Patent Bar Exam Post-Grant Proceedings 1 — Questions and Answers
Question 1: What is the deadline for filing a petition for Post-Grant Review (PGR) of a patent?
- Within 6 months of the patent grant or reissuance
- Within 9 months of the patent grant or reissuance (Correct answer)
- Within 12 months of the patent grant or reissuance
- Within 18 months of the patent grant or reissuance
Correct answer: Within 9 months of the patent grant or reissuance
Under 35 U.S.C. § 321, a PGR petition must be filed no later than 9 months after the date of the grant or reissuance of the patent.
Question 2: Who may file a request for Ex Parte Reexamination under 35 U.S.C. § 302?
- Only third parties with a financial interest in the patent
- Only the patent owner
- Any person, including the patent owner, third parties, and the USPTO Director (Correct answer)
- Only parties who have been sued for patent infringement
Correct answer: Any person, including the patent owner, third parties, and the USPTO Director
Any person—including the patent owner, third parties, or the USPTO Director on their own initiative—may file a request for ex parte reexamination.
Question 3: What threshold must the USPTO find to institute Inter Partes Review (IPR)?
- A substantial new question of patentability
- A reasonable likelihood that the petitioner would prevail on at least one challenged claim (Correct answer)
- More likely than not that at least one challenged claim is unpatentable
- Clear and convincing evidence that the challenged claims are invalid
Correct answer: A reasonable likelihood that the petitioner would prevail on at least one challenged claim
Under 35 U.S.C. § 314(a), the USPTO may not institute IPR unless it determines there is a reasonable likelihood that the petitioner would prevail on at least one challenged claim.
Question 4: Which of the following grounds CANNOT be raised in an Inter Partes Review (IPR) proceeding?
- Anticipation by a prior art patent under § 102
- Obviousness based on prior art patents under § 103
- Prior public use or prior sale under § 102 (Correct answer)
- Obviousness based on a combination of printed publications under § 103
Correct answer: Prior public use or prior sale under § 102
IPR is limited to challenges based on prior art consisting of patents or printed publications under §§ 102 and 103; prior public use, prior sale, and other non-documentary § 102 grounds cannot be raised.
Question 5: Within what time frame must the USPTO issue a final written decision after instituting an IPR?
- 6 months from institution
- 9 months from institution
- 12 months from institution (Correct answer)
- 18 months from institution
Correct answer: 12 months from institution
Under 35 U.S.C. § 316(a)(11), the USPTO must issue a final written decision within 12 months of institution, with a possible 6-month extension for good cause.
Question 6: Under 35 U.S.C. § 315(b), an IPR petition may not be filed more than one year after the petitioner was served with what?
- A cease-and-desist letter from the patent owner
- A complaint alleging infringement of the patent in civil action (Correct answer)
- An office action citing the patent as prior art
- A licensing demand from the patent owner
Correct answer: A complaint alleging infringement of the patent in civil action
Section 315(b) bars IPR petitions filed more than one year after the petitioner (or a real party in interest or privy) was served with a complaint alleging infringement of the challenged patent.
Question 7: Which post-grant proceeding was created by the Leahy-Smith America Invents Act (AIA) to replace Inter Partes Reexamination?
- Ex Parte Reexamination
- Supplemental Examination
- Inter Partes Review (IPR) (Correct answer)
- Derivation Proceeding
Correct answer: Inter Partes Review (IPR)
The AIA replaced inter partes reexamination with Inter Partes Review (IPR), which provides a trial-like proceeding before the Patent Trial and Appeal Board (PTAB) and took effect on September 16, 2012.
Patent Bar Exam Post-Grant Proceedings 1
What is the deadline for filing a petition for Post-Grant Review (PGR) of a patent?