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Post-Course Study Cards > Patent Challenges and Patent Corrections > Flashcards

Patent Challenges and Patent Corrections Flashcards

1
Q

PROTEST

Who can file?

A

Any member of the public

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2
Q

PREISSUANCE SUBMISSIONS

Who can file?

A

Third Party

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3
Q

PROTEST

Service Required?

A

Yes. Service Required.

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4
Q

PREISSUANCE SUBMISSIONS
Service required?

A

No.
(But applicant will be notified by PTO if using e-Office Action program)

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5
Q

PROTEST

Fee?

A

No

Unless 2nd, etc.

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6
Q

PREISSUANCE SUBMISSIONS

Fee?

A

First 3 are free

4-10: fee
Every further 10: fee

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7
Q

PROTEST

Window for filing?

A

PRIOR to both:
~ App publishing (or written permission)
~ Notice of Allowance or Final Rejection

If Reissue-during pendency (should be within 2 months of announcement of filing reissue in Official Gazette)

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8
Q

PREISSUANCE SUBMISSIONS
Window for Filing?

A

BEFORE Notice of Allowance AND Later of:
~ 6 months after publication
~ Date of 1st Office Action on merits rejecting any claims

If due date on weekend/holiday -get in before or not timely!
*No Cert of Transmission allowed

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9
Q

PREISSUANCE SUBMISSIONS

Certificate of Mailing allowed?

A

No

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10
Q

PROTEST

What happens if accepted?

A

Inclusion in File for consideration DURING examination

NO intervening rights

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11
Q

PREISSUANCE SUBMISSIONS

What happens if accepted?

A

If compliant, entered into file

Info will be considered when app is next taken up for consideration

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12
Q

CITATIONS of PRIOR ART in a Patent File

Who?

A

Anyone

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13
Q

CITATIONS of PRIOR ART in a Patent File

Real party of interest identified?

A

No. May request confidentiality

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14
Q

CITATIONS of PRIOR ART in a Patent File

Fee?

A

No fee

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15
Q

PROTEST

Evidence allowed?

A

Any information

(under 101, 102, 103 or 112)

If related to fraud/inequitable conduct? Only entered into file

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16
Q

CITATIONS of PRIOR ART in a Patent File
Evidence allowed?

A

Patents
Published applications
Publications
Written statements of Patent Owners and their experts taking a position on a patent claim before Federal Court or PTO (not from ITC)

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17
Q

PREISSUANCE SUBMISSIONS
Evidence allowed?

A

Patents
Published applications
Printed publications

(only why relevent, not arguments against patentability)

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18
Q

CITATIONS of PRIOR ART in a Patent File
Window for filing?

A

During period of enforceability
(can be 6 years poast lapse/expiration)

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19
Q

CITATIONS of PRIOR ART in a Patent File

What happens if accepted?

A

Placed in file
(Not used to decide whether to grant a post-grant proceeding)

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20
Q

PROTEST

Real party of interest identified?

A

No.

Not required to be named,

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21
Q

CITATIONS of PRIOR ART in a Patent File
Service required?

A

Yes.

Must be served on patent owner

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22
Q

REISSUE

What must be declared to request?

A
  1. Unintentional or unavoidable, and
  2. Non-purposeful

Deemed by owners to be wholly or partially inoperative or invalid

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23
Q

REISSUE

Who?

A

Patent Owner

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24
Q

SUPPLEMENTAL EXAMINATION

Grounds?

A

Must request that Office “consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish.”

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25
Q

REISSUE

List of reasons why wholly or partially inoperative or invalid?

A
  • Claims too broad (missed prior art)
  • Claims too narrow (can’t fend off competitors) Must file within Two years of issue date of original patent to seek broader claims
  • Disclosure contains inaccuracies
  • Failed to perfect claim for priority (or make a claim for priority)
  • Failed to make proper reference to co-pending apps in an ADS
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26
Q

Must request that Office “consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish.”

