Inter Partes Reexamination
Question R1: What is the effective date of the provisions effecting inter partes reexamination?
The effective date of the inter partes reexamination provisions is September 16, 2011.
Question R2: Did the AIA change the standard for inter partes reexamination?
Yes. Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. The standard for ex parte reexamination remains unchanged.
Question R3: If a request for inter partes reexamination was filed before the enactment date of the AIA, but a determination on the request has not yet been issued, which standard will be applied in determining whether to grant inter partes reexamination?
The Substantial New Question of patentability (SNQ) standard is applicable in determining whether the request for inter partes reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to the date of enactment of the AIA (i.e., September 16, 2011).
Question R4: If a request for inter partes reexamination was granted under the SNQ standard, will the resulting proceeding continue until its conclusion under the SNQ standard?
Yes. If reexamination was ordered based on the SNQ standard, the SNQ standard will continue to be applied until the conclusion of the proceeding.
Question R5: What is inter partes review and when is it available?
Inter partes review replaces inter partes reexamination as an avenue for a third party’s patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012.
Question R6: When inter partes review under section 6 of the AIA takes effect on September 16, 2012, will pending inter partes reexaminations be converted to inter partes review proceedings?
No. Pending inter partes reexaminations will not be converted into inter partes review proceedings. Proceedings for inter partes reexamination filed prior to September 16, 2012, will proceed to conclusion even if the proceedings last beyond September 16, 2012
Question R7: If a request for inter partes reexamination is filed on September 16, 2012, how will it be treated?
Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted.