How does the Portola Packaging decision affect patent reexaminations?

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 In re Portola Packaging Inc. decision significantly impacted patent reexaminations ordered before November 2, 2002. The key effects are:

• Old art generally cannot be the sole basis for a rejection in these reexaminations.
• If prior art was previously relied upon to reject a claim or its relevance to patentability was actually discussed on the record in a prior related Office proceeding, it cannot be the sole basis for reexamination.
• The Office cannot conduct reexamination based only on such prior art.

The MPEP provides guidance on compliance with Portola Packaging: “If prior art was previously relied upon to reject a claim in a concluded prior related Office proceeding, the Office will not conduct reexamination based only on such prior art.”

However, it’s important to note that the Portola Packaging decision was effectively overruled by the Patent and Trademark Office Authorization Act of 2002 for reexaminations ordered on or after November 2, 2002. For these later reexaminations, old art can be the sole basis for a substantial new question of patentability.