Supplemental: Post Grant Proceedings (Inter Partes, Post Grant, and Covered Business Method Patents)

Question 1

What patents are available for Inter Partes review?

Answer 1

Any

Question 2

What patents are available for Post Grant Review

Answer 2

Effective filing date on or after March 16, 2013

Question 3

Who can file a Inter Partes review?

Answer 3

Any person who is not the owner of the patent.

Question 4

What are the grounds for a Inter Partes Review?

Answer 4

1. On a ground that could be raised under Section 102, or 103
2. Only on the basis of prior art consisting of patents or printed publications.

Question 5

When may an Inter Partes review be filed?

Answer 5

The later of either:

1. Nine Months after the grant of a patent or issuance of a reissue of a patent;
   OR
2. If a post-grant review is instituted, the date of the termination of that post-grant review.

Question 6

What is the standard of proof of Inter Partes?

Answer 6

Reasonable likelihood of success

Question 7

Requirements of a Petition for Inter Partes Review

Answer 7

1. Fee
2. ID all parties of interest
3. ID in writing
   
   • each claim challenged
   • The grounds for reach challenge
   • Evidence (Copies of Patents and Publication, Affidavits to explain)
4. Provide Information as the Director requests
5. Copies of any required documents to the patent owner.

Question 8

Is Inter Partes available to the Public?

Answer 8

As soon as practical after receipt, the Office will make the petition available to the public.

Question 9

Can an owner respond?

Answer 9

Yes, before 3 months.

Alleging the decision to be wrong

Preliminary Response

Question 10

How long does the Office have to decide?

Answer 10

Within 3 months of receiving:

1. Receiving a preliminary response to the petition;
   OR
2. If not filed, the last date on which such response may be filed.

Question 11

District Court vs. Inter Partes Review

Answer 11

If already filed in DC, no inter partes review.

If inter partes review requested, subsequent DC litigation is stayed.
- If you answer and counter claim you can’t leave DC

Pick a lane

Question 12

How to settle?

Answer 12

1. Settlement with approval of Patent Office

2. Amending to cancel challenged claim, or propose reasonable substitute claims

Question 13

Does estoppel apply to Inter Partes Review and Post Grant Review?

Answer 13

Would’ve, Could’ve, Should’ve

Pick a lane and apply everything.

Applies in both forums

Question 14

Who can file a Post Grant Review?

Answer 14

Any person who is not the owner.

Question 15

What are the grounds for Post Grant Review?

Answer 15

1. On a ground that could be raised under Section 102, or 103
2. Only on the basis of prior art consisting of patents or printed publications.
3. On the grounds of Section 101.
4. Section 112 (except best mode)

**Preponderance of the Evidence

Question 16

When can a Post Grant Review be filed?

Answer 16

Must be filed within 9 months after the date of the grant of the patent or of the issuance of a reissue patent.

Question 17

Requirements of a Petition for Inter Partes Review

Answer 17

1. Fee
2. ID all parties
3. ID in writing
   
   • each claim challenged
   • The grounds for reach challenge
   • Evidence (Copies of Patents and Publication, Affidavits to explain)
4. Provide Information as the Director requests
5. Copies of any required documents to the patent owner.

Question 18

Can an owner respond?

Answer 18

Yes, before 3 months.

Alleging the decision to be wrong

Preliminary Response

Question 19

Can you appeal a Post Grant Review?

Answer 19

No

Question 20

Briefly Explain Cover Business Methods

Answer 20

A petition for transitional proceeding for a covered business method filed by a real party in interest or privy who has been sued for infringement of the patent and has been charged with infringement.