What are the exceptions to finding an SNQ in patent reexamination?

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.

There are specific exceptions to finding a substantial new question of patentability (SNQ) in patent reexamination. The MPEP 2242 outlines these exceptions:

“A prior art patent or printed publication cannot be properly applied as a ground for reexamination if it is merely cumulative to, or less relevant than, prior art patents or printed publications already cited/considered in an earlier concluded examination or review of the patent, or raised to or by the Office in a pending reexamination or supplemental examination of the patent.”

The main exceptions to finding an SNQ are:

• The same question of patentability has been decided in a final holding of invalidity by a federal court
• The question has been decided in an earlier concluded examination or review of the patent by the USPTO
• The question has been raised in a pending reexamination or supplemental examination of the patent

These exceptions prevent redundant examinations and ensure that reexamination is only conducted when truly new questions arise.