What is a “substantial new question of patentability” in ex parte reexamination?
A “substantial new question of patentability” is a key requirement for initiating an ex parte reexamination. As stated in MPEP 2209:
“The Office initially determines if ‘a substantial new question of patentability’ (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered.“
This requirement ensures that the USPTO only conducts reexaminations when there are significant new issues to consider regarding the patentability of the claims. It typically involves new prior art or a new interpretation of previously considered prior art that raises questions about the validity of the patent that were not addressed in the original examination.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2209 - Ex Parte Reexamination,
Patent Law,
Patent Procedure