How does the MPEP distinguish between different types of reexamination requests?
The MPEP distinguishes between different types of reexamination requests based on the requester’s intent and the claims made. Two main types are discussed: Requests indicating claims are unpatentable over the art: “The example in MPEP § 2247.01 is drafted for the case where the ‘request indicates that Requester considers that Claims 1-2 are unpatentable over…
Read MoreWhat was the standard for granting an inter partes reexamination request?
The standard for granting an inter partes reexamination request changed over time. Initially, under 35 U.S.C. 312(a), the standard was whether “a substantial new question of patentability affecting any claim of the patent concerned is raised by the request,” known as the SNQ standard. However, during the one-year transition period (September 16, 2011 to September…
Read MoreWhat is an SNQ in patent reexamination?
SNQ stands for “Substantial New Question of patentability.” In the context of patent reexamination, an SNQ is a crucial factor in determining whether a reexamination request should be granted. The MPEP § 2255 mentions: “However, if a petition under 37 CFR 1.515(c) is granted after an examiner’s determination that found the request did not raise…
Read MoreCan previously considered art raise a substantial new question of patentability?
Yes, previously considered art can raise a substantial new question of patentability under certain circumstances. The MPEP 2216 clarifies: “The substantial new question of patentability may be based on art previously considered by the Office if the reference is presented in a new light or a different way that escaped review during earlier examination.” This…
Read MoreCan a patent owner or third party requester petition to vacate an order granting reexamination?
Generally, neither the patent owner nor the third party requester can petition to vacate an order granting reexamination based on the substantive determination of a substantial new question of patentability (SNQ) or reasonable likelihood of prevailing (RLP). As stated in MPEP 2646: “A substantive determination by the Director of the Office to institute reexamination pursuant…
Read MoreCan you petition a partial grant of a reexamination request?
Yes, you can petition a partial grant of a reexamination request. MPEP 2248 explains: “If an order granting reexamination includes a determination that the third party requester has not raised a substantial new question of patentability (SNQ) for one claim, but has raised a SNQ for at least one other claim, then third party requester…
Read MoreWhat happens if a substantial new question of patentability is not found in an inter partes reexamination request?
If a substantial new question of patentability is not found in an inter partes reexamination request, the request will be denied. The MPEP 2640 states: “If no substantial new question of patentability is found, the Director will refuse the request and no inter partes reexamination will be ordered.” In this case, the patent owner and…
Read MoreHow does the KSR decision affect the standard for 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 change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states: “The clarification of the legal standard for determining obviousness under 35 U.S.C. 103…
Read MoreWhat information is included in the examiner’s statement for an inter partes reexamination?
The examiner’s statement in an inter partes reexamination contains crucial information about the substantial new question of patentability. According to MPEP 2640: “The statement will generally point out what it considers to be the substantial new question of patentability which presents a reasonable likelihood that the requester will prevail.” The examiner’s statement typically includes: Identification…
Read MoreWhat role does the examiner’s perspective play in determining a substantial new question of patentability?
The examiner’s perspective plays a crucial role in determining a substantial new question of patentability (SNQ) during supplemental examination. According to MPEP 2816.02: “A substantial new question of patentability is present when it is shown that there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether…
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