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MPEP - Patent Bar Exam > Patent Bar Supplements > Flashcards

Patent Bar Supplements Flashcards

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1
Q

Under the AIA, what are the 2 new procedures for attacking the validity of a patent after issuance and is applicable to patents issued on or after September 16, 2012?

A

Inter Partes Review

Post-Grant Review

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2
Q

What is Inter Partes Review replacing?

A

Inter Partes Reexamination

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3
Q

Who can file for these reviews?

A

any person who is not the owner of a patent may file with the PO

these procedures are instituted by the 3rd parties seeking to challenge the validity of a patent

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4
Q

When can a petition for inter partes review be filed?

A

it may only be filed after the time window for filing or conducting a post-grant review has closed

petition for inter partes review can only be filed after the later of :
9 months after the grant of a patent OR
the date of termination of any post-grant review of the patent

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5
Q

When can a petition for post-grant review be filed?

A

it can only be filed within 9 months after grant of the patent

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6
Q

For inter partes review, what grounds may be used to challenge the validity of the patent?

A

limited to issues raised under Section 102 or 103 and only on the basis of prior art consisting of patents or printed publications

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7
Q

For post-grant review, what grounds may be used to challenge the validity of the patent?

A

any ground affecting the validity of a patent including Section 102, 103, as well as other grounds such as Section 101 and 112

only ground that CANNOT be used is failure to comply with the best mode requirement

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8
Q

What is required to institute a post-grant review or inter partes review?

A

a person (other than the patent owner) must first file a petition accompanied by payment of fee established by the Director

the petition must identify all real parties in interest

the petitioner must provide copies of any of the documents submitted with the petition to the patent owner or, if applicable, the designated representative of the patent owner

the petition must identify, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including:

copies of patents and printed publications that the petitioner relies upon in support of the petition and

affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions

all petitions are made available to the public for inspection as soon as practicable

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9
Q

After a third party files a petition for inter partes or post-grant review, what right does the patent owner have?

A

The patent owner has the right to file a preliminary response to the petition within 3 months, that sets forth the reasons why no review should be instituted based upon the failure of the petition to met any of the statutory requirements

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10
Q

What happens if an inter partes review or post-grant review is granted?

A

then the review will proceed to a trial-like proceeding before the Board during which both the patent owner and the petitioner may request discovery to help prove their position

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11
Q

Under AIA, who will promulgate regulations establishing and implementing a transitional program for the review of business method patents?

A

The Director

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12
Q

What is Transitional Program?

A

it is very similar to a post-grant review and will have the same standards and procedures and applies to covered business method patents

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13
Q

What can a petitioner do with one or more claims of a patent that raises ground under normal post-grant review such as failure to comply with section 101, 102, 103, or 112?

A

The petitioner may request or cancel those claims as unpatentable

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14
Q

Is the determination of the Director to institute a business method patent review appealable?

A

No, the decision is final and NOT appealable

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15
Q

What is the effective date of transitional program?

A

September 16, 2012 and it applies to any covered business method patent issued at any time

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16
Q

A person may not file a petition for the transitional program with respect to a business method patent unless the person or person’s real party-in-interest or privy has been ___________

A

charged with infringement under the patent

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17
Q

When can petition for transitional program be filed?

A

It can only be field after 9 months window for filing a post-grant review has closed

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18
Q

Does the post-grant review also review for all patents including business method patents?

A

Yes

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19
Q

Which patents qualify for Transitional Program?

A

it’s available for all patents, whenever filed, provided that the patent is drawn to a covered business method

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20
Q

Under AIA, what is a covered business method (CMB) patent?

A

It’s a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, excluding patents for “technological inventions”

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21
Q

Does the AIA specify what a patent for a technological invention cover?

A

No, therefore the PO has promulgated a rule for deciding which patents are directed to technological invention (therefore won’t qualify for the transitional program)

The PO will take case-by-case basis and consider whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution

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22
Q

Under AIA, what does the covered business review program and Transitional Program end?

A

covered business review program will expire after 8 years from the effective date of the provision, therefore, the PO will NOT accept new petitions for the transitional program filed on or after September 16, 2020

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23
Q

What are the differences between post-grant review and transitional program?

