Post-Grant Procedures (2800)

Question 1

What is ex parte reexamination?

Answer 1

A procedure where anyone can request the USPTO to reexamine an issued patent based on prior art.

Question 2

Who can request an ex parte reexamination?

Answer 2

Any person, including the patent owner.

Question 3

What kind of prior art can be used in ex parte reexamination?

Answer 3

Only patents and printed publications.

Question 4

Where is a request for ex parte reexamination filed?

Answer 4

With the Central Reexamination Unit (CRU) of the USPTO.

Question 5

What is the fee for ex parte reexamination?

Answer 5

Set by the USPTO; reduced for small/micro entities.

Question 6

Can a third party participate in ex parte reexamination?

Answer 6

Only in submitting the request and response to the patent owner’s statement.

Question 7

What standard is used to determine whether to order reexamination?

Answer 7

Substantial new question of patentability (SNQ).

Question 8

Can a reexamination be requested anonymously?

Answer 8

Yes, if filed by mail and not electronically.

Question 9

What happens if the request lacks SNQ?

Answer 9

The request is denied and no reexamination proceeds.

Question 10

Can the patent owner file amendments during reexamination?

Answer 10

Yes, to clarify or narrow the claims.

Question 11

What is inter partes review (IPR)?

Answer 11

A trial proceeding to review the patentability of one or more claims based on prior art.

Question 12

Who can file an IPR petition?

Answer 12

Any person other than the patent owner, with some exceptions.

Question 13

When can IPR be filed?

Answer 13

After 9 months from patent grant or after termination of post-grant review.

Question 14

What is the standard for instituting IPR?

Answer 14

Reasonable likelihood that the petitioner would prevail.

Question 15

What tribunal hears IPRs?

Answer 15

The Patent Trial and Appeal Board (PTAB).

Question 16

What type of prior art can be used in IPR?

Answer 16

Only patents and printed publications.

Question 17

What is the time limit for a final written decision in IPR?

Answer 17

12 months from institution, extendable by 6 months.

Question 18

Can a petitioner file an IPR after being sued?

Answer 18

Yes, but must file within 1 year of being served a complaint.

Question 19

Can the patent owner file a response in IPR?

Answer 19

Yes, including arguments and amendments.

Question 20

Are discovery and depositions allowed in IPR?

Answer 20

Yes, but limited compared to civil litigation.

Question 21

Can claims be amended during IPR?

Answer 21

Yes, but the patent owner bears the burden of proof.

Question 22

Can the PTAB deny institution of IPR?

Answer 22

Yes, if statutory conditions aren’t met.

Question 23

Can decisions in IPR be appealed?

Answer 23

Yes, to the U.S. Court of Appeals for the Federal Circuit.

Question 24

What is estoppel in IPR?

Answer 24

Prevents the petitioner from raising the same or related issues in later proceedings.

Question 25

Is there a fee to file an IPR?

Answer 25

Yes, fees depend on the number of claims challenged.

Question 26

Is the USPTO Director involved in IPR decisions?

Answer 26

Not directly; the PTAB decides.

Question 27

What happens if an IPR is settled?

Answer 27

It may be terminated if both parties agree.

Question 28

Can an IPR be filed on expired patents?

Answer 28

Yes, but only if enforceable at the time of filing.

Question 29

What happens to the patent during IPR?

Answer 29

It remains enforceable unless amended or cancelled.

Question 30

Can multiple IPRs be filed against the same patent?

Answer 30

Yes, though they may be consolidated or denied.

Question 31

What is supplemental examination?

Answer 31

A process where a patent owner requests the USPTO to consider new information.

Question 32

Who can request supplemental examination?

Answer 32

Only the patent owner.

Question 33

What is the purpose of supplemental examination?

Answer 33

To cure potential inequitable conduct or consider additional information.

Question 34

What can be submitted in a supplemental examination?

Answer 34

Any information relevant to patentability.

Question 35

What is the time limit for USPTO review in supplemental examination?

