What is the basis for determining a “substantial new question of patentability” in ex parte reexamination?
The determination of a “substantial new question of patentability” under 35 U.S.C. 303(a) can be based on any prior art patents or printed publications. The MPEP states:
“The determination under 35 U.S.C. 303(a) whether or not ‘a substantial new question of patentability’ is present can be based upon any prior art patents or printed publications.”
This means that examiners have broad discretion in considering prior art when making this determination.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2244 - Prior Art On Which The Determination Is Based In Requests Filed Under 35 U.S.C. 302,
Patent Law,
Patent Procedure