A

patent eligibility - only covered business method patents are eligible for transitional program, while all subject mater can undergo post-grant review (but only those patents issued after September 16, 2012)

timing for filing a petition for review - a covered business method review may only be requested after the period in which a petition for post-grant review has expired (9 or more months after grant of the patent)

estoppel - the petitioner is estopped from raising any ground that the petitioner raised or reasonably could have raised, during a post-grant review. for transitional program, covered business method patents, estoppel is limited to issues actually raised during the proceeding

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24
Q

Why were derivation proceedings created under AIA?

A

it was created to ensure that the first person to file the application is actually a true inventor

if a dispute arises between 2 applicants on who is a true inventor, it will be resolved using a derivation proceeding conducted by the Board

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25
Q

What does “the first publication” mean?

A

it means either a patent or an application publication under 35 USC 122(b), including a publication of an international application designating the US as provided by 35 USC 374

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26
Q

When should petition for a derivation proceeding be filed?

A

it must be filed within 1 year period beginning on 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 allegedly derived invention

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27
Q

What does the petition for a derivation proceeding show?

A

that the petitioner has at least 1 claim that is the same or substantially the same as the invention disclosed to the respondent

that the inventor from whom the claimed invention was allegedly derived did NOT authorize the filing of the earlier application claiming the derived invention

why the respondent’s claimed invention is the same or substantially the same as the invention disclosed to the respondent

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28
Q

What did the Section 3(i) of AIA amend?

A

It amended 35 USC 135 to provide for derivation proceeding and to eliminate interference practice as to applications and patents having an EFD on or after March 16, 2013

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29
Q

What is a difference between interference and derivation proceeding?

A

derivation will be conducted in a single phase without the use of a “count”

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30
Q

What is necessary for the inventor to provoke a derivation proceeding?

A

inventor is allowed to make a copy of an alleged deriver’s application, and make any necessary changes to reflect accurately what the inventor invented, and provoke a derivation proceeding

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31
Q

What is 35 USC 135(a)?

A

an applicant for patent may file a petition to institute a derivation proceeding in the office

the petition must state with particularly the basis for finding that a named inventor in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and without authorization, filed the earlier application

the petition must be filed within 1 year of the first publication by the applicant of a claim to the same or substantially the same invention, made under oath, and be supported by substantial evidence

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32
Q

What is 35 USC 135(b)?

A

once a derivation proceeding is instituted, the Board will determine whether the named inventor of the earlier application filed it without authorization

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33
Q

What is 35 USC 135(c)?

A

the Board may defer action on a petition for derivation proceeding for up to 3 months after a patent is issued from the earlier application that includes a claim

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34
Q

What is 35 USC 135(d)?

A

a decision that is adverse to claims in an application constitutes the final refusal of the claims by the Office, while a decision adverse to claims in a patent constitutes cancellation of the claims, if no appeal or other review of the decision has been taken or had

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35
Q

What is 35 USC 135(e)?

A

the parties involved in the derivation proceeding may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute

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36
Q

What is 35 USC 135(f)?

A

the parties involved can determine the contest, or any aspect thereof, by arbitration within a time specified by the Director, and provides that the arbitration is governed by the provision of title 9, to the extent that title is not inconsistent with 35 USC 135

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37
Q

Under 35 USC 6(b), who has the jurisdiction to conduct derivation proceedings, inter partes reviews, post-grant reviews, transitional program for covered business method reviews?

A

the Board

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38
Q

Which proceedings are not “involved” patents and are treated separately except as ordered by the Board?

A

ex parte reexamination and inter partes reexamination

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39
Q

What are the exceptions to require all parties to be part of communications?

A

ministerial communications with support staff

conference calls or hearings in which opposing counsel declines to participate

informing the Board in one proceeding of the existence or status of a related Board proceeding

reference to a pending case in support of a general proposition

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40
Q

Even if a party refuses to participate, can the Board permit a hearing or conference call to take place?

A

Yes

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41
Q

Who does a party represented by counsel must designate?

A

both a lead and back-up counsel

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42
Q

Is power of attorney required to be filed with the designation of counsel?

A

Yes, unless he is already a counsel of record

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43
Q

What does pro hac vice mean?

A

for this occasion only

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44
Q

Does the Board recognize counsel pro hac vice?

A

the Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, and subject to the requirement that lead counsel is a registered practitioner, and potential other considerations

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45
Q

What is the default manner in filing documents with the Board?

A

electronic filing

the Board will publish electronic submission information online

paper filing may be used where appropriate, but must be accompanied by a motion explaining the need for non-electronic filing

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46
Q

What are the mandatory notices that the parties to a proceeding are required to provide?

A

identification of the real parties-in-interest

related matters

service information

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47
Q

Who is considered “real party-in-interest”?

A

the party “who according to the governing substantive law, is entitled to enforce the right.”

Although there is no right being enforced, the “real party-in-interest” may be the petitioner, and/or it may be the party or parties at whose behest the petition has been filed

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48
Q

What is “privity”?

A

It refers to a relationship between the party to be estopped and the unsuccessful party in the prior litigation which is sufficiently close so as to justify application of the doctrine of collateral estoppel

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49
Q

How to distinguish between “real party-in-interest” and “privy”?

A

Whether the non-party exercised or could have exercised control over a party’s participation in a proceeding, but there’s no clear line to determine the necessary quantity or degree of participation to qualify as a “real party-in-interest” or “privy”

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50
Q

What are considered related matters?

A

any other judicial or administrative matter that would affect or be affected by the decision in the proceeding

judicial matters include actions involving the patent in federal court

administrative matters include every application and patent claiming or which may claim the benefit of the priority of the filing date of the party’s involved patent or application as well as any ex parte or inter partes reexamination for an involved patent

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51
Q

What is identification of service information?

A

parties are required to identify service information to allow for efficient communication and to maintain a proper correspondence address in the record

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52
Q

What is included in public availability?

A

the record of a proceeding including documents and things will be made publicly available, unless a party files a motion to seal that is then granted by the Board

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53
Q

What are some examples of confidential information?

A

provides protective orders for trade secret or other confidential research, development, or commercial information

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54
Q

What is Motion to Seal?

A

a party may file a motion to seal document or thing to be seals concurrent with the filing of the document or thing.

document or thing will be provisionally sealed on receipt of the motion and remain so pending the outcome of the decision on motion

a party may file a motion to seal where the motion contains proposed protective orders such as default protective order in Appendix B

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55
Q

What does Appendix B provide?

A

it provides guidelines on proposing a protective order in a motion to seal, including Standing Protective Order

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56
Q

Can a petitioner filing confidential information with a petition file a motion to seal with a proposed protective order as to the confidential information?

A

Yes.

But, a petitioner filing information under seal with a petition is NOT required to serve the confidential information

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57
Q

What happens when a petitioner is seeking entry of the default protective order in Appendix B or alternative protective order?

A

the patent owner will be given access to the confidential information prior to institution-of-the-trial by agreeing to the terms of a default order:

by agreeing to the terms of the protective order requested by the petitioner

by agreeing to the terms of a protective order that the parties file jointly or

by obtaining entry of a protective order

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58
Q

What is the purpose of rules concerning confidential information in a petition?

A

the rule seeks to streamline the process of seeking protective orders prior to the institution of the review while balancing the need to protect confidential information against an opponent’s ability to access information used to challenge the opponent’s claims

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59
Q

When are confidential information subject to a protective order ordinarily become public?

A

It would ordinarily become public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a trial

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60
Q

Does a party seeking to maintain the confidentiality of information have the option to expunge the information from the record prior to the information becoming public?

A

Yes, they may file a motion to expunge the information from the record prior to the information becoming public

However, the rule encourages redacting sensitive information where possible, rather than seeking to seal entire documents

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61
Q

During derivation proceeding, can submission of dates of conception be sealed?

A

Yes, where the dates of conception are filed under seal, a party may request that an opponent not be given access to the conception dates until the opponent’s conception dates have been provided to the record

62
Q

What is Discovery?

A

a tool used to develop a fair record and to aid the Board in assessing the credibility of witnesses

63
Q

What provides a sequenced discovery process upon institution of the trial?

A

Scheduling Order

64
Q

What is Sequenced Discovery?

A

It allows parties to conduct meaningful discovery before they are required to submit their respective motions and oppositions during the trial

Therefore, discovery before the Board is focused on what the parties reasonably need to respond to the grounds raised by an opponent

65
Q

What does Routine Discovery include?

A

production of any exhibit cited in a paper or testimony

the cross-examination of the other sides declarants

relevant information that is inconsistent with a position advanced during the proceeding

66
Q

Is the Board authorization required to conduct routine discovery?

A

No, it’s not required.

However, the Board will set times for conducting the discovery in the Scheduling Order

67
Q

What are some instances where inconsistent statements are to be made?

