Patent Reform Update: House Reverts To Senate Inter Partes Review Standard


Scott McKeown, Practice Center Contributor and Partner at Oblon Spivak, sent in this article discussing the Manager’s Amendment to the House’s patent reform bill, H.R. 1249.  The Amendment removes the Substantial New Question of Patentability (SNQ) standard for Inter Partes Review.

SNQ Standard Removed by Proposed Manager Amendment

Yesterday, the Chairman of the House Judiciary Committee circulated a Manager’s Amendment to H.R. 1249. (here).  There were several notable changes to the proposed Inter Partes Review and Post Grant Review proceedings.

Perhaps the most noteworthy change in the manager’s amendment from a post grant perspective is the removal of the Substantial New Question of Patentability (SNQ) standard for Inter Partes Review. Previously I explained that the SNQ standard was adopted by the House for Inter Partes Review over the proposed “reasonable likelihood of success” standard of Senate bill S.23. The House adoption of the more liberal SNQ standard was not only unpopular, but rendered other aspects of the bill wasteful. Fortunately, this change has been undone by the manager amendment.

Other notable Post Grant Changes include:

Inter Partes Review

-expansion of window to request an Inter Partes Review once litigation is initiated (expanded from 9 months to one year)

-a provision was added guaranteeing that the petitioner will get at least one opportunity to file written comments if an Inter Partes Review is instituted. (I guess if the Board sides with the Patentee at the outset, the Patentee would not need to file anything that would trigger a petitioner right of response, effectively forcing the petitioner to the CAFC?)

-the section of H.R. 1249 pertaining to staying an ITC action was removed (Sec. 320)

Post Grant Review

-the section of H.R. 1249 pertaining to staying an ITC action was removed (Sec. 330)

Other provisions and changes, perhaps most notably to the first to file provision (correction of language). Also a provision was added to study the impact of patent troll litigation and its effect on the economy.


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