How does a prior adverse decision by the USPTO affect the determination of a substantial new question of patentability?

A prior adverse decision by the USPTO can significantly impact the determination of a substantial new question of patentability (SNQ) in a reexamination proceeding. The MPEP provides guidance on this issue:

• Prior adverse decisions on the same prior art: If the USPTO has previously made an adverse decision on patentability based on the same prior art, it usually means that an SNQ is present.
• Abandoned reissue applications: An adverse decision from an abandoned reissue application, where the claim was rejected without being disclaimed, can indicate the presence of an SNQ.
• Prior adverse decisions on other grounds: If there was a prior adverse final decision by the Director of the USPTO or the Patent Trial and Appeal Board on a reissue application for the same patent, it will be considered when determining if an SNQ exists. However, if this decision was based on grounds other than patents or printed publications, it won’t be considered for the SNQ determination.

It’s important to note that each case is evaluated individually, and the specific circumstances of the prior adverse decision will be taken into account when determining whether an SNQ exists.

To learn more:

• prior adverse decision
• substantial new question of patentability
• SNQ
• patent reexamination
• USPTO