[Federal Register Volume 76, Number 185 (Friday, September 23, 2011)]
[Rules and Regulations]
[Pages 59055-59058]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-24464]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2011-0037]
RIN 0651-AC61


Revision of Standard for Granting an Inter Partes Reexamination 
Request

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of practice governing inter partes reexamination to 
implement a transition provision of the Leahy-Smith America Invents Act 
that changes the standard for granting a request for inter partes 
reexamination. The Office is also revising the rules governing inter 
partes reexamination to reflect the termination of inter partes 
reexamination effective September 16, 2012, which is provided for in 
the Act. The Leahy-Smith America Invents Act replaces inter partes 
reexamination by a new inter partes review process effective one year 
after the date of enactment of the Leahy-Smith America Invents Act 
(i.e., September 16, 2012), and provides that any request for inter 
partes reexamination filed on or after September 16, 2011, will not be 
granted unless the information presented in the request establishes 
that there is a reasonable likelihood that the requester will prevail 
with respect to at least one of the claims challenged in the request. 
This replaces the prior standard for granting a request for inter 
partes reexamination that required a substantial new question of 
patentability (SNQ) affecting any claim of the patent raised by the 
request. The Leahy-Smith America Invents Act does not revise the SNQ 
standard for granting an ex parte reexamination request.

DATES: Effective Date: September 23, 2011. Applicability Date: The 
changes in this final rule apply to any request for inter partes 
reexamination filed on or after September 16, 2011, and before 
September 16, 2012.

FOR FURTHER INFORMATION CONTACT: By telephone to Kenneth M. Schor, at 
(571) 272-7710, or Joseph F. Weiss, Jr., at (571) 272-7759; or by mail 
addressed to United States Patent and Trademark Office, Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450, marked to the attention of Kenneth M. Schor and Joseph 
F. Weiss, Jr.

SUPPLEMENTARY INFORMATION: Section 6(a) of the Leahy-Smith America 
Invents Act replaces the inter partes reexamination process that was 
established by the American Inventors Protection Act of 1999 (AIPA) 
(Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-591 (1999)) 
with a new inter partes review process. The replacement of inter partes 
reexamination with inter partes review is effective on September 16, 
2012.
    Section 6(c)(3)(A) of the Leahy-Smith America Invents Act provides 
a transition provision under which a request for inter partes 
reexamination will not be granted unless the information presented in 
the request shows that there is a reasonable likelihood that the 
requester will prevail with respect to at least one of the claims 
challenged in the request.
    The Office is revising the rules of practice to (1) conform the 
standard for granting an inter partes reexamination to the one 
specified in section 6(c)(3)(A) of the Leahy-Smith America Invents Act, 
and (2) provide for termination of inter partes reexamination on 
September 16, 2012, as set forth in section 6(c)(3) of the Leahy-Smith 
America Invents Act.
    The Leahy-Smith America Invents Act also creates a new inter partes 
review process to replace inter partes reexamination. The Office will 
implement the new inter partes review proceedings in a separate rule 
making.

I. Background

    Prior to the enactment of the Leahy-Smith America Invents Act, 35 
U.S.C. 312(a) provided, as to the standard for granting an inter partes 
reexamination request, that ``the Director shall determine whether a 
substantial new question of patentability affecting any claim of the 
patent concerned is raised by the request, with or without 
consideration of other patents or printed publications * * *.'' The 
Office has referred to this standard as ``SNQ.'' The SNQ standard for 
granting an inter partes reexamination request was enacted in the AIPA.
    Section 6(c)(3)(A) of the Leahy-Smith America Invents Act amended 
35 U.S.C. 312 and 313 to delete any reference to the SNQ standard, and 
provide, in place of each deletion, language requiring the information 
presented in a request for inter partes reexamination (filed pursuant 
to 35 U.S.C. 311) to show that there is a reasonable likelihood that 
the requester will prevail with respect to at least one of the claims 
challenged in the request.
    With respect to the reasonable likelihood standard, House Rep. 112-
98 (Part 1), 112th Cong., 1st Sess., provides, in connection with inter 
partes review, the following:

    ``The threshold for initiating an inter partes review is 
elevated from `significant new question of patentability'--a 
standard that currently allows 95% of all requests to be granted--to 
a standard requiring petitioners to present information showing that 
their challenge has a reasonable likelihood of success.'' H.R. Rep. 
No. 112-98 (Part 1), at 47.

