What is the difference between a “substantial new question of patentability” and a “prima facie case of unpatentability”?
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…
Read MoreCan 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 a substantial new question of patentability in inter partes reexamination?
A substantial new question of patentability (SNQ) is a key criterion for granting inter partes reexamination requests filed before September 16, 2011. It refers to a question that: Has not been raised in a previous examination of the patent Is likely to be considered important by a reasonable examiner in determining patentability Is based on…
Read MoreHow should patent owners submit amendments in a Reexamination of a Reexamination?
When submitting amendments in a Reexamination of a Reexamination, patent owners must present changes as if the modifications from the previous reexamination certificate are part of the original patent. MPEP 2295 states: “Any amendment to the claims (or specification) of the reexamination proceeding must be presented as if the changes made to the patent text…
Read MoreWhat is the subjective inquiry in best mode assessment?
The subjective inquiry is the first component of the best mode analysis, as described in MPEP 2165.03. It focuses on the inventor’s state of mind at the time of filing the patent application. Specifically, the examiner must: “Determine whether, at the time the application was filed, the inventor knew of a mode of practicing the…
Read MoreWhat role do structural similarities play in determining obviousness of species claims?
Structural similarities between the prior art genus or species and the claimed species play a significant role in obviousness determinations. As stated in MPEP 2144.08: “If such a prior art species or subgenus is structurally similar to that claimed, its disclosure may provide a reason for one of ordinary skill in the art to choose…
Read MoreHow does streamlined eligibility analysis differ from full eligibility analysis?
Streamlined eligibility analysis is a simplified approach for assessing patent eligibility when a claim’s eligibility is self-evident. The main differences between streamlined and full eligibility analysis are: Complexity: Streamlined analysis is simpler and faster than the full analysis. Applicability: Streamlined analysis is used for claims that clearly do not tie up judicial exceptions, while full…
Read MoreWhat is the streamlined eligibility analysis in patent examination?
The streamlined eligibility analysis (Pathway A) is an efficient method used by patent examiners when the eligibility of a claim is self-evident, particularly when the claim clearly improves a technology or computer functionality. As stated in MPEP 2106.06: “For purposes of efficiency in examination, examiners may use a streamlined eligibility analysis (Pathway A) when the…
Read MoreHow does streamlined analysis differ from the full Alice/Mayo test?
How does streamlined analysis differ from the full Alice/Mayo test? The streamlined analysis differs from the full Alice/Mayo test in several key ways: Scope: Streamlined analysis is a quick assessment, while the Alice/Mayo test is a more comprehensive evaluation. Application: Streamlined analysis is used for claims that clearly do not tie up a judicial exception,…
Read MoreWhat is the standard for granting inter partes reexamination?
The granting of an inter partes reexamination request is based on a specific standard set by law. The MPEP 2609 states: The standard for granting reexamination (see 35 U.S.C. 312(a)) must be met for reexamination to be ordered; This standard, as defined in 35 U.S.C. 312(a), requires that the request must raise a substantial new…
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