What is the difference between “a substantial new question of patentability” and a “prima facie case of unpatentability”?
The MPEP distinguishes between “a substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” in the context of patent reexamination. Specifically:
“It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.”
This means that an SNQ can exist even if the examiner wouldn’t necessarily reject the claim as anticipated by or obvious in view of the prior art. The MPEP emphasizes that this difference is important, citing In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed. Cir. 1985).
In essence, an SNQ is a lower threshold that asks whether the prior art raises a substantial question about patentability, while a prima facie case of unpatentability requires a stronger showing that the claim is actually unpatentable based on the prior art.
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