Understanding the New Inter Partes Reexamination Standard
(cont’d)
Prior to enactment of the AIA, the USPTO determined whether or not to initiate an ex parte or inter partes reexamination proceeding based on the so-called “substantial new question of patentability” (SNQ) standard. Under this standard, a prior art patent or printed publication “raises a substantial question of patentability where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable.” MPEP § 2242(I) (8th ed. Rev. 7, July 2008). The USPTO requires that a request for reexamination “must point out how any questions of patentability raised are substantially different from those raised in the previous examination of the patent before the Office.” Id. § 2616. The request must also demonstrate “that a patent or printed publication that is relied upon in a proposed rejection presents a new, non-cumulative technological teaching that was not previously considered and discussed on the record,” either during the prosecution of the patent or in any subsequent proceeding. Id. Historically, using this standard, the USPTO has granted over 90% of the requests it has received.
With the AIA, Congress changed the standard for initiating an inter partes reexamination. Now, an inter partes requester must demonstrate that there is a reasonable likelihood that the requester will prevail with respect to at least one challenged claim. The House report accompanying the bill stated: “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.” H.R. Rep. No. 112-98 (Part 1), at 47 (2011) (emphasis added). This new standard, therefore, presumably requires a higher showing than the SNQ standard.
How the USPTO will apply this new standard, however, remains unclear. The few recent USPTO decisions on inter partes reexaminations filed after September 16, 2011, suggest that the USPTO equates “reasonable likelihood that the requester will prevail” with a prima facie showing of unpatentability, which is not required under the SNQ standard. Thus, whether a request will be granted under this new standard may turn on whether the examiner agrees or disagrees with the requester’s assertions regarding unpatentability of the challenged claims. For example, in an inter partes reexamination filed immediately after September 16, 2011, the USPTO granted the reexamination request because the examiner concluded that the prior art references asserted by the third-party requester anticipated or rendered obvious at least one challenged claim. More recently, however, the USPTO denied an inter partes reexamination request when the examiner concluded, based on the prosecution history of the challenged patent, that the prior art reference did not teach one or more features of a challenged claim. In this case, the examiner evaluated the prior art asserted by the requester in light of the prosecution history of the patent and the USPTO’s own analysis from a prior reexamination of the patent. Thus, unlike its application of the SNQ standard, the USPTO appears to be performing a more detailed analysis of the rejections proposed by third-party requesters to evaluate the reasonable likelihood that the requester will prevail with respect to at least one claim.
Given that only about six months have elapsed since enactment of the AIA, it is still too early to tell whether the new standard will indeed prove to be more stringent. Given the uncertainty and to ensure that an inter partes request gets granted under the new standard, a requester should do a detailed analysis showing how the claims it is challenging are unpatentable. For instance, a requester should consider submitting detailed claim charts mapping the claim language to the prior art and show how the claims are unpatentable under 35 U.S.C. § 102 and/or § 103.
Naveen Modi practices all aspects of patent-related work, including litigation (U.S. district court, U.S. International Trade Commission (ITC), and appellate), client counseling, interferences, patent prosecution, and opinions. He has conducted all types of discovery, drafted briefs, prepared and examined witnesses, and argued in court. He has been involved in over 50 reexamination proceedings, including advising clients on concurrent litigation. His practice encompasses a range of technical areas, including medical devices, software, networking, business methods, semiconductor devices, and electronics.
Abhay Watwe’s practice includes patent prosecution, litigation, and reexaminations related to mechanical and electrical technologies. He also provides patent-infringement and validity opinions.
