On September 23, 2011, the United States Patent Office (PTO) published new rules with respect to the standard for granting an inter partes reexamination request. These rule changes were promulgated due to the enactment of the Leahy-Smith America Invents Act (AIA) on September 16, 2011.
The rule change codifies the new standard a requestor must met in order for the PTO to grant an inter partes reexamination of an issued U.S. patent. That is, the standard for granting a reexamination proceeding between the patent holder, an unrelated third party, and the PTO has been changed. Effective September 16, 2011, a request for an inter partes reexamination will not be granted unless the information presented in the request establishes a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged.
This new standard replaces the prior standard of a showing by the requester of a substantial new question of patentability. The House of Representatives during review of the AIA commented that this new standard will elevate the threshold for initiating an inter partes reexamination proceeding from the previous standard, which resulted in 95% of all inter partes requests being granted by the PTO. While this rule change heightens the standard for granting an inter partes reexamination request, neither these rule changes nor the AIA affects the standard for granting an ex parte reexamination request. As a result, the standard for an ex parte examination request remains as a substantial new question of patentability.
In addition to amending the inter partes reexamination request standard, these rule changes also provide the date on which inter partes reexamination requests will be terminated and replaced by new post-grant inter partes review procedures established under the AIA. Specifically, 37 CFR § 1.913 has been amended to provide that an inter partes reexamination request filed on or after September 16, 2012, will not be granted.
In their comments to the rule changes, the PTO has made the following information clear.
- For inter partes reexamination request filed prior to September 16, 2011, the standard is a substantial new question of patentability. If the request is granted, this standard shall apply throughout the proceeding, even if the proceeding is not granted until after September 16, 2011 or extends past September 16, 2012.
- For inter partes reexamination requests filed on or after September 16, 2011 but before September 16, 2012, the applicable standard is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. This standard will apply throughout the proceeding, even if the proceeding should extend past September 16, 2012.
- The PTO will not entertain an inter partes reexamination request filed on or after September 16, 2012. Parties interested in challenging issued U.S. patents will instead have to use one of the new post-grant review procedures that go into effect September 16, 2012.
The PTO has not yet provided rules or regulations with respect to the new post-grant review procedures. We expect that the PTO will publish these rules regarding post-grant review procedures in separate rule making communications throughout the year. As information becomes available, we will provide you with relevant updates.
In the meantime, due to the uncertainty of how the PTO will implement these rules, consideration of whether to file under the current or new procedures can be an important strategic decision. We invite you to contact us to discuss these new opportunities available under the AIA
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