A

SUPPLEMENTAL EXAMINATION

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27
Q
  1. Unintentional or unavoidable, and
  2. Non-purposeful

Deemed by owners to be wholly or partially inoperative or invalid

A

REISSUE

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28
Q

REISSUE

Examination type? (Scope)

A
  • Like a new application
  • Can be rejected upon new grounds or even same (that were overcome in parent)
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29
Q

SUPPLEMENTAL EXAMINATION
Examination type? (Scope)

A
  • Once begun, all issues are on the table for review
  • PTO can decide patent shouldn’t have issued»>lose claim/patent
  • May be referred (if material fraud-narrower in scope than inequitable conduct*)»consequences
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30
Q

REISSUE or REEXAMINATION

Can either be abandoned?

A

Reissue-Yes
Supplemental Examination- No

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31
Q

SUPPLEMENTAL EXAM
Fee?

A
  1. Supplemental Examination
  2. Ex Parte Reexamination (if ordered)

For non-patent documents:
* Over 20 pages (21-50)
* Each additional 50 pages or fraction thereof

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32
Q

Offer to Surrender?
Which?

A

REISSUE

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33
Q

Must state at least one error as grounds
Which?

A

REISSUE

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34
Q

Supplemental Examination
Timing?

A

Must be on issued patent
Ceritificate issued with decision within 3 months

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35
Q

Amendments?

For REISSUE?
For SUPPLEMENTAL EXAM?

A

For Reissue-Yes
After filing by submitting the description or entire claim
Additions underlined and deletions [bracketed]
Must include markups of all changes from original patent (not just since last amendment)
Delete entire Paragraph: by simple direction
Each amendment when originally submitted:
Status (pending or cancelled) as of date of amendment of all claims
Explanation of support (from original spec)

For Supplemental Examination?
No!

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36
Q

REISSUE
Benefit of Foreign Priority?

A
  • Can be used if Failed to perfect claim for priority (or make a claim for priority)
  • MUST be made in Reissue, even if proper claim was made in original
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37
Q

Substantial New Question of Patentability
Which?

A

Threshhold determination in…
* REEXAMINATION request
* Result from SUPPLEMENTAL EXAMINATION to trigger reexamination

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38
Q

Differences-
REEXAMINATION resulting from Supplemental Examination

A

Same as ExParte Reexamination, except:
1. NOT limited to patents and printed publications
2. Patent owner does NOT have right to file a Patent Owner Statement

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39
Q

New DRAWINGS are required
Which?

A

Reissue

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40
Q

REISSUE
Timing for examination?

A

Not until two months following notice of publication of reissue in the Official Gazette

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41
Q

REISSUE
Oral Hearing?
If yes, open to public?

A

Oral Hearing in an APPEAL of a REISSUE
is OPEN to the PUBLIC

(also in a reexamination)

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42
Q

REISSUE
Interview?
If yes, open to public?

A

Not normally available to the public

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43
Q

REISSUE
File open to the public while pending?

A

YES

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44
Q

REISSUE?
Can you file a Continuation from it?

A

YES
Can be filed under Rule 1.53(b) or 1.53(d)
Need new oath specifying error not yet fixed in parent re-issue filing

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45
Q

REISSUE
Intervening Rights?

A

Yes, if claims are broadened or significantly altered

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46
Q

Want to broaden claims?

A

REISSUE

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47
Q

REISSUE
Automatic extensions possible?

A

Yes

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48
Q

REEXAMINATION
Automatic extensions possible?

A

No

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49
Q

Required to say a mistake was made

A

REISSUE

50
Q

“File cleansing”

A

SUPPLEMENTAL EXAMINATION

51
Q

Supplemental Examination
When is innoculation NOT allowed?

A
  1. Civil action or notice received BEFORE supplemental request filing date (must be proactive)
  2. Action under Section 337(a) of Tariff Act of 1930 or patent infringement action commenced under 35 USC 281
52
Q

Supplemental Examination
How many “items” and how counted?

A

Up to 12 only per request (can do more than one at same time)
Each piece of evidence (not each reason)

53
Q

Noncompliant = no filing date rewarded

A

Supplemental Examination

54
Q

REEXAMINATION
Who?

