Understanding the New Inter Partes Reexamination Standard

This article by Finnegan attorneys Naveen Modi and Abhay D. Watwe, Ph.D., examines the new standard for initiating an inter partes reexamination, which was introduced in the America Invents Act (AIA) of 2011. Before Congress enacted the AIA, the U.S. Patent and Trademark Office used the so-called "substantial new question of patentability" or SNQ standard to determine if a reexamination proceeding is needed. The authors outline the criteria for the previous SNQ standard, detail the new inter partes standard, and outline how it differs from the SNQ standard. The authors conclude that "it is still too early to tell whether the new standard will indeed prove more stringent," but offer some suggestions on how requesters can best ensure their requests are granted.

This article was originally published in the March 2012 issue of Finnegan's Full Disclosure newsletter.