What is the difference between USPTO and court standards in patent validity determinations?

The USPTO and federal courts use different standards when determining patent validity, which can lead to different outcomes. MPEP 2286 explains this distinction: “Specifically, invalidity in a district court must be shown by ‘clear and convincing’ evidence, whereas in the Office, it is sufficient to show unpatentability by a ‘preponderance of evidence.’ Since the ‘clear…

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What is a “substantial new question of patentability” in ex parte reexamination?

A “substantial new question of patentability” is a key requirement for initiating an ex parte reexamination. As stated in MPEP 2209: “The Office initially determines if ‘a substantial new question of patentability’ (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered.“ This requirement ensures that the USPTO…

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What is the significance of submitting prior art under 37 CFR 1.501(a)?

Submitting prior art under 37 CFR 1.501(a) serves several important purposes: Challenging patent validity: It provides a mechanism for bringing potentially invalidating prior art to the attention of the USPTO and the public. Informing the public: These submissions become part of the patent’s file history, which is publicly accessible. Supporting future challenges: The submitted prior…

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Can a biological deposit be replaced after a patent is issued?

Generally, a biological deposit cannot be replaced after a patent is issued. According to MPEP 2407: “A replacement or supplemental deposit made in connection with an application for patent must be made before the patent issues.” This requirement ensures that the correct biological material is available to the public upon patent issuance. However, there are…

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What is a “reexamination of a reexamination”?

A “reexamination of a reexamination” refers to a situation where a new reexamination request is filed on a patent for which a reexamination certificate has already been issued, or when a reexamination certificate is issued on a prior reexamination while a new reexamination is pending. As stated in MPEP § 2695: “This reexamination request is…

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What is the purpose of 37 CFR 1.501(a)?

37 CFR 1.501(a) serves two main purposes: It allows any person to file a written submission of prior art during the enforceability period of a patent. It permits the submission of statements made by the patent owner in federal court or USPTO proceedings regarding claim scope. As stated in the MPEP: 37 CFR 1.501(a) permits…

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