How does the treatment of “old art” differ in reexaminations ordered before and after November 2, 2002?

The treatment of “old art” in patent reexaminations differs significantly based on whether the reexamination was ordered before or after November 2, 2002:

Reexaminations ordered before November 2, 2002:

• Subject to the Portola Packaging decision
• Old art generally cannot be the sole basis for a rejection
• Reexamination based solely on old art is typically not allowed

Reexaminations ordered on or after November 2, 2002:

• Subject to the Patent and Trademark Office Authorization Act of 2002
• Old art can be the sole basis for a rejection
• A substantial new question of patentability can be based exclusively on old art

The MPEP states: “For a reexamination that was ordered on or after November 2, 2002 (the date of enactment of Public Law 107-273; see Section 13105, of the Patent and Trademark Office Authorization Act of 2002), reliance solely on old art (as the basis for a rejection) does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art.”

This change allows for a broader consideration of prior art in reexaminations, potentially leading to more thorough examinations of patent validity.

To learn more:

• old art
• patent reexamination
• Portola Packaging
• Patent and Trademark Office Authorization Act of 2002