Answer 35

3 months to decide if reexamination is warranted.

Question 36

What happens if substantial new questions are found?

Answer 36

The USPTO initiates an ex parte reexamination.

Question 37

Can inequitable conduct be corrected through supplemental examination?

Answer 37

Yes, if fully disclosed and corrected.

Question 38

Can supplemental examination shield the patent from later challenges?

Answer 38

Yes, if properly used to disclose information.

Question 39

Is there a fee for supplemental examination?

Answer 39

Yes, set by the USPTO.

Question 40

Can a third party request supplemental examination?

Answer 40

No, only the patent owner can request it.

Question 41

What is a post-grant procedure?

Answer 41

USPTO processes for reviewing the validity of issued patents.

Question 42

What MPEP chapter covers post-grant procedures?

Answer 42

Chapter 2800.

Question 43

Why were IPR and PGR created?

Answer 43

To improve patent quality and offer efficient validity challenges.

Question 44

What is the difference between IPR and ex parte reexamination?

Answer 44

IPR is adversarial; reexamination is more limited and ex parte.

Question 45

What is the evidentiary standard in IPR?

Answer 45

Preponderance of the evidence.

Question 46

Can post-grant procedures be part of litigation strategy?

Answer 46

Yes, often used to challenge patents outside of court.

Question 47

What is a certificate of reexamination?

Answer 47

A document issued to show the outcome of reexamination.

Question 48

What is the effect of cancelling a claim in post-grant review?

Answer 48

The claim is no longer enforceable.

Question 49

Can post-grant procedures result in amended claims?

Answer 49

Yes, if the PTAB or examiner permits.

Question 50

What does estoppel prevent after final IPR decision?

Answer 50

Reasserting same issues in district court or other USPTO proceedings.

Question 51

What is ex parte reexamination?

Answer 51

A patent validity review process based only on patents or printed publications.

Question 52

What is IPR?

Answer 52

Inter partes review, a PTAB proceeding to challenge patents using prior art.

Question 53

What is supplemental examination?

Answer 53

A patent owner’s request for the USPTO to consider additional information.

Question 54

What is estoppel?

Answer 54

A legal bar preventing a party from re-litigating issues decided in IPR.

Question 55

What is a substantial new question of patentability?

Answer 55

A new issue of patentability based on prior art not previously considered.

Question 56

What is a reexamination certificate?

Answer 56

An official record of changes to claims after reexamination.

Question 57

What is the PTAB?

Answer 57

Patent Trial and Appeal Board, which hears IPR and post-grant proceedings.

Question 58

What is the evidentiary standard in IPR?

Answer 58

Preponderance of the evidence.

Question 59

What is the CRU?

Answer 59

Central Reexamination Unit at the USPTO.

Question 60

What is prior art?

Answer 60

Existing knowledge, patents, or publications used to evaluate patentability.

Question 61

What is a petition for IPR?

Answer 61

A formal request to the PTAB to institute inter partes review.

Question 62

What is an IPR institution decision?

Answer 62

The PTAB’s decision on whether to proceed with a full review.

Question 63

What is the role of the patent owner in supplemental examination?

Answer 63

To disclose new information and potentially correct the record.

Question 64

What is a final written decision?

Answer 64

The PTAB’s ruling at the end of an IPR or post-grant review.

Question 65

What is a motion to amend?

Answer 65

A request to revise claims during IPR.

Question 66

What is a prior art reference?

Answer 66

A document used to challenge novelty or non-obviousness.

Question 67

What is a petition fee?

Answer 67

The fee required to initiate an IPR or reexamination.

Question 68

What is inequitable conduct?

Answer 68

A failure to disclose material information to the USPTO during prosecution.

Question 69

What is a third-party requester?

Answer 69

A non-owner individual who files for ex parte reexamination.

Question 70

What is claim cancellation?

Answer 70

The removal of a claim from an issued patent, often during post-grant proceedings.