A

Anyone (including owner)

55
Q

REEXAMINATION

Basis (101, 102, 103, 112????)
Types of evidence allowed?

A

102 and 103
Patent and Printed publications
(Ordered under 35 USC 304: Reexamination order by Director)

101, 102, 103, 112 If ordered under 35 USC 257 (Supplemental Examination), evidence not limited to just patent and printed publications. Also includes 101 and 112.

56
Q

Possible to respond/argue against decision over whether to institute a
REEXAMINATION?

A

If NO…3rd party can petition decision

If YES, patent owner can file Patent Owner statement (which 3rd party requestor can respond to)

57
Q

REEXAMINATION
Estoppel?

A

No real estoppel effect…except as to EXACT documents reviewed

58
Q

REEXAMINATION

Final decision challengeable?

A

Final Rejection: Yes, by Patent Owner (to CAFC)
By 3rd Party: NO!

59
Q

REEXAMINATION
Continuations allowed?

A

No
(because not an application)

60
Q

REEXAMINATION
Intervening Rights?

A

Yes

61
Q

Cannot withdraw or cancel after filing

A

REEXAMINATION

62
Q

REEXAMINATION
New claims added?

A

Yes, but not broader

63
Q

REEXAMINATION
Revivable?

A

Yes, if delay was unintentional

64
Q

Notice of Request is posted in the Official Gazette?

A

REEXAMINATION

65
Q

Patent Owner Statement?

A

REEXAMINATION

(Optional Patent Owner Preliminary Response due in 3 months for PGR and IPR)

66
Q

What is Repy Brief a response to?

A

Examiner’s Answer

67
Q

REEXAMINATION
Where to appeal if Examiner is affirmed after going through Appeal process?

A

CAFC

(if reexam was filed before Nov 29, 1999, option for civil action)

68
Q

REEXAMINATION
When is a rehearing requested?

A

After Board decision from Appeal

69
Q

REEXAMINATION
Patent owners options if Board decision is to affirm Examiner?

A
  1. Request a rehearing
  2. Appeal Board’s decision to CAFC
  3. Nothing…Notice of Intent to Issue Reexamination Certificate
70
Q

Post-Grant Review
Who?

A
  • Not the patent owner
  • Has not previously filed a declaratory judgement (civil action) alleging invalidity (mere counterclaim is not enough to precude)
71
Q

Inter Parte Review
Who?

A
  • Not the patent owner
  • Has not previously filed a declaratory judgement (civil action) alleging invalidity (mere counterclaim is not enough to precude)Not the patent owner
  • Has not been served with complaint alleging infringement more than one year prior (exception for joinder) DELAY BY INFRINGER NOT ALLOWED
72
Q

Post-Grant Review
When?

A

Petition filed…
on/prior to 9 months after grant/reissue

If against a reissue:
No PGR if request is to cancel identical/ narrower than original AND time limit for original has passed

73
Q

Inter Parte Review
When?

A

Petition filed LATER of…
* AFTER 9 months after grant or reissue AND
* AFTER termination of Post Grant Review

ALSO: Party filing hasn’t been served w/ complaint alleging infringement more than 1 year prior (exception for joinder) (Delay by infringer not allowed!!!)

74
Q

Post-Grant Review
Basis? (ex. 101, 102…)

A

101, 102, 103, 112, double patenting

but NOT Best Mode

75
Q

Inter Parte Review
Basis? (ex. 101, 102…)

A

102 and 103
(only patents and printed publications)

76
Q

Post-Grant Review
Fee?

A

Yes

77
Q

Inter Parte Review
Fee?

A

Yes

78
Q

Post-Grant Review
Real Party of Interest identified?

A

Yes
(in writing, with particularity)

79
Q

Inter Parte Review
Real Party of Interest identified?

A

Yes
(in writing, with particularity)

80
Q

Patent Owner Preliminary Response?

