The U.S. Patent and Trademark Office recently began implementing changes to U.S. patent law in accordance with the Leahy-Smith America Invents Act (AIA).  In one of its first acts, the Patent Office issued a Notice in the Federal Register  that revised the rules of practice governing inter partes reexamination.  In the Notice, the USPTO indicated that it was implementing a transition provision of the Leahy-Smith America Invents Act that changes the standard for granting a request for inter partes reexamination between September 16, 2011 and September 15, 2012 and revising the rules governing inter partes reexamination to reflect the termination of inter partes reexamination effective September 16, 2012.

Prior to the enactment of the AIA, the standard for granting an inter partes reexamination request was whether “a substantial new question of patentability affecting any claim of the patent concerned is raised by the request.”  The USPTO referred to this standard as the SNQ standard.  The AIA deleted any reference to the SNQ standard.  In place of each deletion, the AIA added language requiring the information presented in a request for inter partes reexamination show that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request.  The Notice recognized that in enacting this new “reasonable likelihood” standard, the House of Representatives Report on the AIA intended to elevate the standard for granting an inter partes reexamination request:

“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.”

In terms of timing, the Notice states the “reasonable likelihood” transition standard applies to any request for any inter partes reexamination filed after September 16, 2011 and prior to September 15, 2012 and applies throughout the entire reexamination proceeding, even after September 16, 2012.  However, that old SNQ standard will still apply to any request for inter partes reexamination filed prior to September 16, 2011.  If reexamination is ordered based on the SNQ standard, then the SNQ standard will apply throughout the entire reexamination proceeding, even after September 16, 2011. 

In addition to adopting the transition provision, the AIA replaces the inter partes reexamination with a new inter partes review process effective September 16, 2012.  Recognizing enactment of this provision, the Notice indicates that no request for reexamination will be granted for any request submitted on after September 16, 2012.  Accordingly, the USPTO will no longer entertain original request for inter partes reexamination on or after September 16, 2012, but instead will accept petitions to conduct inter partes review.  The Patent Office notes that it will implement the new inter partes review proceedings in a separate rule making.

Practice Note:   At this time, it is nearly impossible to predict how the Patent Office will apply the new “reasonable likelihood” standard.  However, based on the comments in the Congressional Record that the threshold for initiating an inter partes reexamination has been “elevated,” it is likely that at least a slightly lower percentage of inter partes reexamination requests will be granted under the “reasonable likelihood” standard as compared to the SNQ standard.