Post-Grant Proceedings Flashcards
Who can file inter partes review?
Any person who is not the owner of a patent may file a PETITION with the PTO to institute inter partes review of an ISSUED patent.
What can the petitioner in the inter partes review do?
- Request to cancel as unpatentable one or more claims of a patent only on a ground that could be raised under 35 USC 102 or 103 AND only on the basis of prior art consisting of patents or printed publications.
Timing: when can inter partes review be filed?
Later of either:
(1) 9 months after the grant of a patent; or
(2) if a post-grant review is instituted, the date of the termination of that PGR
When is an inter partes review not instituted?
If the petition requesting the proceeding is filed more than one year after the date on which the petitioner is served with a complaint alleging infringement of the patent.
What are the requirements of a petition for IPR?
- Fee
- ID all real parties in interest
- Written petition identifying: 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; affidavits or declarations of supporting evidence and opinions.
- Provide any other info as requested by Director
- Provide copies of any of the required documents to the patent owner or the designated representative of the patent owner.
Availability of IPR/PGR/CBM?
After receipt of a petition for IPR/PGR, petition is available to public.
What happens after petition for IPR is filed?
Preliminary response by patent owner
Does patent owner have right to file a preliminary response in IPR?
Yes, patent owner has the right to file a preliminary response to the petition that sets forth reasons why no IPR should be instituted based upon the failure of the petition to meet any requirement.
When must the preliminary response be filed?
no later than 3 months after the date of notice indicating that the request to institute an IPR has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner’s preliminary response.
Is new testimony evidence in preliminary response permitable?
no
Can the office authorize an IPR to be instituted ?
No–unless there is a reasonable likelihood that the petitioner would prevail with respect to attacking at least one of the claims challenged in the petition.
What is the timing of determination to IPR?
The office must determine whether to institute an IPR review within 3 months after (1) receiving a preliminary response to petition; or (2) if no such preliminary response if filed, the last date on which such response may be filed.
Is IPR determination by Director appealable?
Is the final written decision of the PTAB appealable?
No. Director’s decision is final and nonappealable.
Any party dissatisfied with the final written decision of PTAB may appeal the decision.
When is IPR barred?
When petitioner or real party in interest filed a civil action challenging the validity of a claim in the patent.
Who conducts the IPR?
PTAB
What is the rule regarding amending the patent in IPR?
Patent owner may file one motion to amend the patent in one or more of the following ways:
1. cancel any challenged patent claim, and/or
2. propose a reasonable number of substitute claims for each challenged claim
3. the amendment may not enlarge the scope of the claims of the patent or introduce new matter.
What has the burden of proof when filing a petition for IPR?
the petitioner has the burden of proving unpatentability
Settlement
- IPR terminated if there is a joint request from petitioner and patent owner to terminate IPR00unless Office has decided the merits of the proceeding before the request for termination is filed.
- If IPR is terminated wrt petitioner, no estoppel will attach to the petitioner on the basis of that petitioner’s institution of that IPR.
- If no petitioner remains in the IPR, the Office may terminate the review of proceed to a final written decision
- Any agreement or understanding between patent owner and petitioner must be made in writing and a copy of the agreement or understanding must be filed in the office before termination.
Who can file a post grant review (PGR)?
Any person who is not the owner of a patent may file with the Office to institute a post-grant review of the patent.
What can the petitioner do to the claims in an issued patent in a PGR?
Request cancellation of one or more claims of an issued patent.
What are the grounds the petitioner can raise in PGR?
Grounds can be raised under 35 USC 101, 102, 103, 112 (with the exception of compliance with best mode requirement) , and prior art patents or printed publications. Failure to comply with best mode requirement CANNOT be the basis for PGR.
Time to File a Petition in PGR vs IPR
PGR: within 9 months of grant
IPR: later of 9 months after grant of the date of the termination of PGR
Grounds for asserting patent invalidity in PGR vs IPR:
PGR: any ground related to patent invalidity (101, 102, 103, 112) except for best mode; can use patents, pubs, sale, activity, anything
IPR: 102 and 103 and patents or printed publications
How conducts PGR and IPR?
PTAB
