Patent Bar Exam Post-Grant Proceedings 2 — Questions and Answers
Question 1: What is the institution standard for Post-Grant Review (PGR), as compared to IPR?
- Reasonable likelihood the petitioner would prevail on at least one claim
- More likely than not that at least one challenged claim is unpatentable (Correct answer)
- Substantial new question of patentability
- Preponderance of the evidence of invalidity
Correct 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.
Question 2: Which of the following types of invalidity grounds may be raised in a Post-Grant Review (PGR) petition?
- Only prior art patents and printed publications under §§ 102 and 103
- Only § 112 written description and enablement issues
- Any ground of invalidity, including §§ 101, 102, 103, and 112 (Correct answer)
- Only double patenting and prior art grounds
Correct 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.
Question 3: What is the primary purpose of Supplemental Examination under 35 U.S.C. § 257?
- To allow third parties to challenge a patent's validity based on new prior art
- To allow a patent owner to have information considered that may affect enforceability, shielding against inequitable conduct claims (Correct answer)
- To request correction of typographical errors in an issued patent
- To appeal a final rejection by a patent examiner
Correct 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.
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?
- The petitioner may not appeal the PTAB decision to the Federal Circuit
- The petitioner is estopped from raising any ground that was raised or reasonably could have been raised during the IPR (Correct answer)
- The petitioner is barred from filing any additional IPR petitions for 5 years
- The petitioner must pay the patent owner's litigation costs
Correct 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.
Question 5: In an Ex Parte Reexamination proceeding, what prior art may be cited as a basis for reexamination?
- Any prior art, including prior public use, prior sales, and prior knowledge
- Only prior art patents and printed publications (Correct answer)
- Any § 102 or § 103 ground including secret prior art
- Only U.S. patents issued before the filing date
Correct 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.
Question 6: Can a district court stay pending litigation when an IPR petition is filed or instituted?
- Yes, litigation is automatically stayed upon institution of IPR
- No, district courts have no authority to stay cases related to IPR
- Yes, but only if the patent owner consents to the stay
- Yes, but only at the court's discretion based on applicable factors (Correct answer)
Correct 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.
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?
- Inter Partes Review
- Post-Grant Review
- Derivation Proceeding (Correct answer)
- Supplemental Examination
Correct 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.
Patent Bar Exam Post-Grant Proceedings 2
What is the institution standard for Post-Grant Review (PGR), as compared to IPR?