What is considered when determining if a substantial new question of patentability exists?
The determination of whether a substantial new question of patentability exists is based on the patent claims in effect at the time of the determination. The MPEP states:
“The patent claims in effect at the time of the determination will be the basis for deciding whether a substantial new question of patentability has been raised.” (37 CFR 1.515(a))
It’s important to note that amendments presented with the request (if filed by the patent owner), filed in a pending reexamination proceeding, or submitted in a reissue application where no reissue patent has been issued, will not be considered when deciding on the request.
Additionally, the determination does not involve making a decision on patentability/unpatentability of the claims. The focus is solely on whether a substantial new question of patentability is raised by the request and the prior art cited therein.
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