What is the difference between “a substantial new question of patentability” and a “prima facie case of unpatentability”?
The MPEP distinguishes between “a substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” in the context of patent reexamination. Specifically: “It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to…
Read MoreHow do court decisions impact the determination of a substantial new question of patentability?
Court decisions can impact the determination of a substantial new question of patentability (SNQ) or reasonable likelihood that the requester will prevail (RLP), but their influence varies depending on the nature of the decision. The MPEP outlines several scenarios: Final holding of validity: A final court decision that a patent claim is not invalid doesn’t…
Read MoreWhat is the conclusion of a supplemental examination?
According to MPEP 2817, the conclusion of a supplemental examination is marked by the issuance of a certificate. As stated in the MPEP: “35 U.S.C. 257(a) requires that supplemental examination ‘shall conclude with the issuance of a certificate indicating whether the information presented in the request raises a substantial new question of patentability.’” This certificate…
Read MoreHow are claims selected for reexamination in inter partes proceedings?
In inter partes reexamination, claims are selected for reexamination based on whether they raise a substantial new question of patentability (SNQ). The MPEP provides examples of this process: Claims 1 – 3 of the Key patent will be reexamined. … Accordingly, claim 4 will not be reexamined. … Finally, reexamination has not been requested for…
Read MoreHow can a patent owner challenge the decision to grant an ex parte reexamination?
A patent owner has several options to challenge the decision to grant an ex parte reexamination based on a substantial new question of patentability (SNQ): Request reconsideration in the patent owner’s statement under 37 CFR 1.530. Present arguments in the response to the Office action under 37 CFR 1.111(b). Appeal to the Patent Trial and…
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