Can a requester challenge a basis for granting reexamination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

While a requester can petition against a denial of reexamination, challenging a basis for granting reexamination is more limited. According to MPEP 2648:

“37 CFR 1.927 applies only to challenging a basis for denying of reexamination; it does not apply to challenging a basis for granting of reexamination.”

However, there is a specific circumstance where a requester can challenge part of a granted reexamination:

“If an order granting reexamination includes a determination that one or more alleged SNQs or RLPs did not raise a SNQ or RLP, respectively, the third party requester may (within one month of the mailing date of the order) file a petition under 37 CFR 1.927 for reconsideration of the determination.”

This means a requester can only challenge the part of a granted reexamination that determines certain questions did not raise a substantial new question of patentability (SNQ) or reasonable likelihood of prevailing (RLP).