USPTO Implements AIA Changes to Inter Partes Reexamination

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.

Comments

[EG]

Don,

Thanks for these posts on the various provisions of the AIA. I still need to do my "read it 10 times" review as I suggested on your prior post.

I presume that the end date (September 16, 2012) for inter partes reexam has something to do with the new post-grant opposition proceeding. Any thoughts on whether the number of inter partes reexam between now and then will slow to a trickle (i.e., because of the heightened standard)?

[Donald Zuhn]

EG:

Good suggestion on the multiple read throughs -- only seven more to go. Because the AIA essentially revises Chapter 31 to replace inter partes reexamination with inter partes review (instead of simply adding a new Chapter), it makes sense that inter partes reexamination disappears as of 9/16/2012 (except, of course, for any reexamination ordered prior to 9/16/2012). It's hard to predict how the new standard will affect requests, given that there are other differences between inter partes reexamination and inter partes review that may impact the decision to file a petition. Thanks for the comment.

Don

[Stan E. Delo]

Don and EG-

Won't the US grace period instantly expire if an American inventor elects to file anywhere outside of the US? It sounds like they are trying to retire the inter-partes review, and replace it with their *new and improved!* post grant review process. I am not too sure that the latter is the right way to go, but to each their own I suppose.

Best regards,
Stan~

[EG]

Stan,

A more significant issue about "filing elsewhere" is whether you've got a foreign filing license under 35 USC 184. You get that license usually automatically when you receive the formal filing receipt from the USPTO when you file the U.S. application. If you file outside the U.S. without that license, your U.S. application is dead unless you can get the license "retroactively" which is a very painful process.

Also, after reading the new "statutory bar portion" in Section 3 of the AIA that contains the "grace period," the wording suggests (and others have opined) that you, the inventor, can, in essence have your cake and eat it too. By that, I mean you not only don't blow "novelty" in the U.S. by publishing (although you'll blow "novelty" elsewhere, including Europe), but you may essentially "foul the nest" of others, yet also put a non-patent application "date stake" in the ground as to what you publish that is resistant to subsequent intervening prior art of third parties when you do file the U.S. application (within a year of that "published" date). While that may seem weird, my reading (as well as others) of that portion of Section 3 of the AIA suggests that's what is meant, and could well form a "strategy" for "staking out" what's published that avoids the impact of subsequent intervening prior art of third parties. In fact, this may lead to another interesting version of "leap frong" that occurs in current interference practice, only not "backwards" towards the invention date (as in the current "first to file" regime"), but instead, "backwards" towards the earliest "published" date(s) (yes, there could be multiple "published" dates to worry about).

If you feel queasy now Stan after what I've said, I don't blame you. I've yet to do my first complete reading of the AIA (~150 pages) and it already gives me nightmares. The AIA is worded very confusingly in several spots (some of which others suspect, as do I, were deliberate "language landmines" to be "blown up" later in litigation), and rivals the ambiguous wording in several portions of the Hatch-Waxman act.