Post-Grant Proceedings

Question 1

Who can file inter partes review?

Answer 1

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.

Question 2

What can the petitioner in the inter partes review do?

Answer 2

• 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.

Question 3

Timing: when can inter partes review be filed?

Answer 3

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

Question 4

When is an inter partes review not instituted?

Answer 4

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.

Question 5

What are the requirements of a petition for IPR?

Answer 5

1. Fee
2. ID all real parties in interest
3. 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.
4. Provide any other info as requested by Director
5. Provide copies of any of the required documents to the patent owner or the designated representative of the patent owner.

Question 6

Availability of IPR/PGR/CBM?

Answer 6

After receipt of a petition for IPR/PGR, petition is available to public.

Question 7

What happens after petition for IPR is filed?

Answer 7

Preliminary response by patent owner

Question 8

Does patent owner have right to file a preliminary response in IPR?

Answer 8

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.

Question 9

When must the preliminary response be filed?

Answer 9

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.

Question 10

Is new testimony evidence in preliminary response permitable?

Answer 10

no

Question 11

Can the office authorize an IPR to be instituted ?

Answer 11

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.

Question 12

What is the timing of determination to IPR?

Answer 12

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.

Question 13

Is IPR determination by Director appealable?
Is the final written decision of the PTAB appealable?

Answer 13

No. Director’s decision is final and nonappealable.

Any party dissatisfied with the final written decision of PTAB may appeal the decision.

Question 14

When is IPR barred?

Answer 14

When petitioner or real party in interest filed a civil action challenging the validity of a claim in the patent.

Question 15

Who conducts the IPR?

Answer 15

PTAB

Question 16

What is the rule regarding amending the patent in IPR?

Answer 16

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.

Question 17

What has the burden of proof when filing a petition for IPR?

Answer 17

the petitioner has the burden of proving unpatentability

Question 18

Settlement

Answer 18

• 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.

Question 19

Who can file a post grant review (PGR)?

Answer 19

Any person who is not the owner of a patent may file with the Office to institute a post-grant review of the patent.

Question 20

What can the petitioner do to the claims in an issued patent in a PGR?

Answer 20

Request cancellation of one or more claims of an issued patent.

Question 21

What are the grounds the petitioner can raise in PGR?

Answer 21

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.

Question 22

Time to File a Petition in PGR vs IPR

Answer 22

PGR: within 9 months of grant
IPR: later of 9 months after grant of the date of the termination of PGR

Question 23

Grounds for asserting patent invalidity in PGR vs IPR:

Answer 23

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

Question 24

How conducts PGR and IPR?

Answer 24

PTAB

Question 25

Are IPR and PGR appealable?

Answer 25

yes

Question 26

What is a covered business method patent?

Answer 26

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. does not include technological innovations. Includes activities to financial activity; not limited to products or services of the financial services industry.

The CMB review challenges the validity of an issued patent.

Question 27

Which post grant proceedings are available to the inventors vs. outside people/non-inventors?

Answer 27

inventors: Derivation Proceedings
Non-inventors: IPR, PGR, CBM

Question 28

What is a derivation proceeding?

Answer 28

A procedure available for an inventor to allege and prove that someone other than that inventor, without their permission, filed a patent application on their invention. Their invention has been stolen and a specific application or patent has been derived from them.

Question 29

What is the effective date for the derivation provision?

Answer 29

AIA 3/16/2013

Question 30

How is a derivation proceeding started?

Answer 30

It is started by an applicant for patent filing a petition to institute the derivation proceeding.

Question 31

What is required in the petition for derivation proceeding?

Answer 31

• Must set forth the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner.
• Petition must be made under oath.
• Petition must be filed within one year of the date of the first publication