What is considered when determining if a substantial new question of patentability exists?
The determination of whether a substantial new question of patentability exists is based on the patent claims in effect at the time of the determination. The MPEP states: “The patent claims in effect at the time of the determination will be the basis for deciding whether a substantial new question of patentability has been raised.”…
Read MoreWhat is the criteria for making a determination in a supplemental examination request?
The criteria for making a determination on a supplemental examination request is whether any of the items of information submitted raise a substantial new question of patentability (SNQ) affecting at least one claim of the patent. This is stated in 35 U.S.C. 257(a). The MPEP states: The SNQ standard in supplemental examination proceedings is identical…
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 MoreWhat claims are considered when deciding on an inter partes reexamination request?
The claims considered when deciding on an inter partes reexamination request are those in effect at the time of the determination. According to MPEP 2643, “The claims of the patent in effect at the time of the determination will be the basis for deciding whether ‘a substantial new question of patentability’ or ‘a reasonable likelihood…
Read MoreWhat claims are considered when deciding a request for ex parte reexamination under 35 U.S.C. 302?
When deciding a request for ex parte reexamination under 35 U.S.C. 302, the claims considered are those in effect at the time of the determination. As stated in the MPEP: The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of…
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…
Read MoreWhat is the basis for determining a “substantial new question of patentability” in ex parte reexamination?
The determination of a “substantial new question of patentability” under 35 U.S.C. 303(a) can be based on any prior art patents or printed publications. The MPEP states: “The determination under 35 U.S.C. 303(a) whether or not ‘a substantial new question of patentability’ is present can be based upon any prior art patents or printed publications.”…
Read MoreCan admissions be used as a basis for establishing a substantial new question of patentability in ex parte reexamination?
Admissions, per se, cannot be the sole basis for establishing a substantial new question of patentability in ex parte reexamination. However, admissions can be used in combination with prior art patents or printed publications. The MPEP states: “An admission, per se, may not be the basis for establishing a substantial new question of patentability. However,…
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