Chapter 2600

Question 1

Title of Chapter

Answer 1

Optional Inter Partes Reexamination

Question 2

what did AIA do

Answer 2

• changed it to review and not reexam

Question 3

IPR

Answer 3

• 3rd party request prior to 9.16.12 ant rime during enforceability of patent
• similar to examination, different rejections, 3rd party can participate
• claims are basis

Question 4

decision on request

Answer 4

• before 9.16.11 - SNQ
• after 9.16.11 - reasonable likelihood requester will prevail (RLP) on at least 1 claim
• same standards apply to SNQ as EPR

Question 5

scope

Answer 5

• 37 CFR 1.906
• prior art patents printed pubs, double patenting
• compliance w/ 35 USC 112
• claims in proceedings must not enlarge scope of claims of patent

Question 6

response time for patent owner

Answer 6

• owner given 2 months

- can extend 30 days

Question 7

response for 3rd party comments

Answer 7

30 days from date of service

doesn’t need comments for every response

Question 8

ACP

Answer 8

• action closing prosecution

- similar to final rejection BUT CANNOT BE APPEALED from

Question 9

RAN

Answer 9

• Right of Appeal Notice
• identifies status of each claim after appeal
• cannot be issued until owner has responded to each and every rejection prior to appeal stage

Question 10

NIRC

Answer 10

Notice of Intent to Issue IPR Reexamination Certificate

Question 11

live claims

Answer 11

• existing claims not held invalid by final decision, after all appeals

Question 12

reexam certificate

Answer 12

issued at conclusion of proceeding for each patent in which reexam proceeding has been ordered