RESOLVED, that IPO supports the USPTO establishing a rule for post-grant proceedings to require denial of institution for petitions relying upon the same or substantially the same prior art presented and relied upon in a rejection during original examination of the challenged patent or other proceedings before the Patent Office. IPO supports adding the following new regulations as, 37 C.F.R. § 42.108(d) and 37 C.F.R. § 42.208(e):
“(d) Insufficient grounds. A petition for inter partes review shall not be granted based on prior art that is the same or substantially the same as that previously presented and relied upon 1) in a rejection during prosecution of the challenged patent, or 2) in another proceeding before the Patent Office, unless the petition specifically identifies a factual or legal issue that was misapprehended or overlooked and that establishes a reasonable likelihood that at least one claim challenged in the petition is unpatentable.
“(e) Insufficient grounds. A petition for post-grant review shall not be granted based on prior art that is the same or substantially the same as that previously presented and relied upon 1) in a rejection during prosecution of the challenged patent, or 2) in another proceeding before the Patent Office, unless the petition specifically identifies a factual or legal issue that was misapprehended or overlooked and that establishes that it is more likely than not
that at least one claim challenged in the petition is unpatentable.
