Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (3)
A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:
- The prior art that adds new teaching to at least one claim
- What that new teaching is
- The claims the new teaching is directed to
- That the new teaching was not previously considered or addressed
- That the new teaching is important in deciding claim allowance
As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”
To learn more:
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
To learn more:
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
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.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
To learn more:
MPEP 2242 – Criteria For Deciding Request Filed Under 35 U.S.C. 302 (1)
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
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.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
To learn more:
MPEP 2246 – Decision Ordering Reexamination Under 35 U.S.C. 304 (1)
A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:
- The prior art that adds new teaching to at least one claim
- What that new teaching is
- The claims the new teaching is directed to
- That the new teaching was not previously considered or addressed
- That the new teaching is important in deciding claim allowance
As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”
To learn more:
MPEP 2274 – Appeal Brief (1)
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
To learn more:
MPEP 2600 – Optional Inter Partes Reexamination (1)
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
To learn more:
MPEP 2642 – Criteria For Deciding Request (1)
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
To learn more:
MPEP 2800 – Supplemental Examination (1)
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
To learn more:
MPEP 2816.03 – Content Of The Determination (1)
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
To learn more:
Patent Law (5)
A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:
- The prior art that adds new teaching to at least one claim
- What that new teaching is
- The claims the new teaching is directed to
- That the new teaching was not previously considered or addressed
- That the new teaching is important in deciding claim allowance
As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”
To learn more:
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
To learn more:
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
To learn more:
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
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.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
To learn more:
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
To learn more:
Patent Procedure (5)
A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:
- The prior art that adds new teaching to at least one claim
- What that new teaching is
- The claims the new teaching is directed to
- That the new teaching was not previously considered or addressed
- That the new teaching is important in deciding claim allowance
As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”
To learn more:
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
To learn more:
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
To learn more:
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
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.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
To learn more:
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
To learn more: