Patent Bar Exam Post-Grant Proceedings 2

Question 1

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

Accepted Answer

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

Answer

Reasonable likelihood the petitioner would prevail on at least one claim

Answer

Substantial new question of patentability

Answer

Preponderance of the evidence of invalidity

Question 2

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

Accepted Answer

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

Answer

Only prior art patents and printed publications under §§ 102 and 103

Answer

Only § 112 written description and enablement issues

Answer

Only double patenting and prior art grounds

Question 3

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

Accepted Answer

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

Answer

To allow third parties to challenge a patent's validity based on new prior art

Answer

To request correction of typographical errors in an issued patent

Answer

To appeal a final rejection by a patent examiner

Question 4

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

Accepted Answer

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

Answer

The petitioner may not appeal the PTAB decision to the Federal Circuit

Answer

The petitioner is barred from filing any additional IPR petitions for 5 years

Answer

The petitioner must pay the patent owner's litigation costs

Question 5

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

Accepted Answer

Only prior art patents and printed publications

Answer

Any prior art, including prior public use, prior sales, and prior knowledge

Answer

Any § 102 or § 103 ground including secret prior art

Answer

Only U.S. patents issued before the filing date

Question 6

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

Accepted Answer

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

Answer

Yes, litigation is automatically stayed upon institution of IPR

Answer

No, district courts have no authority to stay cases related to IPR

Answer

Yes, but only if the patent owner consents to the stay

Question 7

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?

Accepted Answer

Derivation Proceeding

Answer

Inter Partes Review

Answer

Post-Grant Review

Answer

Supplemental Examination