By Jason Rantanen
Some of the most touted changes of the America Invents Act are its modifications to ex parte and inter partes reexaminations, modifications that are intended to fine tune these post-grant review mechanisms. Both ex parte and inter partes reexam requests have been on the rise for the past decade, as shown by the following two graphs:
The above data may paint an overly rosy picture of reexams, however. Especially with respect to inter partes reexams, I am dubious that their rapid growth will continue. One of the AIA's most significant changes to inter partes reexams (inter partes review starting on September 16, 2012) is to raise the standard for successfully initiating a reexam from "a substantial new question of patentability" to "a reasonable likelihood that the requester would prevail." This change took effect when the AIA was enacted, and may lead to a decrease in the number of inter partes reexam requests filed – or at least, a slowing down of the rapid growth in this area.
Inter partes reexam requests may also plateau for another reason. The PTO reports that 70% of the patents involved in inter partes reexams are known to be in litigation. If the initiation of re-exams is largely a function of litigation, there is a soft cap on the number of potential reexams that will be initiated. In addition, AIA limitations on inter partes reexam requests involving patents that are the subject of infringement litigation, although easily avoided with foresight, may have a depressing impact on the number of requests filed.
Source data for reexams: http://www.uspto.gov/patents/stats/Reexamination_Information.jsp
The above graphs are corrected from an earlier version. The original graphs treated the PTO's fiscal year as running from January to December. It runs from October of the preceding year to September of the identified year.