Enactment of America Invents Act to Change Inter Partes Patent Reexamination Practice Immediately
The USPTO is currently hard at work preparing to implement and adapt agency practices to comport with the various provisions of the Leahy-Smith America Invents Act. As many features of the legislation will require a significant USPTO rule making effort, most of the provisions of the Act will not become effective until the 1 year anniversary of enactment. In this regard, the USPTO has reportedly penciled in September 20th as the target date for the expected enactment of the Leahy-Smith America Invents Act.
While most provisions of the Act will not take effect until a year after enactment, there are some very important changes to patent reexamination practice that will become effective immediately…..likely, in a few weeks time.
The biggest, immediate change is the new standard for initiating an inter partes patent reexamination (soon to be Inter Partes review). Today the standard for initiating any patent reexamination, ex parte or inter partes, is the familiar Substantial New Question of Patentability (SNQ).
Currently, for an SNQ to be found, it is only necessary that: a teaching of (prior art) patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not at least one claim of the patent is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in a previous examination or pending reexamination of the patent. It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for an SNQ to be present as to a claim. Thus, an SNQ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or rendered obvious in view of, the prior art patents or printed publications. MPEP 2240/2640
The new inter partes reexamination standard will be stricter, and is codified as: a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. Not only will this new standard will be applied to the new Inter Partes Review proceedings (available 1 year from enactment), but in the interim, to all inter partes patent reexamination filings. (See 6(c)(3)(C) of H.R. 1249; current Section 312 would apply between the date of enactment and the 1 year anniversary, at which time new Section 314 would go into effect with the same standard for Inter Partes Review.)
The new standard was designed to reign in the gaudy grant rates of inter partes patent reexamination (95%).
What does this mean for practitioners?
Unlike ex parte patent reexamination, an Office Action typically accompanies an Order of inter partes patent reexamination. Thus, one could argue that there is a de facto, prima facie standard already applied by the USPTO to initiate inter partes patent reexamination. Still, it would seem prudent for practitioners planning on filing a request for inter partes patent reexamination in the next few weeks to be mindful of the looming change in standards.
Interestingly, the reasonable likelihood of prevailing standard will not consider rebuttal arguments from the Patent Owner, at least not for the next 12 months. Thus, the change may not yield a significant change in grant rates over the current de facto, prima facie standard. Still, filings after enactment of the Leahy-Smith America Invents Act will need to follow the new guidelines.
On the other hand, Inter Partes Review will allow for a preliminary response of the Patentee prior to deciding the Order.
As such, it is expected that there will be a small surge in inter partes reexamination filings immediately prior to the enactment of patent reform to avoid the new, heightened standard, and then another surge prior to the 1 year anniversary of enactment to avoid the new patentee preliminary response period.
Finally, with respect to ex parte reexaminations, the SNQ standard is maintained. However, enactment of patent reform will immediately preclude appeal by Patentees to the District Court in ex parte patent reexaminations. (to the extent that right currently exists, previous post here).
The times they are a-changin.