Purpose of Inter Partes Review and Post-Grant Review to Differ from that of Inter Partes Reexamination

Scott Daniels | November 22, 2011

Accused infringers, hoping to challenge a patent, find current inter partes reexamination attractive, in part, because there is no statutory presumption of validity.  And yet the threshold requirement of a “substantial new question of patentability” contains an irrebuttable presumption that all issues expressly addressed by the examiner in the original prosecution were correctly resolved.  Inter partes reexamination is not granted under the current statute merely because the original examiner was wrong.  Even if an accused infringer believes that the examiner made an obvious mistake, there must still be a new issue to justify inter partes reexamination. 

All that changes with the new inter partes review and post-grant review procedures.  The former is granted where there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The latter, where the allegations in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable” or where “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.”  There is no need for “newness” in the threshold requirements for the new procedures.

Preliminary comments filed with the PTO by Verizon, Google, Cisco and Intuit, who aggressively seek to maximize the impact of the new procedures, emphasize this change:

[t]he new thresholds focus on a different purpose – one of improving patent quality across the wide spectrum of issued patents.  No longer is the identification of a new question the critical factor; rather, the focus is on whether review could improve patent quality by altering “at least 1 of the claims challenged in the petition” or by resolving “a novel or unsettled legal question that is important to other patents or patent applications.”

(Emphasis added).  This change foretells a patent application process radically different from the current system: a process in which the patentee’s competitors will be invited to participate fully in the examination process.  One wonders what role, at least on the issue of validity, will be left for the courts.  Patentees might wonder why they went through the original examination process only to repeat it in post-grant examination.

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