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

A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:

• The prior art that adds new teaching to at least one claim
• What that new teaching is
• The claims the new teaching is directed to
• That the new teaching was not previously considered or addressed
• That the new teaching is important in deciding claim allowance

As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”

To learn more:

• ex parte reexamination
• substantial new question of patentability
• SNQ
• prior art
• patent claims