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’…
Read MoreWhat claims are considered in the determination for patent reexamination?
The determination for patent reexamination is made based on the claims that are in effect at the time of the determination. This is explicitly stated in MPEP 2644: “The determination should be made on the claims in effect at the time the determination is made. 37 CFR 1.923.” This means that examiners consider the most…
Read MoreCan examiners use prior art not cited in the reexamination request?
Yes, examiners are not limited to the prior art cited in the reexamination request. According to MPEP 2644: “The examiner is not limited in making the determination based on the patents and printed publications relied upon in the request. The examiner can find ‘a substantial new question of patentability’ or ‘a reasonable likelihood that the…
Read MoreWhen can an examiner perform additional prior art searches for reexamination?
An examiner can perform additional prior art searches for reexamination under specific circumstances. MPEP 2644 provides guidance on this: “If the examiner believes that additional prior art patents and publications can be readily obtained by searching to supply any deficiencies in the prior art cited in the request, the examiner can perform such an additional…
Read MoreHow does 35 U.S.C. 312(a) affect the determination in inter partes reexamination?
35 U.S.C. 312(a) provides flexibility in the determination process for inter partes reexamination. According to MPEP 2644: “35 U.S.C. 312(a) provides that the determination on a request will be made ‘with or without consideration of other patents or printed publications,’ i.e., other than those relied upon in the request.” This means that the examiner has…
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