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…
Read MoreWhat is the standard for granting an inter partes reexamination request?
The standard for granting an inter partes reexamination request depends on when the request was filed: For requests filed prior to September 16, 2011: A substantial new question of patentability must be raised. For requests filed on or after September 16, 2011: There must be a reasonable likelihood that the requester will prevail with respect…
Read MoreWhat is the timeframe for the Director to make a determination on an inter partes reexamination request?
According to 35 U.S.C. 312, the Director must make a determination on an inter partes reexamination request within 3 months of the filing date. The MPEP states: “35 U.S.C. 312 requires that the Director of the Office determine whether or not a ‘substantial new question of patentability’ affecting any claim of the patent of which…
Read MoreHow 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…
Read MoreHow are second or subsequent reexamination requests handled during a pending reexamination?
When a second or subsequent request for ex parte reexamination is filed under 35 U.S.C. 302 while a first ex parte reexamination is pending, the USPTO considers whether the new request raises a different substantial new question of patentability. The MPEP states: “If the requester includes in the second or subsequent request prior art which…
Read MoreCan the examiner consider information beyond what the patent owner specified for each claim?
Yes, the examiner has discretion to consider information beyond what the patent owner specified for each claim in a supplemental examination request. According to MPEP 2816.01: “The examiner, however, has the discretion to determine whether any of the items of information properly submitted with the request raises a SNQ affecting any of the claims for…
Read MoreWhen is the ex parte reexamination fee refunded in a supplemental examination proceeding?
The ex parte reexamination fee paid as part of a supplemental examination request may be refunded under specific circumstances. According to the MPEP: “The fee under 37 CFR 1.20(k)(2) for ex parte reexamination ordered as a result of a supplemental examination proceeding will be refunded, in accordance with 37 CFR 1.610(d), if the supplemental examination…
Read MoreHow does concurrent litigation affect ex parte reexamination proceedings?
Concurrent litigation can significantly impact ex parte reexamination proceedings. According to MPEP 2286, when a request for ex parte reexamination is filed as a result of a court order or an agreement sanctioned by a court, or when litigation is stayed for the filing of a reexamination request, “all aspects of the proceeding will be…
Read MoreWhat 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…
Read MoreWhat 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…
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