    The Office is revising the rules of practice for inter partes 
reexamination in title 37 of the Code of Federal Regulations (CFR) by 
amending Sec. Sec.  1.915, 1.923, 1.927, and 1.931 to delete any 
reference to the SNQ standard for granting reexamination, and insert in 
its place reference to the newly enacted ``reasonable likelihood'' 
standard.
    The SNQ standard for granting ex parte reexamination has not been 
revised by the Leahy-Smith America Invents Act, and accordingly, the 
rules of practice for ex parte reexamination are not being revised.
    When the standards for Office jurisdiction over the proceeding are 
effective: Section 6(c)(3)(B) of the Leahy-Smith America Invents Act 
provides that this transition provision applies to any request for 
inter partes reexamination filed on or after the date of enactment of 
the Leahy-Smith America Invents Act (i.e., September 16, 2011), but 
before the effective date of the inter partes review provisions of the 
Leahy-Smith America Invents Act (i.e., September 16, 2012). Section 
6(c)(3)(C) of the Leahy-Smith America Invents Act

[[Page 59056]]

provides that the inter partes reexamination provisions of 35 U.S.C. 
chapter 31, as amended by section 6(c)(3) of the Leahy-Smith America 
Invents Act, shall apply to requests for inter partes reexamination 
filed before September 16, 2012. Accordingly, for inter partes 
reexamination, the following applies:
    1. Inter partes reexamination requests filed prior to September 16, 
2011: With respect to any inter partes reexamination proceeding for 
which a request has been filed prior to September 16, 2011, the SNQ 
standard is applicable in determining whether the request for inter 
partes reexamination will be granted. If reexamination is ordered based 
on the SNQ standard, then the SNQ standard will apply throughout the 
reexamination proceeding, even after September 16, 2011, or September 
16, 2012.
    2. Inter partes reexamination requests filed on or after September 
16, 2011, but before September 16, 2012: With respect to any inter 
partes reexamination proceeding for which a request is filed on or 
after September 16, 2011, the ``reasonable likelihood'' standard is 
applicable in determining whether the request for inter partes 
reexamination will be granted. If reexamination is ordered based on the 
``reasonable likelihood'' standard, then the ``reasonable likelihood'' 
standard will apply throughout the reexamination proceeding, even after 
September 16, 2012. In addition, the inter partes reexamination 
provisions of 35 U.S.C. chapter 31, as amended by section 6(c)(3) of 
the Leahy-Smith America Invents Act, and Sec. Sec.  1.902-1.997 and 
41.60-41.81 of title 37 CFR, effective on September 16, 2011, will 
apply throughout the reexamination, even after September 16, 2012.
    3. Inter partes reexamination requests filed on or after September 
16, 2012: With respect to any inter partes reexamination proceeding for 
which a request is submitted on or after September 16, 2012, the Office 
cannot grant, or even accord a filing date to, the request. The inter 
partes reexamination provisions of 35 U.S.C. chapter 31 are not 
available for any request for inter partes reexamination submitted on 
or after September 16, 2012. In other words, the Office will no longer 
entertain original requests for inter partes reexamination on or after 
September 16, 2012, but instead will accept petitions to conduct inter 
partes review.

II. Section-by-Section Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, Subpart H, is 
amended as follows:
    Section 1.913: The title of Sec.  1.913 is revised to add ``, and 
time for filing, a'' before ``request for inter partes reexamination.'' 
The sole existing paragraph of Sec.  1.913 is revised to add ``(a)'' 
before the paragraph, and to add after ``Except as provided for in 
Sec.  1.907 and in paragraph (b) of this section.'' New paragraph (b) 
is added to explicitly provide that any request for an inter partes 
reexamination that is submitted on or after September 16, 2012, will 
not be accorded a filing date and that any such request will not be 
granted.
    Section 1.915: Section 1.915 is amended by revising paragraph 
(b)(2) to replace the SNQ standard for granting reexamination with the 
``reasonable likelihood'' standard. After ``citation of the patents and 
printed publications which are presented to provide,'' the language ``a 
showing that there is a reasonable likelihood that the requester will 
prevail with respect to at least one of the claims challenged in the 
request'' is added in place of ``a substantial new question of 
patentability.''
    Section 1.915 is additionally amended by revising paragraph (b)(3) 
to replace the SNQ standard for granting reexamination with the 
``reasonable likelihood'' standard:

    A statement pointing out, based on the cited patents and printed 
publications, each showing of a reasonable likelihood that the 
requester will prevail with respect to at least one of the claims 
challenged in the request, and a detailed explanation of the 
pertinency and manner of applying the patents and printed 
publications to every claim for which reexamination is requested.

