The new standard is requests for inter partes reexamination must be
based on "a reasonable likelihood that the requester would prevail
with respect to at least 1 of the claims challenged in the request" (RLP) rather
than a "substantial new question of patentability" (SNQ). The House Committee
Report indicated this new standard RLP should be viewed as an elevated threshold over
SNQ, which had resulted in the PTO granting 95% of all inter partes reexamination
requests.
However, the PTO's decision in In re Flaherty to deny patent owner's petition to vacate an order
granting an inter partes reexamination on April 4, 2012 suggests that the new standard for inter partes reexamination is not so much an elevated standard but a different one.
Under SNQ, a request had to be based on a question of
patentability that was substantially new with respect to the original
prosecution which gave deference to
examiner for issues considered in the original prosecution.
Now we get a
surprise as the "new" of SNQ is removed. Now the basis for
granting the inter partes reexamination request can be grounded on the same issues considered in the original prosecution as long as the
PTO believes that the requester has a reasonable likelihood of prevailing with respect
to at least one claim. I expect this removal of deference to the examiner to further open the door for requesting inter partes reexamination for an original examination that misinterpreted pertinent prior art. Thus, I view this new standard as a lowered threshold for this common case despite the House Committee Report.
Copyright © 2012 Robert Moll. All rights reserved.
Copyright © 2012 Robert Moll. All rights reserved.
