How does the USPTO handle prior art that was previously considered during the original examination?
The USPTO has specific guidelines for handling prior art in ex parte reexamination that was previously considered during the original examination. According to MPEP 2244:
“If prior art patents or printed publications are presented by the reexamination requester for review in a reexamination proceeding, and the requester has not had the patents or printed publications applied as prior art and also has not had the patents or printed publications cited as prior art, the patents and printed publications will be considered to decide whether a substantial new question of patentability is raised.”
This means that:
- Previously unconsidered prior art will be reviewed to determine if it raises a substantial new question of patentability.
- Prior art that was already applied or cited during the original examination may not be sufficient grounds for reexamination unless it is being presented in a new light or context.
- The examiner must carefully evaluate whether the previously considered prior art, when combined with new evidence or arguments, raises a substantial new question of patentability.
The USPTO’s approach ensures that reexamination is not used to rehash issues already addressed in the original examination, while still allowing for reconsideration if new evidence or perspectives are presented.
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