Post Grant Proceedings

Question 1

Who can initiate a Post Grant Review (PGR)?

Answer 1

Only third parties

Question 2

What subject matter is available for Post Grant Review (PGR)?

Answer 2

Any AIA patent

Question 3

When must a Post Grant Review (PGR) be filed?

Answer 3

Must be filed no later than 9 months after issuance or reissue

Question 4

What grounds may a Post Grant Review (PGR) be filed?

Answer 4

May be filed on any ground except for a claim for failure to disclose best mode

Question 5

What is the threshold for a Post Grant Review (PGR)?

Answer 5

“More likely than not” that at least one claim is unpatentable

Question 6

Who holds the proceeding for a Post Grant Review (PGR)?

Answer 6

PTAB

Question 7

Must the real party of interest be identified in a Post Grant Review (PGR)?

Answer 7

Yes

Question 8

What is the estoppel effect of a Post Grant Review (PGR)?

Answer 8

Real party of interest can’t raise issues that were previously raised or could have been raised

Question 9

Who does appeals of Post Grant Reviews (PGR)?

Answer 9

Court of Appeals for the Federal Court (CAFC)

Question 10

Is settlement a possibility for Post Grant Reviews (PGR)?

Answer 10

Yes

Question 11

Who can initiate an Inter Partes Review (IPR)?

Answer 11

Only third parties

Question 12

What subject matter is available for Inter Partes Review (IPR)?

Answer 12

Any patent (pre and post AIA) qualifies

Question 13

When must an Inter Partes Review (IPR) be filed?

Answer 13

Must be filed on or after, the later of, 9 months after patent or reissue issuance, or the termination of a post grant review

Question 14

Can an Inter Partes Review (IPR) be filed more than a year after the real party of interest has been sued for infringement?

Answer 14

No

Question 15

On what grounds may an Inter Partes Review (IPR) be filed?

Answer 15

Sec. 102 and 103 only

Question 16

What may be cited in an Inter Partes Review (IPR)?

Answer 16

Patents and Publications

Question 17

What threshold must be met in an Inter Partes Review (IPR)?

Answer 17

“Reasonable likelihood that the petitioner would prevail” with respect to at least one claim

Question 18

Who holds the proceeding for an Inter Partes Review (IPR)?

Answer 18

PTAB

Question 19

What is the estoppel effect of an Inter Partes Review (IPR)?

Answer 19

After a final decision by PTAB, the real party of interest can’t raise issues already raised or reasonably could have been raised

Question 20

Who does appeals of Inter Partes Review (IPR)?

Answer 20

Court of Appeals for the Federal Court (CAFC)

Question 21

Is settlement a possibility for Inter Partes Review (IPR)?

Answer 21

Yes

Question 22

Who can initiate a Reissue Application?

Answer 22

The patent owner only

Question 23

What subject matter qualifies for for a Reissue Application?

Answer 23

An patent (pre and post AIA) qualifies

Question 24

When can a Reissue Application be filed?

Answer 24

Can be filed any time before expiration of the patent

Question 25

Can claims be broadened in a Reissue Application?

Answer 25

Yes, so long as such the Reissue is filed within 2 years of patent's issue

Question 26

Why would a Reissue Application be filed?

Answer 26

When the patent is considered to be wholly or partially defective through error and without deceptive intent

Question 27

What is the threshold standard for a Reissue Application?

Answer 27

There is no threshold standard

Question 28

Who handles the Reissue Application proceedings?

Answer 28

The original patent examiner

Question 29

Who handles Reissue Application appeals?

Answer 29

PTAB

Question 30

Who can initiate a Supplemental Examination?

Answer 30

The patent owner only

Question 31

What subject matter qualifies for Supplemental Examination?

Answer 31

Any patent (pre and post AIA) and any additional information qualifies

Question 32

What is the threshold for Supplemental Examination?

Answer 32

There must be a "Substantial New Question of Patentability"

Question 33

Who handles the Supplement Examination proceedings?

Answer 33

Original patent examiner

Question 34

What is the estoppel effect of a Supplemental Examination?

Answer 34

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

Question 35

Who handles appeals of Supplemental Examinations?

Answer 35

PTAB

Question 36

What are the benefits of a Supplemental Examination

Answer 36

1) Useful mechanism for affirming a patent 2) Must faster and more expensive than a Reissue

Question 37

Who can initiate a Citation of Prior Art

Answer 37

Anyone

Question 38

What subject matter qualifies for a Citation of Prior Art

Answer 38

Any patent (pre and post) AIA

Question 39

When must a Citation of Prior Art be filed?

Answer 39

Must be filed before the expiration of the patent

Question 40

On what grounds can a Citation of Prior Art be filed?

Answer 40

Any patent, publication, or written statement made by the patent owner made in court or to the USPTO

Question 41

What is the threshold standard for a Citation of Prior Art?

Answer 41

No threshold standard

Question 42

Must the real party of interest be identified in a Citation of Prior Art?

Answer 42

No, the real party of interest can be anonymous

Question 43

Is there a fee required for a Citation of Prior Art?

Answer 43

No, no fee is required

Question 44

Must there be service on the patent owner in a Citation of Prior Art?

Answer 44

Yes, service is required

Question 45

Who can file an Ex Parte Reexamination?

Answer 45

Anyone can file

Question 46

What subject matter qualifies for an Ex Parte Reexamination?

Answer 46

Any patent (pre and post) AIA

Question 47

When must an Ex Parte Reexamination be filed?

Answer 47

Must be filed any time during the enforceability of a patent including up to 6 years past expiration

Question 48

What can be cited in an Ex Parte Examination?

Answer 48

May only cite Sec. 102 and 103 based off patents and publications

Question 49

What is the threshold for an Ex Parte Examination?

Answer 49

Substantial New Question

Question 50

Who handles an Ex Parte Examination proceeding?

Answer 50

A new patent examiner

Question 51

Who handles Ex Parte Examination appeals?

Answer 51

Court of Appeals for the Federal Circuit (CAFC)

Question 52

Must the real party of interest be identified in an Ex Parte Examination?

Answer 52

Can be anonymously

Question 53

Are automatic time extension available for Ex Parte Examinations?

Answer 53

No

Question 54

Can an Ex Parte Reexamination be cancelled or withdrawn after filing?

Answer 54

No

Question 55

Can new claims be added in an Ex Parte Reexamination?

Answer 55

Yes but they cannot be broadened