What is a substantial new question of patentability in ex parte reexamination?
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…
Read MoreHow is prior art handled in ex parte reexamination after the order is issued?
The handling of prior art in ex parte reexamination after the order is issued is governed by specific rules. According to MPEP 2246: Prior art citations or written statements under 37 CFR 1.501 submitted after the date of the decision on the order are stored until the reexamination is concluded. After the reexamination proceeding is…
Read MoreWhat are the grounds for vacating an ex parte reexamination order?
An ex parte reexamination order may be vacated under rare and specific circumstances. According to MPEP 2246, “appropriate circumstances” for vacating an order under 37 CFR 1.181(a)(3) include: The reexamination order is not based on prior art patents or printed publications All claims of the patent were held invalid by a final federal court decision…
Read MoreWhat is the process for preparing a decision on a request for ex parte reexamination?
The process for preparing a decision on a request for ex parte reexamination involves several steps, as outlined in MPEP 2246: The reexamination file is reviewed in the Central Reexamination Unit (CRU) to ensure it’s ready for examination. The proceeding is assigned to an examiner. The examiner prepares for and sets up a panel review…
Read MoreHow can a patent owner challenge the decision to grant an ex parte reexamination?
A patent owner has several options to challenge the decision to grant an ex parte reexamination based on a substantial new question of patentability (SNQ): Request reconsideration in the patent owner’s statement under 37 CFR 1.530. Present arguments in the response to the Office action under 37 CFR 1.111(b). Appeal to the Patent Trial and…
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