United States Government Publishing Office publisher pbl distributor dst United States National Archives and Records Administration Office of the Federal Register author aut Government Organization text government publication eng FR Regulatory Information 2011_register executive 2011-09-24 article Rules and Regulations D09002ee1c7ff4204 D09002ee1c7ff42a7 United States Department of Commerce originator org United States Government Agency or Subagency United States United States Patent and Trademark Office originator org United States Government Agency or Subagency 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. 76 FR 59055 https://www.govinfo.gov/app/details/FR-2011-09-23/2011-24464 2011-24464 FR23SE11-15 RIN 0651-AC61 3510-16-P Docket No. PTO-P-2011-0037 https://www.govinfo.gov/app/details/FR-2011-09-23/2011-24464 https://www.govinfo.gov/content/pkg/FR-2011-09-23/html/2011-24464.htm https://www.govinfo.gov/content/pkg/FR-2011-09-23/pdf/2011-24464.pdf Administrative Practice and Procedure Courts Freedom of Information Inventions and Patents Reporting and Recordkeeping Requirements Small Businesses Biologics 4 p. 59055 59058 76 FR 59055 Title 37 Part 1 37 CFR Part 1 RIN 0651-AC61 Revision of Standard for Granting an Inter Partes Reexamination Request; Federal Register Vol. 76, Issue RULE 2011-24464 DEPARTMENT OF COMMERCE United States Patent and Trademark Office 2011-09-23 2011-09-16 Docket No. PTO-P-2011-0037 3510-16-P 2011-24464 Final rule.

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.

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. By telephone to Kenneth M. Schor, at (571) 272-7710, or Joseph F. Weiss, Jr., at (571) 272-7759; or by mail Administrative Practice and Procedure Courts Freedom of Information Inventions and Patents Reporting and Recordkeeping Requirements Small Businesses Biologics Revision of Standard for Granting Inter Partes Reexamination Request , Vol. 76, no. 185 Office of the Federal Register, National Archives and Records Administration 2011-09-23 continuing daily deposited born digital 244 p. Table of Contents: AE 2.7: GS 4.107: AE 2.106: KF70.A2 https://www.govinfo.gov/app/details/FR-2011-09-23 P0b002ee180e0f8f2 0097-6326 0042-1219 0364-1406 769-004-00000-9 000582072 f:FR23SE11 https://www.govinfo.gov/app/details/FR-2011-09-23 https://www.govinfo.gov/content/pkg/FR-2011-09-23/pdf/FR-2011-09-23.pdf https://www.govinfo.gov/content/pkg/FR-2011-09-23/xml/FR-2011-09-23.xml fdlp 59003 59235 DGPO 2011-09-24 2024-06-04 FR-2011-09-23 machine generated eng FR FR-2011-09-23 76 185