Optional Inter Partes Reexamination [23] forms the subject matter of a new chapter added to the statute. This chapter became effective on November 29, 1999 and applies only to patents issued on patent applications filed after that date. This form of reexamination is intended to be an alternative to the pre-existing form of reexamination which is now to be known as "ex parte reexamination." The hope is that the provision of an inter partes reexamination procedure may encourage third parties to use reexamination procedures for determination of patent validity issues and so reduce the volume of patent litigation in the district courts.
Inter partes reexamination may be requested by any third party, but the real party in interest must be disclosed. Prior art to be considered is confined to prior patents and printed publications. Inter partes reexamination differs from regular reexamination in that a third party requester is permitted to submit comments on official actions and the patentee's responses thereto as long as such comments are filed within 30 days of the patentee's response to the action.
However, it seems doubtful that these provisions will be particularly useful since they are still biased in favor of the patentee. Thus, if the reexamination results in a final rejection of a claim, the patentee may appeal against that rejection first to the USPTO's Board of Patent Appeals and Interferences, and if again unsuccessful may appeal to the Court of Appeals for the Federal Circuit. A third party which requested reexamination may appeal a decision that is favorable to the patent holder only to the Board and will have no possibility of appeal to the Federal Circuit.
Additionally, any party that requests inter partes reexamination will be estopped from challenging at a later time in any civil action any fact that was established during the inter partes reexamination procedure, unless that fact determination is later found to be erroneous based on information that was unavailable at the time of the inter partes reexamination. Finally, the patent owner, but not the third party, may request a court before which litigation relating to the patent involved in the reexamination is pending to stay the litigation and the court must grant that stay unless it "determines that a stay would not serve the interests of justice."
5.1 The Rules Relating to Inter Partes Reexamination
(1) the request for inter partes reexamination must include details of the real party in interest; [25]
(2) once a request has been filed, an examiner has three months in which to determine whether any substantial new question of patentability has been raised; [26]
(3) if the initial determination is that no new question of patentability has been raised, the third party requester may request reconsideration of that determination within one month of it having been made; [27]
(4) the patent owner and individuals associated with the owner are subject to a duty of candor and obligation to disclose to the USPTO all information known to such persons to be material to patentability; [28]
(5) written papers filed by the patentee and the third party must not exceed fifty pages in length, excluding amendments, appendices of claims and reference materials; [29] and
(6) inter partes reexamination will be carried out with special dispatch and extensions of term for response will be granted only if sufficient cause is shown.[30]
[23] American Inventors Protection Act of 1999, Sections 4601-8, adding new sections 311 to 318 of 35 USC.
[24] Federal Register December 7, 2000, pages 76756 et seq.
[25] 37 CFR 1.915(b)(8).
[26] 37 CFR 1.923.
[27] 37 CFR 1.927
[28] 37 CFR 1.933
[29] 37 CFR 1.9.43
[30] 37 CFR 1.937 and 37 CFR 1.956
