What types of questions are not considered in ex parte reexamination requests?
Ex parte reexamination requests under 35 U.S.C. 302 are limited to questions of patentability based on prior art patents or printed publications. The MPEP 2216 explicitly states that certain types of questions should not be included in such requests: “Questions relating to grounds of rejection other than those based on prior art patents or printed…
Read MoreCan previously considered art raise a substantial new question of patentability?
Yes, previously considered art can raise a substantial new question of patentability under certain circumstances. The MPEP 2216 clarifies: “The substantial new question of patentability may be based on art previously considered by the Office if the reference is presented in a new light or a different way that escaped review during earlier examination.” This…
Read MoreHow does the KSR decision affect the standard for substantial new question of patentability?
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 change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states: “The clarification of the legal standard for determining obviousness under 35 U.S.C. 103…
Read MoreHow does the Patent and Trademark Office Authorization Act of 2002 affect ex parte reexamination?
The Patent and Trademark Office Authorization Act of 2002 significantly impacted ex parte reexamination by allowing a substantial new question of patentability to be raised based on previously cited or considered art. The MPEP 2216 explains: “After the enactment of the Patent and Trademark Office Authorization Act of 2002 (‘the 2002 Act’), a substantial new…
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