A

where a petitioner relies upon an expert affidavit alleging that a method described in a patent cannot be carried out, the petitioner would be required to provide any non-privileged work undertaken by, or on behalf of , the petitioner that is inconsistent with the contentions in the expert’s affidavit

where a patent owner relies upon surprising and unexpected results to rebut an allegation of obviousness, the patent owner should provide the petitioner with non-privileged evidence that is inconsistent with the contentions (disagreements) of unexpected properties

68
Q

Who bears the burden and expense of producing a witness for redirect or cross-examination?

A

It should normally fall on the party presenting the witness

69
Q

Can a request for additional discovery be filed?

A

yes, it must be in the form of a motion, although the parties may agree to discovery amongst themselves

or additional discovery request could be granted under either standard when a party raises an issue where the evidence on that issue is uniquely in the possession of the party that raised it

70
Q

For which proceedings is the “interest of justice” standard used to grant requests for additional discovery?

A

inter partes review

derivations

71
Q

For which proceedings is the “good cause” standard used to grant requests for additional discovery?

A

post-grant review

covered business methods

72
Q

Under 35 USC 24, what can a party request?

A

a party can request authorization to compel

however, prior to moving for or opposing compelled testimony, the parties should discuss which procedure is appropriate

73
Q

If a motion to compel is granted, then which testimonies are included?

A

It can be ex parte, subject to subsequent cross-examination or inter partes

74
Q

What does section 42.51(a) provide?

A

It provides for mandatory initial disclosures either by agreement reached under 42.51(a)(1) or by a motion where the parties fail to reach an agreement under 42.51(a)(2)

75
Q

When does the Board require a live testimony?

A

The Board will require a live testimony where the Board considers the demeanor of a witness critical to assessing credibility

76
Q

What are some cases where the credibility of a witness needs to be assessed?

A

cases where derivation is an issue

where misconduct is alleged to have occurred during the proceeding

where testimony is given through an interpreter

77
Q

What are the default time limits for witness cross-examination?

A

compelled direct examination - 7 hours

cross-examination - 4 hours

redirect examination - 2 hours

cross-examination for uncompelled direct testimony - 7 hours

redirect examination for uncompelled - 4 hours

recross examination - 2 hours

78
Q

What is the location set for witness cross-examination?

A

the rules do not provide for a specific location for taking testimony other than providing that the testimony may be taken at any reasonable location in the US

the Board is available if a reasonable location cannot be agreed upon via conference call

79
Q

What does the Office adopt regarding e-discovery?

A

default Model Order

80
Q

What should happen if a party desires to obtain a production of Electronically Stored Information (ESI) as part of additional discovery under section 42.51 and 42.52?

A

the matter should be raised with the Board in a timely fashion before the discovery is scheduled to take place

81
Q

What is general motions practice?

A

the proceeding begins with the filing of a petition that lays out the petitioner’s grounds and supporting evidence for the requested proceeding.

additional relief in a proceeding must be requested in the form of a motion

82
Q

What is an exception to motions not being entered without prior Board authorization?

A

motions where it is impractical for a party to seek prior Board authorization (i.e. motions to seal or motions filed with a petition)

or motions for which authorization is automatically granted (i.e. requests for rehearing, motions to exclude evidence, observations on cross-examination, the Board expects that the Scheduling Order will pre-authorize and set times for the filing of observations on cross-examination and motions to exclude evidence based on inadmissibility)

83
Q

How is an authorization for motion generally obtained?

A

during a conference call, which generally occurs within 1 month of institution of IPR, PGR, CBM, and derivation proceedings

also during the conference call, the Board will decide procedural issues raised in a conference call during the call itself or shortly thereafter to save time, money, prevent delays

84
Q

What are limited to page limits in order to streamline proceedings?

A

petitions, motions, and patent owner preliminary responses, patent owner responses, oppositions and replies

85
Q

What does the Board expect most petitions and motions will rely upon?

A

affidavits of experts

86
Q

What should affidavits and opinions express or disclose to be given weight?

A

It should disclose the underlying facts or data upon which the opinion is based

87
Q

What does a petition lay out?

A

It lays out the grounds for review and supporting evidence, on a claim-by-claim basis for, instituting the requested proceeding

88
Q

To file a petition for inter partes review, post-grant review, and derivations, what is required with the petition?

A

a complete petition with the required fee, and include a certificate of service for the petition, the petitioner needs to certify that the patent is eligible for IPR and that the petitioner is not barred or estopped from requesting the review, and that petitioner identify the claims being challenged and the specific basis for challenge

89
Q

In addition to the petition requirements, what must covered business methods proceedings require?

