Supplemental Material

Question 1

PGR | Who can initiate?

Answer 1

3rd party only (except plaintiff in court action challenging validity of patent)
Note: On any AIA patents

Question 2

IPR| Who can initiate?

Answer 2

Same as PGR, 3rd party only (except plaintiff in court action challenging validity of patent)
but can be on any patents including pre-AIA

Question 3

Reissue | Who can initiate?

Answer 3

Patent Owner Only

Question 4

Supplemental Examination| Who can initiate?

Answer 4

Patent Owner Only
Covers any information and thus not limited to:
1. Patents
2. incorrect arguments of declaration
3. Public sale before critical date
4. litigation papers
5. small entity status wrongly claimed
and etc.,

Question 5

Citation of Prior Art| Who can initiate?

Answer 5

Anybody

Question 6

Ex Parte Reexamination| Who can initiate?

Answer 6

Anybody

Question 7

PGR | Window for Filing

Answer 7

No later than 9 months after issuance or issuance of reissue
->PTAB

Question 8

IPR| Window for Filing

Answer 8

on or after 9 months after patent/reissue issuance; OR
termination of PGR
whichever is Later
->PTAB

Note: can NOT be filed more than one year after real part in interest is sued for infringement

Question 9

Reissue | Window for Filing

Answer 9

anytime before the patent expires, unless you want to broaden claims (then 2 years after issue)
-> Original Examiner from handling application

Question 10

Supplemental Examination| Window for Filing

Answer 10

anytime before the patent expires
-> Examiner

Question 11

Citation of Prior Art | Window for Filing

Answer 11

Anytime during Enforceability of Patent

Question 12

Ex Parte Reexamination| Window for Filing

Answer 12

Anytime during enforceability of patent which can be 6 years past expiration
-> Different Examiner

Question 13

PGR | Grounds for FIling

Answer 13

any ground EXCEPT for failure to comply with the best mode requirement 112(a)
101, 102, 103, 112, etc.,

“more likely than not” that at least one of the claims challenged in the petition is unpatentable

Question 14

IPR| Grounds for FIling

Answer 14

102 and 103 based on patents and publications

reasonable likelihood that the petitioner would prevail

Question 15

Reissue| Grounds for FIling

Answer 15

the patent through error and without any deceptive intent is considered to be wholly or partly inoperative or invalid

Question 16

Supplemental Examination| Grounds for FIling

Answer 16

Any information relevant to patentability exists
Substantial new question of patentability

Question 17

Citation of Prior Art| Grounds for FIling

Answer 17

Patents, publications, written statements of a patent owner if the statements were filed in a proceeding before a federal court or the USPTO

Notes: No fee required

Question 18

Ex Parte Reexamination | Grounds for Filling

Answer 18

102 and 103 based on patents and publications
Substantial new question of patentability

Notes: New claims can be added but NOT broader,
reexamination can’t be canceled or withdrawn after filling
NO automatic time extensions (only for cause)

Question 19

Identified Real Party in Interest?

Answer 19

PGR and IPR are required
Citation of Prior Art and Ex Parte Reexamination can be anonymous

Question 20

Appeal Forum

Answer 20

PGR and IPR at CAFC; and
reissue and supplemental examination at PTAB
Reexamination at either district court or CAFC

Question 21

Combatting pending apps

Answer 21

1. Protest (before publication and allowance)
2. 3rd Party submission (after 6 months from the date of publication OR the date of the first office action OR before notice of allowance)
3. Derivation proceeding: show proof with particularity that a filed invention was copied from the applicant, and establish the proof within ONE year of it being published