Post-Grant Proceedings Flashcards

What is the Patent Trial and Appeal Board (PTAB)?

Answer: The USPTO administrative tribunal that conducts IPR, PGR, derivation proceedings, and ex parte appeals

PTAB is the USPTO's administrative trial court created by the AIA to conduct inter partes review, post-grant review, derivation proceedings, and to decide ex parte appeals from patent examiner final rejections.

As of November 13, 2018, what claim construction standard does PTAB apply in IPR and PGR proceedings?

Answer: The Phillips standard—ordinary and customary meaning to a person of ordinary skill in the art

Effective November 13, 2018, PTAB adopted the Phillips standard for claim construction in IPR and PGR, replacing the Broadest Reasonable Interpretation standard and aligning PTAB with district courts.

Within how many months of the petition filing date may a patent owner file a preliminary response to an IPR or PGR petition?

Answer: 3 months

Under 37 C.F.R. § 42.107, a patent owner may file a preliminary response to an IPR petition within 3 months from the date the petition is accorded a filing date.

Which of the following is NOT an available post-grant proceeding at the USPTO?

Answer: Inter Partes Opposition

The USPTO does not offer an 'inter partes opposition' proceeding—that concept exists in the European Patent Office system; U.S. law provides IPR, PGR, supplemental examination, and ex parte reexamination instead.

In a PGR or IPR proceeding, what must a petitioner include in the petition regarding the basis for challenging a patent claim?

Answer: Identification of challenged claims, specific grounds of challenge, evidence, and detailed explanation supporting each ground

A petition must identify each challenged claim, the specific statutory grounds of challenge, the supporting evidence (prior art patents or publications), and a detailed explanation of how each claim is unpatentable under each ground.

What is the 'real party in interest' requirement in IPR and PGR petitions?

Answer: The petition must identify all real parties in interest, and their activities are attributed to the petitioner for standing and estoppel purposes

Petitioners must disclose all real parties in interest in IPR and PGR petitions; the one-year bar under § 315(b) and post-proceeding estoppel apply to the petitioner and all real parties in interest and parties in privity.

After the USPTO institutes an IPR, what must happen before a petitioner can raise new grounds of unpatentability not included in the original petition?

Answer: New grounds may only be raised with PTAB authorization, such as in a reply if the patent owner introduces new claim construction arguments

After institution, a petitioner generally may not add new grounds of unpatentability; new arguments in a petitioner's reply must respond to the patent owner's response and cannot be entirely new grounds introduced without PTAB authorization.