Inter Partes Re-Examination Overview

Along with the creation of inter partes review, the America Invents Act (section 6(c)(3)(a)) established a transitional one-year period in which inter partes reexamination was utilized with a different threshold for granting such reexamination. The standard used during the one-year period was the same as that which is now being used in inter partes review. There were no other alterations to inter partes reexamination.

Before the America Invents Act, the Director would grant a petition for inter partes reexamination if the reexamination request established a substantial new question of patentability (SNQ) affecting at least one claim in the patent. The threshold established by the AIA changed this standard to be the same as the standard now implemented by inter partes review. To institute an inter partes reexamination, the request must have shown there is a reasonable likelihood the petitioner will prevail with respect to at least one claim challenged in the request.

The purpose of the new standard is to eliminate many of the petitions that would not succeed during review before a review is instituted. Under the substantial new question standard, around 95% of requests were being granted (H.R. Rep. No. 112-98 (Part 1), at 47).

Key Dates

Prior to September 16, 2011, the standard was SNQ. The new standard (reasonable likelihood of success) became effective on September 16, 2011. All requests made on or after that date must meet the new standard. On September 16, 2012, inter partes reexamination was replaced by inter partes review.