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 MoreWhat prior art can be used in determining a substantial new question of patentability?
The determination of a substantial new question of patentability or a reasonable likelihood that the requester will prevail can be based on any prior art patents or printed publications. As stated in MPEP 2644: “The determination of whether or not ‘a substantial new question of patentability’ or ‘a reasonable likelihood that the requester will prevail’…
Read MoreHow 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…
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 is the process for denying a request for reexamination?
When a request for reexamination is denied, the following process is followed: The examiner prepares a decision denying the reexamination request if no substantial new question of patentability is found. Form paragraph 22.02 is used as the introductory paragraph in the decision. The examiner responds to each argument based on patents or printed publications. A…
Read MoreWhat are the requirements for a patent owner’s statement in an inter partes reexamination request?
In an inter partes reexamination request, the patent owner’s statement must meet specific requirements as outlined in MPEP 2614: The statement should be clearly identified as a “statement by the patent owner.” It must address each substantial new question of patentability identified in the request. The statement should be limited to 50 pages, excluding evidence…
Read MoreHow are admissions by the patent owner treated in ex parte reexamination?
Admissions by the patent owner can be used in combination with patents or printed publications in ex parte reexamination. The MPEP states: “Admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications in a…
Read MoreCan “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,’…
Read MoreWhat 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…
Read MoreWhat 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…
Read More