Patent Bar Exam Post-Grant Proceedings 3

Question 1

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

Accepted Answer

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

Answer

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.

Question 2

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

Accepted Answer

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

Answer

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.

Question 3

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

Accepted Answer

3 months

Answer

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.

Question 4

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

Accepted Answer

Inter Partes Opposition

Answer

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.

Question 5

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

Accepted Answer

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

Answer

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.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Post-Grant Proceedings 3