Post Grant Proceedings Flashcards
Who can initiate a Post Grant Review (PGR)?
Only third parties
What subject matter is available for Post Grant Review (PGR)?
Any AIA patent
When must a Post Grant Review (PGR) be filed?
Must be filed no later than 9 months after issuance or reissue
What grounds may a Post Grant Review (PGR) be filed?
May be filed on any ground except for a claim for failure to disclose best mode
What is the threshold for a Post Grant Review (PGR)?
“More likely than not” that at least one claim is unpatentable
Who holds the proceeding for a Post Grant Review (PGR)?
PTAB
Must the real party of interest be identified in a Post Grant Review (PGR)?
Yes
What is the estoppel effect of a Post Grant Review (PGR)?
Real party of interest can’t raise issues that were previously raised or could have been raised
Who does appeals of Post Grant Reviews (PGR)?
Court of Appeals for the Federal Court (CAFC)
Is settlement a possibility for Post Grant Reviews (PGR)?
Yes
Who can initiate an Inter Partes Review (IPR)?
Only third parties
What subject matter is available for Inter Partes Review (IPR)?
Any patent (pre and post AIA) qualifies
When must an Inter Partes Review (IPR) be filed?
Must be filed on or after, the later of, 9 months after patent or reissue issuance, or the termination of a post grant review
Can an Inter Partes Review (IPR) be filed more than a year after the real party of interest has been sued for infringement?
No
On what grounds may an Inter Partes Review (IPR) be filed?
Sec. 102 and 103 only
What may be cited in an Inter Partes Review (IPR)?
Patents and Publications
What threshold must be met in an Inter Partes Review (IPR)?
“Reasonable likelihood that the petitioner would prevail” with respect to at least one claim
Who holds the proceeding for an Inter Partes Review (IPR)?
PTAB
What is the estoppel effect of an Inter Partes Review (IPR)?
After a final decision by PTAB, the real party of interest can’t raise issues already raised or reasonably could have been raised
Who does appeals of Inter Partes Review (IPR)?
Court of Appeals for the Federal Court (CAFC)
Is settlement a possibility for Inter Partes Review (IPR)?
Yes
Who can initiate a Reissue Application?
The patent owner only
What subject matter qualifies for for a Reissue Application?
An patent (pre and post AIA) qualifies
When can a Reissue Application be filed?
Can be filed any time before expiration of the patent
Can claims be broadened in a Reissue Application?
Yes, so long as such the Reissue is filed within 2 years of patent’s issue
Why would a Reissue Application be filed?
When the patent is considered to be wholly or partially defective through error and without deceptive intent
What is the threshold standard for a Reissue Application?
There is no threshold standard
Who handles the Reissue Application proceedings?
The original patent examiner
Who handles Reissue Application appeals?
PTAB
Who can initiate a Supplemental Examination?
The patent owner only
What subject matter qualifies for Supplemental Examination?
Any patent (pre and post AIA) and any additional information qualifies
What is the threshold for Supplemental Examination?
There must be a “Substantial New Question of Patentability”
Who handles the Supplement Examination proceedings?
Original patent examiner
What is the estoppel effect of a Supplemental Examination?
Prevents paten from being held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect, if submitted or corrected during proceedings
Who handles appeals of Supplemental Examinations?
PTAB
What are the benefits of a Supplemental Examination
1) Useful mechanism for affirming a patent
2) Must faster and more expensive than a Reissue
Who can initiate a Citation of Prior Art
Anyone
What subject matter qualifies for a Citation of Prior Art
Any patent (pre and post) AIA
When must a Citation of Prior Art be filed?
Must be filed before the expiration of the patent
On what grounds can a Citation of Prior Art be filed?
Any patent, publication, or written statement made by the patent owner made in court or to the USPTO
What is the threshold standard for a Citation of Prior Art?
No threshold standard
Must the real party of interest be identified in a Citation of Prior Art?
No, the real party of interest can be anonymous
Is there a fee required for a Citation of Prior Art?
No, no fee is required
Must there be service on the patent owner in a Citation of Prior Art?
Yes, service is required
Who can file an Ex Parte Reexamination?
Anyone can file
What subject matter qualifies for an Ex Parte Reexamination?
Any patent (pre and post) AIA
When must an Ex Parte Reexamination be filed?
Must be filed any time during the enforceability of a patent including up to 6 years past expiration
What can be cited in an Ex Parte Examination?
May only cite Sec. 102 and 103 based off patents and publications
What is the threshold for an Ex Parte Examination?
Substantial New Question
Who handles an Ex Parte Examination proceeding?
A new patent examiner
Who handles Ex Parte Examination appeals?
Court of Appeals for the Federal Circuit (CAFC)
Must the real party of interest be identified in an Ex Parte Examination?
Can be anonymously
Are automatic time extension available for Ex Parte Examinations?
No
Can an Ex Parte Reexamination be cancelled or withdrawn after filing?
No
Can new claims be added in an Ex Parte Reexamination?
Yes but they cannot be broadened
