Post-Grant Proceedings Flashcards

What is the institution standard for Post-Grant Review (PGR), as compared to IPR?

Answer: More likely than not that at least one challenged claim is unpatentable

Under 35 U.S.C. § 324(a), PGR is instituted only if the petition shows it is 'more likely than not' that at least one challenged claim is unpatentable—a higher threshold than the IPR standard.

Which of the following types of invalidity grounds may be raised in a Post-Grant Review (PGR) petition?

Answer: Any ground of invalidity, including §§ 101, 102, 103, and 112

PGR allows challenges on any ground of invalidity under 35 U.S.C. §§ 101, 102, 103, and 112, making it the broadest post-grant trial proceeding available.

What is the primary purpose of Supplemental Examination under 35 U.S.C. § 257?

Answer: To allow a patent owner to have information considered that may affect enforceability, shielding against inequitable conduct claims

Supplemental examination permits a patent owner to submit information for consideration, and if the information raises a substantial new question of patentability, reexamination is ordered—insulating the patent from later inequitable conduct assertions based on that information.

After a final written decision in an IPR, what is the estoppel effect on the petitioner in subsequent district court or ITC litigation?

Answer: The petitioner is estopped from raising any ground that was raised or reasonably could have been raised during the IPR

Under 35 U.S.C. § 315(e)(2), after a final written decision in IPR, the petitioner (and parties in privity) are estopped in district court and ITC from asserting any ground that was raised or reasonably could have been raised during the IPR.

In an Ex Parte Reexamination proceeding, what prior art may be cited as a basis for reexamination?

Answer: Only prior art patents and printed publications

Ex parte reexamination under 35 U.S.C. § 301 is based on prior art consisting of patents or printed publications only—non-documentary prior art such as prior public use or on-sale bars cannot form the basis for reexamination.

Can a district court stay pending litigation when an IPR petition is filed or instituted?

Answer: Yes, but only at the court's discretion based on applicable factors

There is no automatic stay of district court litigation when IPR is filed or instituted; courts exercise discretion by weighing factors such as the stage of litigation, potential simplification of issues, and prejudice to the non-moving party.

Which post-grant USPTO proceeding is specifically designed to address situations where an inventor in an earlier application may have derived the claimed invention from an inventor in a later application?

Answer: Derivation Proceeding

Under 35 U.S.C. § 135, a derivation proceeding at PTAB determines whether an inventor named in an earlier-filed application derived the claimed invention from an inventor in a petitioner's later-filed application.