New Inter Partes Reexamination Rules

| September 22, 2011

The USPTO recently announced new rules governing the provisions of the America Invents Act (“AIA”) relating to inter partes reexamination that went into effect on September 16, 2011.

Inter partes reexamination requests submitted:

  • Prior to September 16, 2011:  The SNQ standard is applicable in determining whether the request for inter partes reexamination will be granted.  If reexamination is ordered based on the SNQ standard, then the SNQ standard will apply throughout the reexamination proceeding.
  • On or after September 16, 2011, but before September 16, 2012:  The “reasonable likelihood” standard (i.e., a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request) is applicable in determining whether the request for inter partes reexamination will be granted.  If reexamination is ordered based on the “reasonable likelihood” standard, then this standard will apply throughout the reexamination proceeding.
  • On or after September 16, 2012:   The Office cannot grant, or even accord a filing date to, the request, because the inter partes reexamination provisions of 35 U.S.C. chapter 31 are not available for any request for inter partes reexamination submitted on or after September 16, 2012.  The Office will only accept petitions to conduct inter partes review.  (*** The Office will implement the new inter partes review proceedings in a separate rule making.)

Thus, the Office will no longer apply the “substantial new question of patentability” (“SNQ”) standard to inter partes reexaminations filed after September 16, 2011.  (The SNQ standard for granting ex parte reexamination has not been revised by the AIA.) Instead, the Office will apply the “reasonable likelihood” standard, requiring the information presented in a request for inter partes reexamination to show that there is a “reasonable likelihood” that the requester will prevail with respect to at least one of the claims challenged in the request.

With respect to the “reasonable likelihood” standard, House Rep. 112-98 (Part 1), at 47, 112th Cong., 1st Sess., provides, in connection with inter partes review, the following:

“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’ –a standard that currently allows 95% of  all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”

(emphasis added.)

So what is the “reasonable likelihood” standard?

“A statement pointing out, based on the cited patents and printed publications, each showing of a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.”

Section 1.915(b)(3)

Thoughts:

  • It is almost impossible to predict – at this stage – the effect of replacing the SNQ test. However, based on the “elevated” language in the Congressional record, it appears that the new standard may result in a lower percentage of requests being granted, but not in a change in the number of requests resulting in a rejection of claims.
  • Unlike an inter partes review, an inter partes reexamination cannot be terminated by settlement between the parties.  Plus, following an inter partes review, the petitioner will be estopped (in a later civil, PTO, or ITC proceeding) from challenging the patent on any ground that was raised or “reasonably could have been raised” during the proceeding.  Whereas, following an inter partes reexamination, the petitioner is estopped only from challenging the patent on any ground that was raised or “could have been raised.”  These procedural issues should be taken into consideration – as we approach September 2012 – when deciding whether to request an inter partes reexamination or wait for inter partes review.
  • An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action (e.g.,declaratory judgment action, not a counterclaim) challenging the validity of a claim of the patent.  (Sec. 315)  Prospective defendants should take this into consideration as we approach September 2012. 
Category: New Standards, Reexamination Requests

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