Patent Challenges and Patent Corrections Flashcards

Question

REISSUE List of reasons why wholly or partially inoperative or invalid?

Answer 1

* 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

Answer 2

SUPPLEMENTAL EXAMINATION

Answer 3

* Like a new application * Can be rejected upon new grounds or even same (that were overcome in parent)

Answer 4

* 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

Answer 5

Reissue-Yes Supplemental Examination- No

Answer 6

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

Answer 7

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

Answer 8

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!

Answer 9

* 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**

Answer 10

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

Answer 11

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

Answer 12

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

Answer 13

Oral Hearing in an **APPEAL** of a **REISSUE** is **OPEN** to the PUBLIC (also in a reexamination)

Answer 14

Not normally available to the public

Answer 15

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

Answer 16

Yes, if claims are broadened or significantly altered

Answer 17

SUPPLEMENTAL EXAMINATION

Answer 18

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

Answer 19

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

Answer 20

Supplemental Examination

Answer 21

Anyone (including owner)

Answer 22

**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.

Answer 23

If NO...3rd party can petition decision If YES, patent owner can file Patent Owner statement (which 3rd party requestor can respond to)

Answer 24

No real estoppel effect...except as to EXACT documents reviewed

Answer 25

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

Answer 26

No (because not an application)

Answer 27

REEXAMINATION

Answer 28

Yes, but not broader

Answer 29

Yes, if delay was unintentional

Answer 30

REEXAMINATION

Answer 31

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

Answer 32

Examiner's Answer

Answer 33

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

Answer 34

After Board decision from Appeal

Answer 35

1. Request a rehearing 2. Appeal Board's decision to CAFC 3. Nothing...Notice of Intent to Issue Reexamination Certificate

Answer 36

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

Answer 37

* 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**

Answer 38

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

Answer 39

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!!!)

Answer 40

101, 102, 103, 112, double patenting but NOT Best Mode

Answer 41

102 and 103 (only patents and printed publications)

Answer 42

Yes (in writing, with particularity)

Answer 43

Yes (in writing, with particularity)

Answer 44

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)

Answer 45

REEXAMINATION Optional- in response to the optional Patent Owner Statement

Answer 46

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

Answer 47

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

Answer 48

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

Answer 49

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

Answer 50

If instituted, ALL claims challenged/ALL grounds (usually provides analysis- strengths/weaknesses of all challenges)

Answer 51

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

Answer 52

Reasonable likelihood (fairly low)

Answer 53

Can request rehearing as to points overlooked/misapprehended NOT appealable

Answer 54

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

Answer 55

After Patent Owner discovery and before Petitioner Discovery (Can also petition/motion to Amend- cancel or reasonable # of substitute claims. Very rare)

Answer 56

**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

Answer 57

Yes. BOTH parties have a right to this

Answer 58

* 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

Answer 59

Yes At request of a party to the proceeding Treated as "Business Confidential Info" Still must file a copy before termination of proceeding

Answer 60

On Petitioner Preponderance of Evidence (>50%)

Answer 61

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**

Answer 62

All under PTAB

Answer 63

**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

Answer 64

Phillips standard

Answer 65

**"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

Answer 66

No, but still in effect Pre-AIA, could be filed any time. With AIA, after PGR

Answer 67

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

Answer 68

**Full public access** Available ASAP after receipt of petition Rare, but can be sealed **Settlement agreement**s can be treated as "**Business Confidential Information**" at request to a party of proceeding

Answer 69

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

Answer 70

* 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**)

Answer 71

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)

Answer 72

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

Answer 73

* 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

Answer 74

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

Answer 75

Good Cause (more liberal than "Interest of Justice" for Derivation

Answer 76

**PTAB** (although **Binding Arbitration** and **Settlement** are allowed) * Decides petitions * Conducts proceedings * Writes decision after proceedings

Answer 77

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

Answer 78

**No**. Cannot appeal inside **USPTO** **Options** if you lose: * Appeal through the **Courts** * Other challenges include PGR and IPR

Answer 79

Original Examiner

Answer 80

Panel of 3 experienced Examiners in special unit