Supplemental Information: Challenges to Applications and Patents Flashcards
(18 cards)
Protest
Who
-Any member of public can file
-Active participation of protestor ends upon submission
What
-Includes: Listing of information relied on, explanations, copy of items, translations
-Will be considered by Examiner if clear explanations provided
-ANY papers allowed to be relied upon
-NO FEE
-Service on applicant
When
-Must be a pending application:
-Allowed before publication or Notice of Allowance (whichever is first)
-pre and post AIA
Third Party Pre-Issuance Submission
Who
-Third parties only
What
-Includes: Concise description of each document (claim charts)
-Patents and printed publications
-FEE for submission with more than 3 items
-No service required
When
1. Date of Notice of Allowance
2. 6 months from PTO publication
3. Date of first rejection of any claim
Compare 3 and 2, pick later, and compare to 1 and pick earlier, then go one day before!!
-Applies to any application, regardless of filing
Derivation Proceeding
Who
-Applicant who believes their invention has been stolen from then and filed without consent
-Two parties (of each application/patent)
-Between 2 applications or a patent and an application
What
-Includes: Identical/substantially the same subject matter in each application, have to shown earlier conception with substantial evidence
-HIGH threshold of proof
-FULL fee required for filing date
When
-Within 1 year of publication of copier
-ONLY AIA applications allowed to file
Supplemental Examination
Who
-Patent owner can file
-Patent owner and Examiner participate in resulting ex parte re-exam (if SNQ found)
What
-Includes: patent number, list of “items of info”, list of PTO proceedings, identification of claims, detailed explanations, copy of patent, copy of each “item of info”, summaries, owner of entire right
-ONLY 12 ITEMS OF INFO
-Information NOT restricted to patents and printed pubs
-FEE (3 parts) with small and micro discounts
When
-Of an issued patent
-Must conclude within 3 months of request
-Available regardless of when filed
Any issues considered during the procedure cannot form a basis for a later challenge to the enforceability of the subject patent
Potential loss of patent rights upon SNQ + maturing re-exam
Post Grant Review
Who
-Third party files
-Between patent owner and third party
What
-Allows prior art and beyond (102, 103, 112, and 101, not best mode)
When
-prior to 9 months from grant or issuance of reissue
-Final determination by board within 1 year
-Applies only to AIA applications
Public dispute
Not available if petitioner previously filed a declaratory judgement alleging invalidity
Citation of Prior Art
Who
-Any person can submit
-Can be confidential
What
-Allows patents, printed publications, and patent owner statements
-NO FEE
When
-post-grant, while patent is enforceable
-must be served on patent owner
Cannot be considered by PTO for any purpose other than determining proper meaning of patent claims
Ex Parte Re-examination
Who
-ANYONE can file
-Between patent owner and Examiner (third party requestor not allowed to participate)
-CANNOT be confidential
What
-Includes: SNQ, claims, copies, certificate of service
-FEE
-Service of patent owner required
-Based on patents and printed publications
-No broadening of claims
When
-For unexpired US patents and 6 years after expiration
-Time limits for cause - 1.550(c)
-Applies to all patents
Inter Partes Review
Who
-Third party files
-Between third party and patent owner
What
-Includes: All real parties of interest, point out each claim challenged, grounds, evidence
-Based on prior art of patents and printed publications and 102 and 103 issues
-FEE
When
-file after 9 months after grant of patent or issue of reissue, or after termination of PGR
-Available to any patent
Not available if petitioner previously filed a declaratory judgement alleging invalidity
Public dispute
Scheduling Order - Consolidated Trial Practice Guide
When PTAB is engaged, will issue scheduling order once they’ve decided to institute
Time from Decision to Institute to Final Written Order = 12 months
Page 7 in provided Exam materials
Misc Consolidated Trial Practice Guide
-Prohibition of Ex Parte Communication
-Have to have lead and back up counsel
-Real party in interest/privy = party that desires review
-Discovery - sequence of each party gets discovery periods starting with Patent Owner
-Translations required - English
-Live testimony = rare
Where to find info on derivation proceedings
37 CFR 42.400+
Where to find info on changes to representation of others before USPTO
37 CFR Part 11
What standard does PTAB use?
“Phillips Standard”
NOT BRI
Expert Use in PTAB
Can be used by both patent owners and requestors
If you file an IPR and a request in federal court on the same day, which proceeds first?
IPR
Civil litigation is stayed
Estoppel Provisions of IPRs and PGRs
If your patent survives, the opponents you faced CANNOT bring up these same arguments or ones they could have reasonably made in any forum thereafter
Burden of Proof - IPR
Likelihood of succeeding to begin with
Burden of Proof - PGR
Evidence from beginning
