How did the Patent and Trademark Office Authorization Act of 2002 change reexamination procedures?

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.

The Patent and Trademark Office Authorization Act of 2002, specifically Public Law 107-273, Section 13105, enacted on November 2, 2002, significantly changed reexamination procedures by amending 35 U.S.C. 303(a) and 312(a). The key change was:

“The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.”

This amendment effectively overruled the previous In re Portola Packaging Inc. decision for reexaminations ordered on or after November 2, 2002. As a result:

• Reexaminations ordered on or after November 2, 2002, can be based solely on old art.
• The use of old art does not necessarily preclude the existence of a substantial new question of patentability.
• Determinations of substantial new questions of patentability are now based on a fact-specific, case-by-case inquiry.

This change provided more flexibility in reexamination proceedings and allowed for a broader consideration of prior art in assessing patent validity.