

Question 12

protest (MPEP 1900) and 3rd party citation, difference in time?

Answer 12

Before and after publication.