Can a substantial new question of patentability (SNQ) be based on old art in supplemental examination?
Yes, a substantial new question of patentability (SNQ) can be based on old art in supplemental examination, provided it is presented or viewed in a new light compared to previous examinations. The MPEP clarifies: Reliance on old art does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based…
Read MoreWhat is the significance of the “old art” in patent reexamination?
The term “old art” in patent reexamination refers to prior art that was previously cited or considered in an earlier concluded Office examination of the patent. The significance of old art varies depending on when the reexamination was ordered: For reexaminations ordered on or after November 2, 2002: Old art can be the sole basis…
Read MoreWhat are the procedures for determining compliance with Portola Packaging in ongoing reexaminations?
For ongoing reexaminations ordered prior to November 2, 2002, the MPEP outlines specific procedures to determine compliance with the Portola Packaging decision: Confirm that the reexamination order was issued before November 2, 2002. Before making any rejection, identify what prior art was relied upon or cited and discussed in any prior related Office proceeding. Base…
Read MoreHow does the Portola Packaging decision affect patent reexaminations?
The In re Portola Packaging Inc. decision significantly impacted patent reexaminations ordered before November 2, 2002. The key effects are: Old art generally cannot be the sole basis for a rejection in these reexaminations. If prior art was previously relied upon to reject a claim or its relevance to patentability was actually discussed on the…
Read MoreHow does the treatment of “old art” differ in reexaminations ordered before and after November 2, 2002?
The treatment of “old art” in patent reexaminations differs significantly based on whether the reexamination was ordered before or after November 2, 2002: Reexaminations ordered before November 2, 2002: Subject to the Portola Packaging decision Old art generally cannot be the sole basis for a rejection Reexamination based solely on old art is typically not…
Read MoreCan “old art” be used to establish a substantial new question of patentability?
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,’…
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