What is the significance of the “old art” in patent reexamination?
The term “old art” in patent reexamination refers to prior art that was previously cited or considered in an earlier concluded Office examination of the patent. The significance of old art varies depending on when the reexamination was ordered:
- For reexaminations ordered on or after November 2, 2002: Old art can be the sole basis for a rejection and may still present a substantial new question of patentability (SNQ).
- For reexaminations ordered before November 2, 2002: Old art generally cannot be the sole basis for a rejection, subject to certain exceptions.
As stated in the MPEP: “Old art” was coined by the Federal Circuit in its decision of In re Hiniker, 150 F.3d 1362, 1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998).
This distinction is important for patent examiners and attorneys to understand when considering the validity of patents in reexamination proceedings.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2258.01 - Use Of Previously Cited/Considered Art In Rejections,
Patent Law,
Patent Procedure