A

It requires a petition demonstrate that the patent for which review is sought is a covered business method patent

90
Q

What are the special requirements for petition?

A

a petitioner must:

certify that the patent or application available for review

the petitioner is not barred or estopped from seeking the proceeding

petitioner must identify each claim that is challenged and the specific statutory grounds on which each challenge to the claim is based

provide a claim construction for the challenged claims

state the relevance of the evidence to the issues raised

for the inter partes review, post-grant review, and covered business methods proceedings, a petitioner must also identify how the construed claim is unpatentable over the relevant evidence

91
Q

What patents are excluded from covered business methods?

A

technological inventions

92
Q

What are some examples of CBM patents subject to CBM review proceeding?

A

a patent that claims a method for hedging risk in the field of commodities trading

a patent that claims a method for verifying validity of a credit card transactions

93
Q

What are some examples of patents that claim a technological invention that would NOT be subject to a CBM review proceeding?

A

a patent that claims a novel and non-obvious hedging machine for hedging risk in the field of commodities trading

a patent that claims a novel and non-obvious credit card reader for verifying the validity of a credit card transaction

94
Q

Are claim charts required?

A

No, but the petitioner may file claim chart to explain clearly and succinctly what the petitioner believes a claim means in comparison to something else, such as another claim, a reference, or a specification

95
Q

What are benefits of claim charts?

A

streamline the process

identify key features of a claim

compare those features with specific evidence

96
Q

Do claim charts count towards applicable page limits?

A

Yes if submitted as part of petition, motion, patent owner preliminary response, patent owner response, opposition, or reply

No if submitted as an exhibit

97
Q

Why is the broadest reasonable interpretation standard encouraged?

A

because it will encourage patent owner to fashion clear, unambiguous claims

it will ensure that uncertainties of claim scope are removed or clarified

98
Q

Can patent owners amend their claims during IPR, PGR, and CBM trials?

A

After conferring with the Board, they can file a first motion to amend the patent

99
Q

What is the purpose of Patent Owner Preliminary Response?

A

to present evidence other than new testimonial evidence to demonstrate that no review should be instituted

100
Q

When should a patent owner file a preliminary response?

A

No later than 3 months after the grant of a filing date

101
Q

What type of new testimonial evidence is permitted?

A

where a party demonstrates that such evidence is in the interests of justice such as addressing issues relating to the petitioner’s standing, or where the Board determines that consideration of the identified evidence is necessary in the interests of justice as the evidence demonstrates that the trial may not be instituted

102
Q

What happens if no challenged claims remain?

A

the Board would terminate the proceeding, but if one or more remain, then the Board’s decision on institution would be based solely on the remaining claims

103
Q

Under 35 USC 314(a), when can the Director authorize institution of inter partes review?

A

when the Director determines that the information presented in the petition filed under 35 USC 311, and any responses filed under 35 USC 313, shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition

“reasonable likelihood” standard is somewhat flexible standard and allows the Board room to exercise judgment

104
Q

Under 35 USC 324(a), when can the Director authorize institution of post-grant review?

A

when the Director determines that the information presented in the petition filed under 35 USC 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable

“more likely than not” standard requires greater than 50% chance of prevailing

105
Q

Under 35 USC 324(b), what can also be used to satisfy the 35 USC 324(a)?

A

by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications

106
Q

Under Section 18(a)(1) of the AIA, what standards and procedures will be used for transitional proceeding for CBM patents?

A

it will employ the standards and procedures of a post-grant review under Chapter 32 of Title 35 of US code

107
Q

What does Section 18(a)(1)(B) of AIA specify?

A

it specifies that a person may NOT file a petition for a transitional proceeding with respect to a CBM patent unless the person or person’s real party-in-interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent

108
Q

What patents are included under covered business method?

A

a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.

it does NOT include patents for technological inventions

109
Q

What does 35 USC 135(a) provide concerning derivation?

A

it provides that an applicant for patent may file a petition to institute a derivation proceeding, and must state with particularity the basis for finding that a named inventor in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, filed the earlier application

110
Q

When does the petition for derivation be filed by?

A

it must be filed within 1 year of the 1st publication by the earlier applicant of a claim to the same or substantially the same invention, must be made under oath, and must be supported by substantial evidence

111
Q

Under 35 USC 135(a), when can the Director institute a derivation proceeding?

