How 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 necessarily preclude an SNQ/RLP. The USPTO makes its determination independently due to different standards of proof and claim construction.
• Non-final holding of invalidity: A non-final holding of claim invalidity or unenforceability is not controlling on the SNQ/RLP determination.
• Final holding of invalidity: A final holding of claim invalidity or unenforceability, after all appeals, binds the USPTO. In such cases, an SNQ/RLP would not be present for claims finally held invalid or unenforceable.

The MPEP cites Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988) as a key reference for these policies.

To learn more:

• court decisions
• substantial new question of patentability
• SNQ
• reasonable likelihood that the requester will prevail
• RLP
• patent reexamination