Frequently Asked Questions

The failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As state above, this new practice does not affect the patent examination practice.

The effective date for the Best Mode provision in the AIA is September 16, 2011.

Yes, a third party must pay the $180 fee to make a re-submission of three or fewer documents in an application where the third party's first submission of three or fewer documents in the application took advantage of the fee exemption and was found to be non-compliant. The fee exemption does not apply to a resubmission because the third party will not be able to make the "first and only" statement under 37 C.F.R. 1.290(g).

The AIA permits the parties to an inter partes review to settle. A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.

Yes, then AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of an inter partes review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

The Board does not currently track the percentage of IPRs that identify concurrent litigation.

The AIA provides that where an inter partes review is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the inter partes review.

Yes, a petitioner in an inter partes review may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the inter partes review. Similarly, a petitioner in an inter partes review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the inter partes review.

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was denied during the proceeding.

Yes, a party dissatisfied with the final written decision in an inter partes review may appeal to the Federal Circuit.

The AIA provides that a party may request relief during an inter partes review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an expedited manner is encouraged. A party seeking relief may contact the Board and request a conference call, explaining why the call is needed. The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days.

A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

Yes, the AIA permits either party to a inter partes review to request an oral hearing.

An inter partes review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.

The AIA authorizes the Office to set standards and procedures for the taking of discovery during an inter partes review, including that discovery be limited the depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice.

Where another matter involving the same patent is before the Office during the pendency of the post grant review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter. Joinder may be requested by a patent owner or petitioner.

The AIA permits the parties to a post grant review to settle. A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.

Yes, then AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of a post grant review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was denied during the proceeding.

A post grant review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.

The AIA provides that where a post grant review is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the post grant review.

Yes, a petitioner in a post grant review may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the post grant review. Similarly, a petitioner in a post grant review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the post grant review.

Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery.

The AIA provides that a party may request relief during a post grant review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an expedited manner is encouraged. A party seeking relief may contact the Board and request a conference call, explaining why the call is needed. The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days.

A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

Yes, the AIA permits either party to a post grant review to request an oral hearing.

A petitioner may supplement information provided in the petition for post grant review by a motion within one month of the date trial is instituted.