Patents Post-Grant: Will Post Grant Patent Proceedings Revisit Failed Arguments?

SNQ Analysis Not Explicit in New Post Grant Standards

As discussed earlier in the week, a petitioner must demonstrate reasonable likelihood of prevailing (RLP) in order to successfully initiate an inter partes review. As of September 16, 2011, this standard has also been applied in assessing requests for inter partes patent reexamination. In arriving at a new standard, Congress hoped to address criticisms that the previously applied substantial new question of patentability (SNQ) standard was too low, and fostered harassment of Patentees.

Patently-O has reported a recent petition decision that comments on the new RLP test, and whether or not the new threshold would necessarily exclude requests for IPX that would fail the old SNQ test.

The petition, found here, explains in relevant part (click to enlarge):

The IPR standard and PGR standard are also fleshed out in 325(d), which was not cited in the decision, which explains:

"In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because,the same or substantially the same prior art or arguments previously were presented to the Office."

Clearly, the above noted language of 325(d) provides a discretionary duty (i.e., "may"). Yet, when judging the "reasonable likelihood" that a petitioner will prevail, if the Office has previously considered, and rejected a same argument, such would seem to speak to a likelihood of failure. Also, unless and until the technical amendments to the AIA (now being discussed in Congress) are passed, there is nothing to stop an unsuccessful third party requester in IPX from simply seeking a "do-over" in IPR.  (absent external litigation events such as the 12 month IPR window expiring, or a DJ action) Thus, failure to exercise the 325(d) discretion would seem to invite a misuse of Office resources.

Moreover, Congress raised the SNQ threshold for post grant proceedings to reign in the high patent reexamination grant rates, and to address the concern that Patentees were being harassed. Ignoring 325(d) would not seem to be consistent with the intent of Congress. Indeed, as posted earlier in the week, Chief Judge Smith's explanation of the new standards for PGR and IPR  seem to indicate that previously settled issues will factor into the threshold determinations.

Whatever the decision with respect to 325(d) the USPTO message to the public should be consistent.

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