325(d) Compliments SNQ Standard

The popularity of AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) has caused a corresponding nosedive in patent reexamination filings. Not surprisingly, when faced with a high-value patent dispute, patent challengers greatly prefer the more robust inter partes options of the PTAB as compared to ex parte reexamination. But, that is not to say that patent reexamination is no longer important. Indeed, there are situations where patent reexaminations are conducted in parallel to AIA trials, or at the conclusion of such a trial.

A question that has lingered in recent years is the relationship of the Substantial New Question (SNQ) standard of patent reexamination to the AIA’s “same or substantially the same prior art or arguments” of 35 U.S.C. § 325(d). The statute makes clear that it applies to Chapter 30 statutes (reexamination), and includes the language “petition or request” to further clarify that patent reexamination is covered. But, there has been little guidance from the agency on the use of 325(d) analysis in patent reexamination, or how it might operate together with the seemingly redundant SNQ standard.

A recent decision of the Office of Patent Legal Administration (OPLA) provides a very comprehensive discussion of the various moving parts (here).  (Given my firm’s involvement, I am limiting my commentary to a simple introduction of the issues discussed).