What are the procedures for determining compliance with Portola Packaging in ongoing reexaminations?

For ongoing reexaminations ordered prior to November 2, 2002, the MPEP outlines specific procedures to determine compliance with the Portola Packaging decision:

1. Confirm that the reexamination order was issued before November 2, 2002.
2. Before making any rejection, identify what prior art was relied upon or cited and discussed in any prior related Office proceeding.
3. Base rejections at least partly on prior art that was neither relied upon nor cited and discussed in any prior related Office proceeding.
4. Withdraw any rejections based solely on prior art previously relied upon or cited and discussed.
5. Terminate the reexamination if the only remaining rejections are entirely based on such prior art.

The MPEP states: “The Director of the USPTO may conduct a search for new art to determine whether a substantial new question of patentability exists prior to terminating the prosecution of any ongoing reexamination proceeding.”

These procedures ensure that reexaminations comply with the Portola Packaging decision while allowing for the consideration of new art or new interpretations of previously considered art.

To learn more:

• Portola Packaging
• reexamination procedures
• old art
• substantial new question of patentability