How does a prior adverse decision by the USPTO affect the determination of a substantial new question of patentability?

A prior adverse decision by the USPTO can significantly impact the determination of a substantial new question of patentability (SNQ) in a reexamination proceeding. The MPEP provides guidance on this issue: Prior adverse decisions on the same prior art: If the USPTO has previously made an adverse decision on patentability based on the same prior…

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Can “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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What happens if no Substantial New Question of Patentability is raised?

If the supplemental examination certificate states that no Substantial New Question of Patentability (SNQ) is raised, no further action is taken. As stated in MPEP 2817: “If, however, the supplemental examination certificate states that no substantial new question of patentability is raised in the request, then an ex parte reexamination proceeding will not be initiated…

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What happens if no Substantial New Question of Patentability is found?

If the examiner determines that none of the items of information properly submitted as part of the supplemental examination request raise a Substantial New Question of Patentability (SNQ), the Supplemental Examination Certificate will state this finding. The MPEP states: If the examiner determines that none of the items of information properly submitted as part of…

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What happens if no Substantial New Question of patentability is raised in supplemental examination?

If the supplemental examination certificate indicates that no Substantial New Question of patentability (SNQ) is raised, the procedure is as follows: Ex parte reexamination will not be ordered under 35 U.S.C. 257. The supplemental examination certificate will be published as an attachment to the patent. The fee for reexamination will be refunded. As stated in…

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How does the KSR decision affect the determination of a substantial new question of patentability?

The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly alter the standard for determining whether a substantial new question of patentability (SNQ) exists. The MPEP states: “Note that the clarification of the legal standard for determining obviousness under 35 U.S.C. 103…

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How does the USPTO determine if a Substantial New Question of Patentability is raised?

The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability. According to the MPEP: For each item of information, the examiner need only identify…

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How does ex parte reexamination differ when ordered after supplemental examination?

Ex parte reexamination ordered after supplemental examination follows most existing rules for ex parte reexamination, but with two key differences. As outlined in MPEP 2818: “An ex parte reexamination ordered as a result of a supplemental examination proceeding will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the…

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When is an ex parte reexamination ordered after supplemental examination?

An ex parte reexamination is ordered after supplemental examination when the supplemental examination certificate indicates that a Substantial New Question of patentability (SNQ) is raised. According to MPEP 2818: “If the supplemental examination certificate indicates that a SNQ is raised, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257.” This reexamination…

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What is an “earlier concluded examination or review” in the context of patent reexamination?

An “earlier concluded examination or review” is a key concept in determining whether a substantial new question of patentability exists. The MPEP defines it as: The original examination of the application which matured into the patent The examination of the patent in a reissue application that has resulted in a reissue of the patent The…

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