What 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 MoreWhat notices are issued regarding compliance with Portola Packaging in reexaminations?
The MPEP outlines specific notices that should be issued regarding compliance with the Portola Packaging decision in reexaminations ordered before November 2, 2002: If the prosecution of an ongoing reexamination is terminated to comply with Portola Packaging, the Notice of Intent to Issue Ex Parte Reexamination Certificate should state:“The prosecution of this reexamination is terminated…
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 MoreHow are unusual fact patterns handled in patent reexaminations with respect to Portola Packaging?
The MPEP acknowledges that cases with unusual fact patterns may occur in patent reexaminations, particularly when considering the Portola Packaging decision. In such cases: The reexamination should be brought to the attention of the Central Reexamination Unit (CRU) or Technology Center (TC) Director. The CRU or TC Director will determine the appropriate action to be…
Read MoreHow did the Patent and Trademark Office Authorization Act of 2002 change reexamination procedures?
The Patent and Trademark Office Authorization Act of 2002, specifically Public Law 107-273, Section 13105, enacted on November 2, 2002, significantly changed reexamination procedures by amending 35 U.S.C. 303(a) and 312(a). The key change was: “The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed…
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