By Scott A. McKeown
| August 29, 2011
Patent Reform & Inter Partes Review

Patent Reform & Inter Partes Review


Last week, I discussed some important changes to inter partes patent reexamination that will become effective immediately upon enactment of the patent reform legislation. Namely, that the standard for initiating inter partes reexamination will become stricter. The new standard is defined as: a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. This new standard replaces the current standard that requires a Substantial New Question of Patentability (SNQ), perhaps within a matter of days.

Inter Partes Review will ultimately replace inter partes patent reexamination on the one year anniversary of the enactment of the patent reform legislation. Thus, the interim standard for the last year of inter partes patent reexamination will help the USPTO prepare to transition to the new Inter Partes Review proceeding, which will use the same standard.
Looking forward to Inter Partes Review, current litigation defendants will find themselves shut out from the USPTO with respect to a parallel inter partes proceeding unless they pursue matters before the one year anniversary.

Inter Partes Review as currently written in the pending legislation, includes 35 U.S.C. § 315. Section 315(b) is entitled Patent Owner's Action, and provides as follows:

An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

(emphasis added)

In other words, defendants can no longer wait until an advanced stage of a litigation proceeding before deciding to pursue Inter Partes Review.

For those already subject to litigation, the clock would appear to begin ticking upon enactment. So, litigation currently in early stages, awaiting a settlement, or just months away from costly discovery, may lose out on the ability to institute an inter partes proceeding if not mindful of the anniversary. Indeed, currently active litigants will not be able to wait for Inter Partes Review as once this proceeding becomes available in roughly 12 months, their litigation will be outside the 1 year date provision. Instead, those litigants desiring a parallel inter partes proceeding will be forced to file an inter partes reexamination now, before the anniversary date of patent reform enactment.

As pointed out previously, the date of patent reform enactment and the one year anniversary will likely result in a bubble of inter partes patent reexamination filings.

Of course, the estoppel provisions of inter partes patent reexamination currently in place effectively limit the ability to conclude an inter partes patent reexamination before the conclusion of an advanced litigation. Still, often times such filings are pursued by defendants for additional claim construction clarification, or stay purposes. While ex parte patent reexamination remains an option after Patent Reform, the loss of a voice in USPTO proceedings is a significant pitfall for those not following the seemingly imminent enactment of the Patent Reform legislation.
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