A

when the Director determines that the petition demonstrates that the standards for instituting a derivation proceeding are met

112
Q

Who will institute he trial on behalf of the Director?

A

The Board

the Board will consider whether or not a party has satisfied the relevant statutory institution standard, take into account whether the same or substantially the same prior art or arguments were previously presented to the Office under 35 USC 325(d)

113
Q

Is the Board’s determination to institute a trial appealable?

A

No, Board’s decision is final and non-appealable

114
Q

If the Board approves to institute a trial, what will the Board provide concurrent with the decision?

A

They will provide the Scheduling Order

115
Q

What is Scheduling Order?

A

It will set due dates for taking action accounting for the complexity of the proceeding but ensuring that the trial is completed within 1 year of institution

the due dates can be requested to be changed during the initial conference call

116
Q

When does the initial conference call take place?

A

The Board expects to initiate a conference call within about 1 month from the date of institution of the trial to discuss the Scheduling Order and any motions that the parties anticipate filing during the trial

117
Q

What does the Board require to be filed no later than 2 business days prior to the conference call?

A

a list of proposed motions so that the Board and the opposing parties will have adequate notice to prepare for the conference call and to plan for the proceedings

118
Q

For IPR, PGR, CBM, and derivation, will the patent owner/ applicant have an opportunity to respond to the petition once a trial has been instituted?

A

Yes

119
Q

What are the requirements of the patent owner’s response to the opposition to the petition?

A

it is subject to the page limits as provided in Section 42.24

the response should identify all the involved claims that are believed to be patentable and state the basis for that belief

the response should include affidavits or additional factual evidence sought to be relied upon and explain the relevance of such evidence

the response may contain claim chart identifying key features of a claim and comparing those features with specific evidence

120
Q

What happens if a patent owner chooses to NOT to file a response?

A

the patent owner will arrange for a conference call with the Board to discuss whether or not the patent owner will file a request for adverse judgment

121
Q

For patent owners to file a first motion to amend, is prior Board authorization required?

A

No, but the patent owner is still required to confer with the Board before filing the motion

122
Q

For patent owners seeking to file any additional motion to amend claims in the patent Section 42.121(c) and 42.221(c), is Board authorization required?

A

Yes

123
Q

When is the due date to file a motion to amend?

A

it must be filed no later than the time period for filing a patent owner response, unless a different due date is provided in a Board order

most motions to amend will be due 3 months after a trial is instituted

124
Q

Under Section 42.121(b) and 42.221(b), what are the allowed contents of motions to amend?

A

any motion to amend include a claim listing

show the changes being sought clearly

describe how the original disclosure to the patent any any relied upon prior application supports each claim that is added or amended

patent owners may NOT enlarge the scope of the claims of the patent or add new matter

most amendments sought will be a replacement of a set of broader claims with a set of narrower claims

motions seeking to replace an original patent claim with a new claim, the new claim should be identified as a proposed substitute claim and all changes relative to the original claim clearly discussed

set forth the support in the original disclosure of the patents as well as any application for which benefit of the filing date of the earlier filed disclosure is sought

125
Q

If the claim construction under the broadest reasonable interpretation is different from that of district court, what can the patent owner do?

A

The patent owner will have opportunities to amend its claims during an administrative trial before the Board

When filing a motion to amend, a patent owner may demonstrate that the scope of the amended claim is substantially identical to that of the original patent claim, as the original patent claim would have been interpreted by a district court

126
Q

When will filing of a motion to amend claims by a petitioner or respondent authorized in derivation proceedings?

A

it will be authorized upon a showing of good cause

where the amendment materially advances settlement between the parties or seeks to cancel claims

the Board expects that a request to cancel all of a party’s disputed claims will be treated as a request for adverse judgment

127
Q

Does the petitioner have an opportunity to fully respond to a patent owner’s motion to amend?

A

Yes

128
Q

Is authorization required to file an opposition to a motion to amend?

A

No

129
Q

What is accepted in petitioner reply to patent owner response or patent owner reply to opposition to amend?

A

reply may only respond to arguments raised in the corresponding opposition, NOT raise a new issue or belatedly present evidence

130
Q

Can a party challenge admissibility of evidence?

A

Yes, they must object timely to the evidence at the point it is offered and then preserve the objection by filing a motion to exclude the evidence

131
Q

What must the Motion to Exclude Evidence include?

