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

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?

Accepted Answer

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

Answer

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?

Accepted Answer

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

Answer

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?

Accepted Answer

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

Answer

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?

Accepted Answer

Only prior art patents and printed publications

Answer

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.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Post-Grant Proceedings 2