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

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. 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.” Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Examiner Must Identify Substantial New Question of Patentability MPEP 2246 Required Substantial New Question of Patentability Requires Ex Parte Reexamination MPEP 2246 Substantial New Question of Patentability Must Be Addressed MPEP 2246 Recommended Patent Owner Can Challenge SNQ Determination in Ex Parte Reexamination MPEP 2246 Permitted Patent Owner Must Serve Copy of Statement on Requestor MPEP 2246 Patent Owner Must First Request Reconsideration Before Examiner for SNQ Issue Review MPEP 2246 Permitted Substantial New Question of Patentability Must Be Stated MPEP 2246 Recommended Substantial New Question of Patentability Must Be Raised MPEP 2246 Permitted Patent Owner Can Challenge SNQ Determination in Ex Parte Reexamination MPEP 2246 Permitted Patent Owner Must Promptly Serve Reply to Requeste...