Podcast: Play in new window | Download
Subscribe: Apple Podcasts | Android | RSS
Question:
Which of the following new trial proceedings can the patent owner file a preliminary response for?
Answer:
The patent owner is afforded an opportunity to file a preliminary response for inter partes review (IPR), postgrant review (PGR), and covered business method patents (CBM).
Chapter Details:
This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. 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 comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. The following is a brief summary of the appropriate section in the supplement.
C. Patent Owner Preliminary Response
In IPR, PGR, and CBM proceedings, a patent owner can file a preliminary response within three months of receiving the petition notice. This response can present arguments and supporting evidence, including testimonial evidence, to argue against the institution of a review.
Potential arguments could include statutory bars against the petitioner, issues with the petitioner’s references or claim interpretations, or reasons why the Director should exercise discretion to deny institution.
The weight of testimonial evidence is decided case-by-case, and while no negative inference will be drawn if a patent owner decides not to present testimonial evidence, the patent owner must advise the Board if they choose not to rely on submitted testimony during trial.