What happens if a substantial new question of patentability is raised during reexamination?

If a substantial new question of patentability is raised during reexamination, the USPTO is required to address it. The MPEP 2821 cites 35 U.S.C. 304, which states: “If… the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of…

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Can a substantial new question of patentability (SNQ) be based on old art in supplemental examination?

Yes, a substantial new question of patentability (SNQ) can be based on old art in supplemental examination, provided it is presented or viewed in a new light compared to previous examinations. The MPEP clarifies: Reliance on old art does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based…

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What is the “substantial new question of patentability” criterion in patent reexamination?

The “substantial new question of patentability” (SNQ) is a key criterion for deciding whether to grant a request for patent reexamination. According to the MPEP, A prior art patent or printed publication raises a substantial question of patentability where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or…

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What is a “substantial new question of patentability” in ex parte reexamination?

A “substantial new question of patentability” is a key requirement for initiating an ex parte reexamination. As stated in MPEP 2209: “The Office initially determines if ‘a substantial new question of patentability’ (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered.“ This requirement ensures that the USPTO…

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What constitutes “substantial activity” in the U.S. for the on-sale bar under pre-AIA law?

The concept of “substantial activity” in the U.S. is crucial for determining if foreign sales can trigger the on-sale bar under pre-AIA law. While the MPEP doesn’t provide an exhaustive definition, it offers guidance: “‘On sale’ status can be found if substantial activity prefatory to a ‘sale’ occurs in the United States.” (MPEP 2133.03(d)) This…

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