Question 1

What is the role of the Central Reexamination Unit (CRU) technical support staff in inter partes reexamination?

Accepted Answer

The Central Reexamination Unit (CRU) technical support staff plays a crucial role in the clerical handling and processing of inter partes reexamination cases. Their responsibilities include:

Performing all PALM (Patent Application Locating and Monitoring) matters for the case
Processing and mailing decisions and Office actions to the patent owner and third party requester(s)
Mailing copies of references as needed
Completing transmittal forms
Coordinating activities with examiners, CRU Supervisory Patent Reexamination Specialists (SPRSs), Technology Center (TC) Quality Assurance Specialists (QASs), and paralegals

As stated in MPEP 2670: "Central Reexamination Unit (CRU) technical support staff will carry out clerical handling and processing of inter partes reexamination cases."

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Question 2

What should examiners consider when performing an interference search for applications with different effective filing dates?

Accepted Answer

Patent examiners must be particularly careful when conducting interference searches for applications that may have claims with different effective filing dates. The MPEP 2304.01(a) provides guidance on this matter:

"Examiners are reminded that some applications, such as continuation-in-part applications, may contain claims entitled to different effective filing dates (see MPEP §§ 2133.01 and 2152.01), and that each effective filing date should be considered when performing the interference search."

This means that examiners must consider the possibility of interfering subject matter based on multiple dates, which may affect the scope of prior art and potential interferences.

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Question 3

Can I get a refund of the search fee and excess claims fee by abandoning my application?

russ.krajec@blueironip.com · Accepted Answer

Yes, it is possible to obtain a refund of the search fee and excess claims fee by abandoning your application, but specific conditions must be met. According to MPEP 711.01, Section III:

As provided in 37 CFR 1.138(d), refund of the search fee and excess claims fee paid in an application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) on or after December 8, 2004 may be obtained by submitting a petition and declaration of express abandonment before an examination has been made of the application.

Key points to remember:

The petition must be filed before any examination has been made of the application
The refund request should be filed with the declaration of express abandonment or within two months from the filing date of the declaration
The two-month period is not extendable

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37 CFR 1.138(d)

Question 4

Can "old art" be used to establish a substantial new question of patentability?

Accepted Answer

Yes, "old art" (prior art previously cited or considered by the USPTO) can be used to establish a substantial new question of patentability (SNQ) in certain circumstances. The MPEP states:

"For any reexamination ordered on or after November 2, 2002, the effective date of the statutory revision, reliance on previously cited/considered art, i.e., 'old art,' does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art."

However, the use of old art to establish an SNQ requires a fact-specific inquiry on a case-by-case basis. The old art must be presented or viewed in a new light or different way compared to its use in earlier examinations. This could involve new arguments or interpretations presented in the reexamination request.

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Question 5

Can admissions be used as a basis for establishing a substantial new question of patentability in ex parte reexamination?

Accepted Answer

Admissions, per se, cannot be the sole basis for establishing a substantial new question of patentability in ex parte reexamination. However, admissions can be used in combination with prior art patents or printed publications. The MPEP states:

"An admission, per se, may not be the basis for establishing a substantial new question of patentability. However, an admission by the patent owner of record in the file or in a court record may be utilized in combination with a patent or printed publication."

It's important to note that:

Admissions can be used to determine the scope and content of prior art in conjunction with patents and printed publications
Admissions must stand on their own; supplementary information defining the admission is not allowed
Third parties cannot submit admissions made by the patent owner outside the file record or court record, unless they have been entered into a court record

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Question 6

What is the basis for determining a "substantial new question of patentability" in ex parte reexamination?

Accepted Answer

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.

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Question 7

What role does the examiner's perspective play in determining a substantial new question of patentability?

Accepted Answer

The examiner's perspective plays a crucial role in determining a substantial new question of patentability (SNQ) during supplemental examination. According to MPEP 2816.02:

"A substantial new question of patentability is present when it is shown that there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable."

This statement highlights several key aspects:

The standard is based on a "reasonable examiner's" perspective
The information must be likely to be considered "important" in the patentability decision
The threshold is "substantial likelihood," not absolute certainty

Examiners must put themselves in the shoes of the original examiner and consider whether the new information would have been important enough to change the patentability determination. This approach ensures a consistent and fair evaluation of supplemental examination requests.

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Question 8

How does the KSR decision affect the determination of a substantial new question of patentability?

Accepted Answer

The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly alter the standard for determining whether a substantial new question of patentability (SNQ) exists. The MPEP states:

"Note that the clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists."

However, while KSR doesn't change the SNQ standard itself, it may indirectly affect how examiners evaluate prior art when considering whether an SNQ exists, particularly in cases involving obviousness questions.

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Question 9

What happens if a substantial new question of patentability is not found in an inter partes reexamination request?

Accepted Answer

If a substantial new question of patentability is not found in an inter partes reexamination request, the request will be denied. The MPEP 2640 states:

"If no substantial new question of patentability is found, the Director will refuse the request and no inter partes reexamination will be ordered."

In this case, the patent owner and the third party requester will be notified of the decision, and the reexamination proceeding will not be initiated. The third party requester may have the option to seek review of this decision through appropriate legal channels.

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Question 10

What happens if no Substantial New Question of Patentability is found?

Accepted Answer

If the examiner determines that none of the items of information properly submitted as part of the supplemental examination request raise a Substantial New Question of Patentability (SNQ), the Supplemental Examination Certificate will state this finding.

The MPEP states: If the examiner determines that none of the items of information properly submitted as part of the request raise a SNQ, the supplemental examination certificate will state that no SNQ is raised in the request for supplemental examination, and will refer to the Reasons for Substantial New Question of Patentability Determination (i.e., "the reasons document"). The reasons document will explain why each item of information did not raise an SNQ for every claim to which that item was applied in the request.

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What is the role of the Central Reexamination Unit (CRU) technical support staff in inter partes reexamination?

What should examiners consider when performing an interference search for applications with different effective filing dates?

Can I get a refund of the search fee and excess claims fee by abandoning my application?

Can “old art” be used to establish a substantial new question of patentability?

Can admissions be used as a basis for establishing a substantial new question of patentability in ex parte reexamination?

What is the basis for determining a “substantial new question of patentability” in ex parte reexamination?

What role does the examiner’s perspective play in determining a substantial new question of patentability?

How does the KSR decision affect the determination of a substantial new question of patentability?

What happens if a substantial new question of patentability is not found in an inter partes reexamination request?

What happens if no Substantial New Question of Patentability is found?