    The amended language replaces the prior language:

    A statement pointing out each substantial new question of 
patentability based on the cited patents and printed publications, 
and a detailed explanation of the pertinency and manner of applying 
the patents and printed publications to every claim for which 
reexamination is requested.

    Section 1.923: The first sentence of Sec.  1.923 is amended to 
replace the SNQ standard for granting reexamination with the 
``reasonable likelihood'' standard:

    Within three months following the filing date of a request for 
inter partes reexamination under Sec.  1.915, the examiner will 
consider the request and determine whether or not the request and 
the prior art establish a reasonable likelihood that the requester 
will prevail with respect to at least one of the claims challenged 
in the request.

    The amended language replaces the prior language:

    Within three months following the filing date of a request for 
inter partes reexamination under Sec.  1.915, the examiner will 
consider the request and determine whether or not a substantial new 
question of patentability affecting any claim of the patent is 
raised by the request and the prior art citation.

    The last sentence of Sec.  1.923 is amended to replace the SNQ 
standard for granting reexamination with the ``reasonable likelihood'' 
standard:

    If the examiner determines that the request has not established 
a reasonable likelihood that the requester will prevail with respect 
to at least one of the challenged claims, the examiner shall refuse 
the request and shall not order inter partes reexamination.

    The amended language replaces the prior language:

    If the examiner determines that no substantial new question of 
patentability is present, the examiner shall refuse the request and 
shall not order inter partes reexamination.

    Section 1.927: The last sentence of Sec.  1.927 is amended by 
deleting ``no substantial new question of patentability has been 
raised'' after ``[i]f no petition is timely filed or if the decision on 
petition affirms that.'' The language ``a reasonable likelihood that 
the requester will prevail with respect to at least one of the claims 
challenged in the request has not been established'' is added in its 
place.
    Section 1.931: Section 1.931 is amended by revising paragraph (a) 
to replace the SNQ standard for granting reexamination with the 
``reasonable likelihood'' standard:

    If it is found that there is a reasonable likelihood that the 
requester will prevail with respect to at least one of the claims 
challenged in the request, the determination will include an order 
for inter partes reexamination of the patent for resolution of the 
question of whether the requester will prevail.

    The amended language replaces the prior language:

    If a substantial new question of patentability is found, the 
determination will include an order for inter partes reexamination 
of the patent for resolution of the question.

III. Rule Making Considerations

    A. Administrative Procedure Act (APA): This final rule merely 
revises the rules governing inter partes reexamination to implement the 
provisions in section 6(c)(3) of the Leahy-Smith America Invents Act, 
which include: (1) A change to the standard for granting a request for 
inter

[[Page 59057]]

partes reexamination; and (2) the termination of inter partes 
reexamination on September 16, 2012. Therefore, the changes in this 
final rule are merely interpretative. See Nat'l Org. of Veterans' 
Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 
2001). Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), and 
thirty-day advance publication is not required pursuant to 5 U.S.C. 
553(d) or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 
1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment rule making for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice.'') (quoting 5 U.S.C. 
553(b)(A)).
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    C. Executive Order 13132 (Federalism): This rule making does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    D. Executive Order 12866 (Regulatory Planning and Review): This 
rule making has been determined not to be significant for purposes of 
Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order 
13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
    E. Executive Order 13175 (Tribal Consultation): This rule making 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
government; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    F. Executive Order 13211 (Energy Effect): This rule making is not a 
significant energy action under Executive Order 13211 because this rule 
making is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    G. Executive Order 12988 (Civil Justice Reform): This rule making 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    H. Executive Order 13045 (Protection of Children): This rule making 
is not an economically significant rule and does not concern an 
environmental risk to health or safety that may disproportionately 
affect children under Executive Order 13045 (Apr. 21, 1997).
    I. Executive Order 12630 (Taking of Private Property): This rule 
making will not effect a taking of private property or otherwise have 
taking implications under Executive Order 12630 (Mar. 15, 1988).
    J. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the U.S. 
Senate, the U.S. House of Representatives, and the Comptroller General 
of the Government Accountability Office. This final rule merely revises 
the rules governing inter partes reexamination to conform them to the 
change to the standard for granting a request for inter partes 
reexamination set forth in section 6(c)(3) of the Leahy-Smith America 
Invents Act, and the September 16, 2012 date of termination of inter 
partes reexamination provided for in section 6(c)(3) of the Leahy-Smith 
America Invents Act. The change in this rule making is not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this rule making is not expected to result in a ``major 
rule'' as defined in 5 U.S.C. 804(2).
    K. Unfunded Mandates Reform Act of 1995: The changes in this rule 
will not result in the expenditure by State, local, and tribal 
governments, in the aggregate, or by the private sector, of 100 million 
dollars or more in any one year, and it will not significantly or 
uniquely affect small governments. Therefore, no actions are necessary 
under the provisions of the Unfunded Mandates Reform Act of 1995. See 2 
U.S.C. 1501 et seq.
    L. National Environmental Policy Act: The rule making will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1968. See 42 U.S.C. 4321 et seq.
    M. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are inapplicable, because 
this rule making does not involve the use of technical standards.
    N. Paperwork Reduction Act: This rule making involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this rule making has been reviewed and previously approved by OMB under 
OMB control number 0651-0064. This final rule merely revises the rules 
governing inter partes reexamination to conform them to the change to 
the standard for granting a request for inter partes reexamination set 
forth in the transition provisions of section 6(c)(3) of the Leahy-
Smith America Invents Act, and the September 16, 2012 date of 
termination of inter partes reexamination provided for in section 
6(c)(3) of the Leahy-Smith America Invents Act. This rule making does 
not impose additional collection requirements under the Paperwork 
Reduction Act. Therefore, the United States Patent and Trademark Office 
is not submitting an information collection package to OMB for its 
review and approval because the changes in this rule making will not 
affect the information collection requirements associated with the 
information collection under OMB control number 0651-0064.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses, and Biologics.
    For the reasons set forth in the preamble, 37 CFR part 1 is amended 
as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. Section 1.913 is revised to read as follows:

