What prior art can be used in determining a substantial new question of patentability?
The determination of a substantial new question of patentability or a reasonable likelihood that the requester will prevail can be based on any prior art patents or printed publications. As stated in MPEP 2644:
“The determination of whether or not ‘a substantial new question of patentability’ or ‘a reasonable likelihood that the requester will prevail’ is present can be based upon any prior art patents or printed publications.”
This means that examiners are not limited to the prior art cited in the request and can use other sources to make their determination.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2644 - Prior Art On Which The Determination Is Based,
Patent Law,
Patent Procedure