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Flashcards in 2014 supplement Deck (17):
1

inter partes review

when
who
request to do?
timing

appeal the decision not to initiate? appeal the final decision

start from 9.16.2012, replace inter partes reexam

any person who's not the patent owner may file
available for any patent

grounds: patent and printed publication, 102, 103

may request to cancel as unpatentable claims:
1, only on ground that could be raised under 102 or 103; 2, only on the basis of prior art consisting of patents or printed publications

may be filed after the later of either 1, 9 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

may not be instituted if filed more than 1 year after the date on which the petitioner, real party in interest or privy of the portioner is served with a complaint alleging infringement of the patent

final determination issues within a year

pick a line jurisdiction against federal

inter parte review came from the PTAB
no appeal for the decision not to initiate; final decision can be appealed to United States Court of Appeals for the Federal Circuit.

2

post grant review

AIA: available for patents issued from app that have an EFD on or after 3.16.2013
grounds could be raised include 102 or 103, 101 and 112 with the exception of best mode compliance
3rd party must file within 9 months after the grant of a patent or issuance of a reissue of a patent

standard: may be instituted upon showing that it is more likely than not that at least one claim challenged is unpatenable (very low)

decision must be issued within 1 year (extendable for good cause by 6 months)

3

inter partes review
requirements petition may be considered if

1, payment of fee
2, identify real party in interest
3, identify in writing and with particularity: each claim challenged, the grounds based, evidence that supports the ground (patents and printed publications, affidavits or declarations of expert)

4

timing of bringing challenges

protest: prior to the date the app was published or a notice of allowance was mailed (post-publication u need applicant to consent)

3rd party submission (1134):
prior to the earlier of: (1) The date a notice of allowance; or (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner.

derivation (AIA):
within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier app's claim to the invention

supplemental examination (beginning 9.16.2012):
any time within the enforceability of the patent (6 years after expiration)

post grant review (AIA):
must be filed within 9 months after the grant of a patent or issuance of a reissue of a patent

citation of prior art: (existing and expanded 9.16.2012)

ex parte reexam:

inter parte reexam:
11/29/1999 - 9.15.2012, 9/16/2011 standard change

5

protest

against pending apps, will enter record if served upon the applicant

prior to the date the app was published or a notice of allowance was mailed (post-publication u need applicant to consent)

3rd party involvement ends after she files

any info

6

3rd party submission

1134

patents, published patent apps, or other printed publications, along with explanation

A third-party submission must be filed """prior to""" the earlier of: (1) The date a notice of allowance; or (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner.

so the last day to submit is one day earlier than the date resulted from above calculation

7

derivation

AIA

1 year of the first publication of the offending one

claim the """same or substantially the same""" invention

for PTO to maintain jurisdiction, one of the parties must have a pending app (no derivation between 2 patents)

must be supported by substantial evidence of derivation

8

supplemental examination

beginning 9.16.2012
2800
filed by patent owner only
for any patent

any time within the enforceability of the patent (6 years after expiration)

standard: SNQ

any item to be considered and corrected through a post-issuance look
if patent survives, the issues and items dealt at the PTO cannot form the basis of a subsequent fraud defense in court

within 3 months of receipt of the request, decision rendered
If SNQ is raised, then ex parte reexam will be ordered

9

citation of prior art

2200

At any time during the period of enforceability of a patent, any person may file a written submission (6 years after expiration)

as of 9.2012, admissible documents have been expanded, from patents and printed publications only, to include written statements of the patent owner filed in proceedings before a federal court or the PTO (not ITC) taking a position on the scope of a patent claim

the AIA prohibits the use of the statement for any purpose other than determining the claim scope in a proceeding that has already been ordered or instituted. can't be used to determine whether to institute reexam or not

any patent app

no duties to supplement

10

ex parte reexam:

Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501.

SNQ

no claim broadening, no auto extension of time

11

inter partes reexam

11/29/1999 - 9.15.2012

3rd party, appeal to board or CAFC

apply to all patents issued from app filed on or after 11/29/1999

conditioned on statutory estoppel against a subsequent separate review, either by the office or by a federal court, of the issues that were or could have been raised in the reexam

standard raised from SNQ to reasonable likelihood that the requester would prevail on 9.16.2011

Only consider patent and printed publications
inventorship CANNOT be challenged.

12

transitional program for covered business method patents

9.16.2012 - 2020

all grounds

generally financial products or services that dont have a significant technology component

may not file for this unless and until the person has been sued for or charged with infringement of the patent

13

PLTIA

effective 11/18/2013

1, filing day requirements reduced to only spec (claims and drawings can follow)
*if drawing add new matter then drawing filing date is the filing date

2, restoration of priority to foreign app or provisional app, or PCT, extend 2 months with fee after the expiration of the 1 year based on unintentionally delay

3, revival of abandoned app and acceptance of delayed maintenance fee solely on the basis of unintentional delay, no unavoidable anymore

14

ethics
representation of others

no referral: can't split fee who dont do proportional work

15

third party submission

1134

16

preissuance submisson

1134 third party submission

17

Who can file app

After 9/16/2012, all can file