Question 11
Domain 4: Post-Grant Proceedings, Appeals, and International Patent LawInter partes review (IPR) can be requested based on which of the following grounds?
Correct answer: B
Explanation
An inter partes review is limited by statute to challenges “only on a ground that could be raised under section 102 or 103” and only “on the basis of prior art consisting of patents or printed publications.” That means IPR may rely on novelty and obviousness, but not other invalidity grounds.
Why each option is right or wrong
A. Any ground of invalidity including enablement and written description
B. Only novelty under § 102 and obviousness under § 103, based on patents or printed publications
35 U.S.C. § 311(b) limits an inter partes review petition to a ground that could be raised under 35 U.S.C. § 102 or § 103, and only on the basis of prior art consisting of patents or printed publications. The statute therefore excludes other invalidity theories—such as § 101 subject-matter eligibility, § 112 written description/enablement, or public use/on-sale evidence not embodied in a patent or printed publication—from IPR review.
C. Inequitable conduct during prosecution
D. Lack of subject matter eligibility under § 101