What is a substantial new question of patentability (SNQ) in patent reexamination?
A substantial new question of patentability (SNQ) is a crucial concept in patent reexamination. According to MPEP 2242: “If the prior art patents and/or printed publications raise a substantial new question of patentability as to at least one claim of the patent, then a substantial new question of patentability as to the patent is present,…
Read MoreWhat 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…
Read MoreWhat is the standard for granting inter partes reexamination?
The granting of an inter partes reexamination request is based on a specific standard set by law. The MPEP 2609 states: The standard for granting reexamination (see 35 U.S.C. 312(a)) must be met for reexamination to be ordered; This standard, as defined in 35 U.S.C. 312(a), requires that the request must raise a substantial new…
Read MoreWhat happens if a substantial new question of patentability (SNQ) is found during supplemental examination?
If a substantial new question of patentability (SNQ) is found during supplemental examination, the following occurs: Reexamination will be ordered under 35 U.S.C. 257. The Office may, at its discretion, reexamine claims other than those for which supplemental examination was originally requested. As stated in MPEP 2816.01: “If the examiner determines that a SNQ affecting…
Read MoreWhat is the significance of the “old art” in patent reexamination?
The term “old art” in patent reexamination refers to prior art that was previously cited or considered in an earlier concluded Office examination of the patent. The significance of old art varies depending on when the reexamination was ordered: For reexaminations ordered on or after November 2, 2002: Old art can be the sole basis…
Read MoreHow can a patent owner seek review of a Substantial New Question of Patentability (SNQ) determination?
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process: “To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the…
Read MoreWhat is the procedure for handling a reexamination request filed during a pending reexamination?
What is the procedure for handling a reexamination request filed during a pending reexamination? When a reexamination request is filed during a pending reexamination, the following procedure is followed: The new request is assigned to the examiner of the pending reexamination. The examiner determines if a substantial new question of patentability is raised. If a…
Read MoreWhat is the “Reasons Document” in Supplemental Examination?
The “Reasons Document,” officially called the “Reasons for Substantial New Question of Patentability Determination,” is a document that accompanies the Supplemental Examination Certificate. It provides a detailed explanation of why each item of information submitted in a supplemental examination request does or does not raise a substantial new question of patentability (SNQ). The MPEP states:…
Read MoreHow does the “reasonable likelihood that the requester will prevail” standard differ from the SNQ standard?
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard. According to the MPEP, which cites House Rep. 112-98: “The threshold for initiating an inter partes review…
Read MoreWhat is the purpose of the “substantial new question of patentability” requirement in reexamination?
The “substantial new question of patentability” requirement serves to protect patentees from unnecessary reexaminations. MPEP 2244 explains: “The substantial new question of patentability requirement protects patentees from having to respond to, or participate in unjustified reexaminations.” This requirement ensures that reexaminations are only conducted when there is a legitimate basis for questioning the validity of…
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