House Version Of Inter Partes Review & Wasted Time


Scott A. Mckeown, Partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant, sent in this article discussing to what extent inter partes reexamination will change if H.R. 1249, the House’s proposed patent reform legislation, is passed into law.

Inter Partes Review, 5 Months to a First Action?

Should the proposed patent reform legislation pass into law, inter partes reexamination will gradually cease to exist. In place of inter partes patent reexamination will be an entirely new mechanism known as Inter Partes Review.

Inter Partes Review will not be conducted by patent examiners of the Central Reexamination Unit, but instead by the Administrative Patent Judges of the Patent Trial & Appeal Board (now known as the BPAI). As the new proceeding is conducted by APJs, limited discovery practices will be provided. Beside these procedural changes, the substantive analysis remains largely the same. …at least in H.R. 1249.

In H.R. 1249, the Substantial New Question of Patentability (SNQ) standard is substituted for the ”likelihood of success” standard of Senate bill S.23. So, in order to initiate an Inter Partes Review under the House Bill, the same SNQ standard of inter partes patent reexamination is used.

While the House bill removed the heightened standard (i.e., likelihood of success) in favor of the much more liberal SNQ standard (i.e., important to a reasonable examiner), the Senate provision providing for a preliminary Patentee response to a request for Inter Partes Review remains in the bill. In essence, Inter Partes Review of H.R. 1249 is substantive ly the same as inter partes patent reexamination, with the added provision of a patent owner statement on the front end.

In the Senate Bill, a preliminary response provided a meaningful opportunity for patentees to rebut the ‘likelihood of success” showing of the request. Now that the House Bill has reverted to the SNQ standard, the preliminary response may provide nothing more than dead time to the front end of the Inter Partes Review. The preliminary response provision of H.R. 1249 reads as follows:

Sec. 313. Preliminary response to petition

(a) Preliminary Response- If an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response within a time period set by the Director.

(b) Content of Response- A preliminary response to a petition for inter partes review shall set forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter.

Sec. 314. Institution of inter partes review

(a) Threshold- The Director may not authorize an inter partes review to commence unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that a substantial new question of patentability exists. (emphasis added)

History has shown that roughly 96% of inter partes patent reexaminations are granted, meaning an SNQ is almost always found. Due to the relatively low standard for finding an SNQ, it seems unlikely that a patentee would deem it worthwhile to argue the issue. Whether an SNQ is presented in the request is quite different from whether or not prima facie rejections are presented. As such, one would expect the office to follow the statute and deny consideration of arguments directed to proposed rejections as premature.

Although neither the House nor Senate bills identify a time frame to submit such a preliminary response, the Post Grant Review mechanism provides 2 months. Thus, it is safe to assume a similar time frame for Inter Partes Review. The date for determining whether or not the proceeding should be conducted is “within three months” of the receipt of the preliminary response, or the last date upon which one would be due. So, a first office action would not be possible until at least 5 months from filing of an Inter Partes review.

Currently, as there is no patent owner statement permitted in inter partes patent reexamination, office actions have issued as quickly as 2 months. Notably, Congress has set a 12 month time frame to conclude an Inter Partes Review (18 months maximum); front loading needless delay would not seem to comport with that intent.

As the saying goes, if it aint broke, don’t fix it.


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