How 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,’…
Read MoreWhat is the difference in handling non-responsive submissions before and after final rejection in patent reexamination?
The handling of non-responsive submissions differs significantly before and after final rejection in patent reexamination: Before Final Rejection: Examiners may give the patent owner a new time period to supply an omission in a bona fide response. After Final Rejection: The practice of giving additional time does not apply. As stated in MPEP 2266.01: “The…
Read MoreWhat constitutes a submission not fully responsive to a non-final Office action in a patent reexamination?
A submission is considered not fully responsive to a non-final Office action in a patent reexamination when: A bona fide response to the examiner’s non-final action is filed It’s filed before the expiration of the permissible response period, including extensions But through an apparent oversight or inadvertence, some necessary point has been omitted As stated…
Read MoreCan new issues be raised in ex parte reexamination?
Can new issues be raised in ex parte reexamination? Generally, new issues cannot be raised in ex parte reexamination unless they are based on patents or printed publications. The MPEP 2258 states: “Issues other than those indicated in 37 CFR 1.552(c) will not be resolved in a reexamination proceeding.” However, there are some exceptions: New…
Read MoreHow are new claims numbered in patent reexamination?
Numbering of new claims in patent reexamination follows these rules: Original patent claims retain their numbers, even if canceled. New claims are numbered sequentially starting after the last original patent claim number. If new claims are canceled, their numbers are not reused for other new claims. At the time of the Notice of Intent to…
Read MoreDoes the discovery of potential material fraud halt supplemental examination?
No, the discovery of potential material fraud does not halt the supplemental examination or any resulting reexamination. According to MPEP 2819: “If the Office becomes aware, during the course of supplemental examination or of any reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the…
Read MoreWhat are the mandatory elements of a request for inter partes reexamination?
According to MPEP 2614, a request for inter partes reexamination must include the following mandatory elements: A statement pointing out each substantial new question of patentability based on prior patents and printed publications An identification of every claim for which reexamination is requested A detailed explanation of the pertinence and manner of applying the cited…
Read MoreWhat legal precedents support the application of intervening rights in reexamination?
Several important legal cases have established and reinforced the application of intervening rights in reexamination proceedings. The MPEP 2293 cites the following key cases: Fortel Corp. v. Phone-Mate, Inc., 825 F.2d 1577, 3 USPQ2d 1771 (Fed. Cir. 1987) Kaufman Co., Inc. v. Lantech, Inc., 807 F.2d 970, 1 USPQ2d 1202 (Fed. Cir. 1986) Tennant Co.…
Read MoreWhat additional legal documents should be included with a patent reexamination request?
When submitting a patent reexamination request, certain additional legal documents should be included to provide a comprehensive context for the patent’s current status. According to MPEP 2219: “A copy of any federal court decision, complaint in a pending civil action, or interference or derivation decision should also be submitted.“ These additional documents may include: Federal…
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