Attacking An Issued Patent Without Filing Suit

Standards for Third Party Review of Issued Patents

The Leahy-Smith America Invents Act replaced inter partes reexamination with a new proceeding similarly called an inter partes review proceeding. This process took effect on September 16, 2012, one year after enactment of the Leahy-Smith America Invents Act. Part of the changes implemented into the newer proceeding include the standard required of all requesters in order to be granted reexamination, or review, of the patent being challenged. The standard provides that any request for inter partes reexamination filed on or after September 16, 2011, is not granted unless the request establishes a reasonable likelihood that the requesting party will prevail with respect to at least one of the claims challenged in the request. This replaces the old standard, which apparently made reexamination of patents more likely due to a lower threshold of proof required. The old standard was the so called substantial new question of patentability (SNQ). According to a reexamination article in Wikipedia, citing this USPTO report, reexamination proceeding under the old SNQ standard had begun to rise substantially every year with a fourfold increase since 2008.

Inter partes review replaced inter partes reexamination as an avenue for a third party’s patentability challenge. However, pending inter partes reexaminations were not be converted into inter partes review proceedings, but rather a transition period was enacted between September of 2011 and September of 2012. Today, the old SNQ standard was terminated and all proceedings require the new standard.

Under the new standard, a request for inter partes reexamination is not granted unless the information presented in the request presents there a reasonable likelihood the requester will prevail with respect to at least one of the claims challenged in the request. The threshold for initiating an inter partes review is thus elevated from ‘significant new question of patentability’ (SNQ) —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.’’

The Office no longer entertains original requests for inter partes reexamination on or after September 16, 2012, but instead will accept petitions to conduct inter partes review. A reasonable likelihood standard must include a statement pointing out, based on the cited patents and printed publications, each showing of a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, and a detailed explanation of the pertinence and manner of applying the patents and printed publications to every claim for which reexamination is requested. The standard for ex parte reexamination remains unchanged.