A

identify where in the record the objection originally was made

identify where in the record the evidence sought to be excluded was relied upon by an opponent

address objections to exhibits in numerical order

explain each objection

132
Q

If a cross-examination occurs after last substantive paper on an issue has been filed, then what are the options?

A

The Board may authorize filing of observations to identify such testimony a response to observations

133
Q

What files the observation?

A

The party taking the cross-examination

134
Q

What is an observation?

A

Observation should be concise statement of relevance of identified testimony to an identified argument or portion of an exhibit

observation is not an opportunity to raise new issues, re-argue issues, or pursue objections

135
Q

Does the opposing party need prior authorization to file a response to an observation?

A

No, but the response should be equally concise

136
Q

What is an oral argument?

A

each party to a proceeding will be afforded an opportunity to present their case before at least 3 members of the Board

137
Q

What evidence is admissible during an oral argument?

A

a party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted.

no new evidence or arguments may be presented at the oral argument

138
Q

What happens if a settlement agreement has been reached?

A

the Board will terminate a proceeding after the filing of a settlement agreement, unless the Board has already decided on the merits of the proceeding

139
Q

For IPR, PGR, and CBM, when is the final decision made?

A

The Board will enter a final written decision not more than 1 year from the date a trial is instituted, except that the time may be extended up to 6 months for good cause

140
Q

For derivation proceeding, when is the final decision made?

A

Although not required by the statute, the Board expects to provide a final decision not more than 1 year from the institution of the proceeding

141
Q

What are options if a party is dissatisfied with a decision of the Board?

A

they may file a request for rehearing

the party challenging the decision bears the burden of showing that a decision should be modified

the request should specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, opposition or a reply

142
Q

Is new evidence admissible for rehearing?

A

No, evidence not already of record at the time of the decision will not be admitted unless a show of good cause

143
Q

When will the request for rehearing be decided?

A

it will be decided approximately 1 month after receipt of the request

144
Q

What is the New Patent Prosecution Highway (PPH) Programs?

A

PPH is a program that allows applicants to leverage allowable claims in 1 participating office to obtain a patent faster and more efficiently for corresponding claims in another participating office

145
Q

When can PPH be used?

A

It can be used for claims that are deemed allowable in either a national application or a Patent Cooperation Treaty (PCT) application

146
Q

What are the 2 pilot programs USPTO launched?

A

IP5 PPH

Global PPH

but a single PPH request form may be filed in the USPTO based on allowed claims in any of the participating office, without specifying which pilot program is being utilized

147
Q

What was in place before the PPH?

A

there was a bilateral PPH agreements between different intellectual property offices but these agreements were not uniform and had different forms and submission requirement

148
Q

What are the benefits of requesting examination under PPH pilot programs?

A

USPTO no longer requires a fee for an application accepted into the PPH program, so it can be expedited at no cost

prosecution time is less than for non-PPH applications

rate of the applications allowed in the first action and overall rate of patents granted is higher under the PPH program

149
Q

What are the requirements of participation in the PPH program?

A

the applications at the Office of Earlier Examination (OEE) and the Office of Later Examination (OLE) must have the same earliest date, which can be either the filing ate or the priority date

The OEE must have found at least 1 claim allowable or the PCT work product must have indicated at least 1 claim has novelty, inventive step, and industrial applicability

all claims presented under the PPH program must sufficiently correspond to 1 or more of the allowable claims

the OLE has not started substantive examination of the application

150
Q

What claims can be presented under the PPH program?

A

claims that are narrower in scope may be presented in the OLE if they are supported in the specification

applicant cannot present a new “category” of claims in the OLE that was not present in the OEE

151
Q

Along with a single form to request participation in either of the new pilot program, what other documents are required?

A

copy of the most recent Office Action prior to the decision to grant the patent or the most recent PCT work product

english language translation of the most recent Office Action or PCT work product is not written in English

information disclosure statement (IDS) listing the documents cited in the OEE work product

copies of any documents cited by the OEE that are not US patent or US patent publications

claims correspondence table listing which claims in the current application correspond to allowable claims in the OLE and an explanation of correspondence for each claim

the attorney submitting the request must sign a statement at the end of the form stating that “all claims in the US application sufficiently correspond to the patentable/ allowable claims in the OEE application”

152
Q

What happens if denied participation in the PPH program?

A

applicant will have 1 chance to correct any mistakes

if the applicant fails to correct the mistake, then the application will be examined in normal turn

MPEP - Patent Bar Exam (31 decks)

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