[[Page 59058]]

Sec.  1.913  Persons eligible to file, and time for filing, a request 
for inter partes reexamination.

    (a) Except as provided for in Sec.  1.907 and in paragraph (b) of 
this section, any person other than the patent owner or its privies 
may, at any time during the period of enforceability of a patent which 
issued from an original application filed in the United States on or 
after November 29, 1999, file a request for inter partes reexamination 
by the Office of any claim of the patent on the basis of prior art 
patents or printed publications cited under Sec.  1.501.
    (b) Any request for an inter partes reexamination submitted on or 
after September 16, 2012, will not be accorded a filing date, and any 
such request will not be granted.

0
3. Section 1.915 is amended by revising paragraphs (b)(2) and (b)(3), 
to read as follows:


Sec.  1.915  Content of request for inter partes reexamination.

* * * * *
    (b) * * *
    (2) A citation of the patents and printed publications which are 
presented to provide a showing that there is a reasonable likelihood 
that the requester will prevail with respect to at least one of the 
claims challenged in the request.
    (3) A statement pointing out, based on the cited patents and 
printed publications, each showing of a reasonable likelihood that the 
requester will prevail with respect to at least one of the claims 
challenged in the request, and a detailed explanation of the pertinency 
and manner of applying the patents and printed publications to every 
claim for which reexamination is requested.
* * * * *
0
4. Section 1.923 is revised to read as follows:


Sec.  1.923  Examiner's determination on the request for inter partes 
reexamination.

    Within three months following the filing date of a request for 
inter partes reexamination under Sec.  1.915, the examiner will 
consider the request and determine whether or not the request and the 
prior art establish a reasonable likelihood that the requester will 
prevail with respect to at least one of the claims challenged in the 
request. The examiner's determination will be based on the claims in 
effect at the time of the determination, will become a part of the 
official file of the patent, and will be mailed to the patent owner at 
the address as provided for in Sec.  1.33(c) and to the third party 
requester. If the examiner determines that the request has not 
established a reasonable likelihood that the requester will prevail 
with respect to at least one of the challenged claims, the examiner 
shall refuse the request and shall not order inter partes 
reexamination.

0
5. Section 1.927 is revised to read as follows:


Sec.  1.927  Petition to review refusal to order inter partes 
reexamination.

    The third party requester may seek review by a petition to the 
Director under Sec.  1.181 within one month of the mailing date of the 
examiner's determination refusing to order inter partes reexamination. 
Any such petition must comply with Sec.  1.181(b). If no petition is 
timely filed or if the decision on petition affirms that a reasonable 
likelihood that the requester will prevail with respect to at least one 
of the claims challenged in the request has not been established, the 
determination shall be final and nonappealable.

0
6. Section 1.931 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.931  Order for inter partes reexamination.

    (a) If it is found that there is a reasonable likelihood that the 
requester will prevail with respect to at least one of the claims 
challenged in the request, the determination will include an order for 
inter partes reexamination of the patent for resolution of the question 
of whether the requester will prevail.
* * * * *

    Dated: September 16, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-24464 Filed 9-22-11; 8:45 am]
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