A

Optional, for both PGR and IPR
Due 3 months from notice of grant of filing date

(NOTE: Optional Patent Owner Statement after Reexamination is ordered, unless order came from a Supplemental Review)

81
Q

Third Party Requestor Reply?

A

REEXAMINATION
Optional- in response to the optional Patent Owner Statement

82
Q

Patent Owner Preliminary Response?
What can be included?

A

PGR and IPR
(1) Why review shouldn’t be instituted (failure to meet requirements)
(2) New testimonial evidence now allowed

83
Q

PGR and IPR
Petition Phase: How are issues of material fact considered?

A

During Petition Phase (for institution purposes),
assumed in favor of Petitioner

84
Q

How long is the “Petition” Phase of PGR and IPR?

A

6 months

Time 0: Notice of Grant of Filing Date
3 months: Optional Patent Owner Preliminary Response
6 mohts: Decision to Insitutute and Scheduling Order

85
Q

How long until final decision for PGR or IPR, once a Decision to Institute has been made?

A

12 months

Discovery/Trial Phase is about 7 months
Hearing/Decision Phase is about 5 months

86
Q

Which claims are reviewed and under what grounds for PGR/IPR?

A

If instituted, ALL claims challenged/ALL grounds

(usually provides analysis- strengths/weaknesses of all challenges)

87
Q

Post-Grant Review

Standard for decision to institute?

A
  1. More likely than not, or
  2. Novel/unsettled legal question
88
Q

Inter Parte Review

Standard for decision to institute?

A

Reasonable likelihood (fairly low)

89
Q

PGR/IPR
What, if anything, can dissatisfied party do after Decision to Institute?

A

Can request rehearing as to points overlooked/misapprehended

NOT appealable

90
Q

PGR/IPR
When does Patent Owner get Discovery?

A

Patent Owner Discovery 1st (~3 months; depose petitioner’s declarants)

Petitioner Discovery next (~3 months; depose patent owners declarants)

Also gets to depose petitioner’s declarants again, after Petitioner Discovery

91
Q

PGR/IPR
When is Patent Owner response in Discovery/Trial Phase?

A

After Patent Owner discovery and before Petitioner Discovery

(Can also petition/motion to Amend- cancel or reasonable # of substitute claims. Very rare)

92
Q

PGR/IPR
What/when is Patent Owner Sur-reply?

A

Petitioner’s chances to respond during PG Proceedings:

1st- Optional Patent Ownder Preliminary Response (about whether to institute)

2nd- After Patent Owner Discovery and before Petitioner Discovery (can also motioon to amend here)

3rd: Patent Owner Sur-Reply- at very end of Discovery/Trial Phase, in response to Petitioner’s Reply (and their Opposition to Amendments)

4th: Motions to Exclude evidence- after Discovery is complete)

5th: Possible further amendment- by joint request- only if it would materially advance setlement. May not enlarge scope

93
Q

PGR/IPR
Right to an oral hearing?

A

Yes. BOTH parties have a right to this

94
Q

PGR/IPR
Requirement for Settlement?

A
  • MUST be a joint request
  • Only if Office hasn’t decided on the merits
  • Must be written (e.g. cross-license agreement)
  • Copy must be filed before termination
95
Q

PGR/IPR
Can settlement be Confidential?

A

Yes
At request of a party to the proceeding
Treated as “Business Confidential Info”

Still must file a copy before termination of proceeding

96
Q

PGR/IPR
Burden of Proof for Final Written Decision?

A

On Petitioner

Preponderance of Evidence
(>50%)

97
Q

PGR/IPR
Estoppel?

A

Yes

wrt that claim, anything that was raised or reasonably could have ben raised” can’t be basis of future claim

Applies to: USPTO, Court and ITC

No estoppel if Settlement

98
Q

PGR/IPR
Jurisdiction?

A

All under PTAB

99
Q

PGR/IPR
What types of Ex Parte communication is allowed?

A

NO substantive

Only…
1. administrative
2. calls/hearings when other side declines (PTAB discretion; may record and enter into record)
3. Informing PTAB of existence/status of related proceedings
4. Reference to pending case in support of a general proposition

100
Q

PGR/IPR
Standard for claim interpretation?

