MPEP Q & A 125: Reasons Why a Petition Filed Under 35 U.S.C. 321 May be Considered

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Question:

35 U.S.C. 322 covers petitions involved in post-grant reviews. 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered. List two reasons why a petition filed under 35 U.S.C. 321 may be considered.

Answer:

35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered only if:

  • (1) The petition is accompanied by payment of the fee established by the Director under 35 U.S.C. 321;
  • (2) The petition identifies all real parties in interest;
  • (3) The petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including:
    • (A) Copies of patents and printed publications that the petitioner relies upon in support of the petition and
    • (B) Affidavits or declarations of supporting evidence and opinions, if the petitioner relies on other factual evidence or on expert opinions;
  • (4) The petition provides such other information as the Director may require by regulation; and
  • (5) The petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) of 35 U.S.C. 322(a) to the patent owner or, if applicable, the designated representative of the patent owner.

Chapter Details:

The answer to this question can be found in the following supplement: Inter Partes, Post Grant, and Covered Business Method Review Final Rules. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question and answer comes from the following supplement: Inter Partes, Post Grant, and Covered Business Method Review Final Rules.  It specifically comes from 35 U.S.C. 322: Petitions. Here’s a short summary of this statute:

35 U.S.C. 322: Petitions.

35 U.S.C. 322 covers petitions involved in post-grant reviews.