By Donald Zuhn --
The U.S. Patent and Trademark Office continues the process of implementing the many changes to U.S. patent law brought about by the enactment of the Leahy-Smith America Invents Act (AIA) on September 16. In one of its more recent steps, the Office issued a notice in the Federal Register (76 Fed. Reg. 59055) that revises the standard for granting requests for inter partes reexamination. In the notice, the Office indicates that the rules of practice regarding inter partes reexamination have been revised to reflect the new standard for granting an inter partes reexamination provided in § 6(c)(3)(A) of the AIA, as well as provide for the termination of inter partes reexamination on September 16, 2012 as provided in § 6(c)(3) of the AIA.
With regard to the revised standard, the AIA specifies that a request for inter partes reexamination will not be granted unless the information presented in the request shows that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. The old standard for granting a request for inter partes reexamination required that the request raise a substantial new question of patentability (SNQ) affecting any claim of the patent -- the same standard for granting an ex parte reexamination request, which remains unchanged by the AIA. The new standard for inter partes reexamination requests applies to any request that is filed on or after September 16, 2011 (i.e., the date of enactment of the AIA), but before September 16, 2012 (i.e., the effective date of the inter partes review provisions of the AIA). The notice indicates that a rulemaking regarding inter partes review will be forthcoming.
In discussing the new reasonable likelihood standard, the Office cites to the report on the AIA by the House Committee on the Judiciary, released June 1, 2011, which states at page 47 that:
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.
The House report also contained Additional Views presented by Representatives Howard Berman (D-CA), Melvin Watt (D-NC), and Zoe Lofgren (D-CA), in which the legislators noted at page 165 that "the practical meaning of the new [reasonable likelihood] standard in H.R. 1249 is not clear and creates a risk that the PTO will reject legitimate petitions at the outset of the procedure, without further inquiry."
The Office's Federal Register notice indicates that the old standard will apply for all inter partes reexaminations requested prior to September 16, 2011 (including reexaminations ordered under the old standard and conducted after September 16, 2011), the new standard will apply to reexaminations requested on or after September 16, 2011, but before September 16, 2012 (including reexaminations ordered under the new standard and conducted after September 16, 2012), and that the Office will not grant requests for inter partes reexamination filed on or after September 16, 2012.