What is the purpose of the “substantial new question of patentability” requirement in 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. The “substantial new question of patentability” requirement serves to protect patentees from unnecessary reexaminations. MPEP 2244 explains: “The substantial new question of patentability requirement protects patentees from having to respond to, or participate in unjustified reexaminations.” This requirement ensures that reexaminations are only conducted when there is a legitimate basis for questioning the validity of the patent, based on new or newly applied prior art. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Substantial New Question of Patentability Required for Reexamination MPEP 2240 Requirement for Substantial New Question of Patentability in Ex Parte Reexamination Request MPEP 2216 Required Requirement for Substantial New Question of Patentability in Reexamination Request MPEP 2240 Claim Basis for Substantial New Question of Patentability MPEP 2243 Substantial New Question of Patentability Requirement Protects Patentees from Unjustified Reexaminations MPEP 2240 Claims Basis for Substantial New Question of Patentability MPEP 2240 Requirement for Substantial New Question of Patentability in Reexamination MPEP 2240 Required Request Must Include Substantial New Question of Patentability MPEP 2216 Director Must Determine Substantial New Question of Patentability Within 3 Months MPEP 2240 New Question of Patentability Not Precluded by Previous Citations MPEP 2240 Other Related FAQs 5 FAQs Collapse What is the basis for determining a &#8220;substantial new question of patentability&#8221; in ex parte reexamination? Can examiners perform additional prior art searches during reexamination? Can examiners consider prior art not cited in the reexamination reque...