A

Phillips standard

101
Q

PGR/IPR
Jurisdiction- Automatic Stay-When?

A

“Pick a lane jurisdiction”
* if you start in federal court, must finish before you can file IPR.
* If you filed an IPR or PGR and it has started, must finish before going to federal court.

  • If file IPR and a request in Fed Court filed on same day to challenge patent’s validity, which one proceeds? **IPR proceeeds first ** and court case is stayed pending completion of PGR/IPR
  • If you already filed in Fed Court then IPR? Court case may or may not be stayed
102
Q

Post-Grant Review
New with AIA?

A

Yes

103
Q

Inter Parte Review
New with AIA?

A

No, but still in effect

Pre-AIA, could be filed any time. With AIA, after PGR

104
Q

PGR/IPR
Conditions where stay of court proceedings is lifted?

A
  1. If **Patent Owner **moves court to lift stay
  2. Patent Owner files a civil action or counterclaim alleging petitioner has infringed
  3. Petitioner moves court to dismiss civil action
105
Q

PGR/IPR
Access to proceedings?

A

Full public access
Available ASAP after receipt of petition
Rare, but can be sealed

Settlement agreements can be treated as “Business Confidential Information” at request to a party of proceeding

106
Q

DERIVATION
Required to file petition?

A
  1. Must set forth with particularity the basis for finding inventor named in earlier app derived claimed invention from petitioner
  2. Must be supported by substantial evidence
    Must provide at least 1 affidavit-
    1. Communication of derived invention
    2. Lack of authorization
    Also:
    * Must be timely
    * At least one must be pending (not 2 apps)
    * Petition must be under oath
    * Must Identify which patent
107
Q

DERIVATION
Window for filing?

A
  • Within ONE YEAR of first publication of a claim to the invention that is the same/substantially the same
  • Also, must be before both patents have issued (one must be pending)
108
Q

DERIVATION
Standard for granting proceeding?

A

Substantial Evidence (high threshhold)

  • Need same/subst the same & communication of invention AND lack of authorization
  • If claim copying, Examiner will determine if sufficient support under 112 in 2nd filed app (if insufficient, can file CIP then derivation)
109
Q

DERIVATION
Can you appeal decision of whether or not to have proceeding?

A

No

110
Q

DERIVATION
Timing for Patent Owner to defer action on petition?

A
  • Up to 3 months from issue date of patent being issued
  • Can defer until any pending Reexam, PGR and IPR are resolved
111
Q

DERIVATION
Discovery rules?

A
  • Timing- NONE before petition is granted
    • Can request opponent isn’t given access to conception date until opponent provides theirs to the board
  • Standard: “Interest of Justice” (less liberal than “good cause” for PGR
  • Live testimony- possible-if Board considers demeaner or witness critical to assessing credibility
112
Q

DERIVATION
Standard for Discovery?

A

“Interest of Justice”
(less liberal than “Good Cause” for PGR)

113
Q

Post-Grant Review
Standard for Discovery?

A

Good Cause
(more liberal than “Interest of Justice” for Derivation

114
Q

DERIVATION
Jurisdiction?

A

PTAB (although Binding Arbitration and Settlement are allowed)

  • Decides petitions
  • Conducts proceedings
  • Writes decision after proceedings
115
Q

DERIVATION
Settlement?

A

Yes, will be accepted by Board unless inconsistent with evidence of record

116
Q

DERIVATION
Proceeding decision appealable?

A

No. Cannot appeal inside USPTO

Options if you lose:
* Appeal through the Courts
* Other challenges include PGR and IPR

117
Q

REISSUE
Who handles?

A

Original Examiner

118
Q

SUPPLEMENTAL EXAMINATION
Who handles?

A

Examiner

119
Q

Ex Parte REEXAMINATION
Who handles?

A

Panel of 3 experienced Examiners in special unit

120
Q
A

Post-Course Study Cards (6 decks)

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