MPEP Q & A 312: List two General Plastic non-exclusive factors.

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Question:

List two General Plastic non-exclusive factors.

Answer:

The General Plastic non-exclusive factors include the following:

  1. Whether the same petitioner previously filed a petition directed to the same claims of the same patent;
  2. Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;
  3. Whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition;
  4. The length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
  5. Whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
  6. The finite resources of the Board; and
  7. The requirement under 35 U.S.C. 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.

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.

D. Institution of Trial

The Director may institute a proceeding if the petitioner meets the statutory threshold standards, which vary depending on the type of proceeding. In deciding whether to institute a trial, the Board takes into account whether the relevant statutory institution standard has been met and whether various considerations warrant the exercise of the Director’s discretion to decline a review. 


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