On July 24, 2012, the Patents Post Grant blog published an interesting article titled Higher Patent Reexamination Threshold Suffers from SNQ Hangover. In the article, Scott McKeown, a partner with Oblon, Spivak in the firm’s Post Grant Patent Practice Group, wrote:
A random review of 80 requests filed under the new Reasonable Likelihood of Prevailing (RLP) standard reveals over 25 requests that were either partially (or even fully denied by examiners) [sic]. Compared to the prior grant rate of close to 95%, it would seem the new “higher standard” is having Congress’ desired effect.
Based on this sampling by McKeown, it seems that the new standard is indeed having an effect. McKeown goes on to explain that if you file an inter partes reexamination request and it is denied, you can always learn from what the examiner stated and resubmit, but that only applies as long as there is time. Inter partes reexamination will go the way of the dinosaurs on September 16, 2012. McKeown writes: “Those IPX filers that are in parallel litigation, and have their IPX requests denied closer to the September deadline, may soon be forced into some very unfavorable positions.”
The problem that McKeown is discussing in his latest article is one that he has previously written about…what he refers to as the Post Grant Dead Zone. In an article published October 17, 2011, McKeown wrote:
When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted, the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR, becomes available for all patents next September 16, 2012.
So, for newly issued patents that will not be eligible for PGR over the next few years, do requesters still have to wait 9 months before filing a request for IPR?
McKeown went on to conclude that while there may be some way to twist the legislative history, it seems likely that requesters will indeed have to wait 9 months before filing a request for IPR. This is problematic for defendants who are sued in Federal District Courts that have fast-moving dockets. While IPR can be brought within 12 months, McKeown suggests “waiting 9 months may destroy any opportunity to stay the case pending USPTO proceedings.”
We are just scratching the surface on the America Invents Act. The most significant changes to patent practice and patent law are not due until March 16, 2013, and already we are seeing the early signs of changes to patent practice. As the next wave of AIA implementations take effect on September 16, 2012, we may not see a lot of changes to the day-to-day practice due to the waiting time associated with Post Grant Review (which applies to patents maturing from applications filed on or after March 16, 2013) and IPR (see the aforementioned 9-month waiting period). That doesn’t mean that the changes in post grant practice won’t immediately influence patent litigation, particularly concurrent litigation strategies.