How does the Patent and Trademark Office Authorization Act of 2002 affect ex parte reexamination?
The Patent and Trademark Office Authorization Act of 2002 significantly impacted ex parte reexamination by allowing a substantial new question of patentability to be raised based on previously cited or considered art. The MPEP 2216 explains:
“After the enactment of the Patent and Trademark Office Authorization Act of 2002 (‘the 2002 Act’), a substantial new question of patentability can be raised by patents and printed publications ‘previously cited by or to the Office or considered by the Office’ (‘old art’).”
However, the Act did not eliminate the requirement for a substantial new question of patentability. The MPEP clarifies that old art can raise a substantial new question only if it is “presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request.”
This change allows for more flexibility in reexamination requests while still maintaining the integrity of the process by requiring new insights or interpretations of the prior art.
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