What prior art can be used in determining a substantial new question of patentability?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 8 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 determination of a substantial new question of patentability or a reasonable likelihood that the requester will prevail can be based on any prior art patents or printed publications. As stated in MPEP 2644 : “The determination of whether or not ‘a substantial new question of patentability’ or ‘a reasonable likelihood that the requester will prevail’ is present can be based upon any prior art patents or printed publications.” This means that examiners are not limited to the prior art cited in the request and can use other sources to make their determination. Related Rules from the Manual of Patent Examining Procedure 8 rules Collapse Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2644 Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2644 Reexamination Requests Prohibited After September 16, 2012 MPEP 1400.01 Permitted Third Parties Can Submit Printed Publications MPEP 1134.01 Requirement for Prior Filed Application Reference Before September 16, 2012 MPEP 1302.04 Required Reference to Prior Filed Application Required in ADS for New Filings MPEP 1302.04 Required Priority/ Benefit Claims Not Carried Over MPEP 1410 Oath/Declaration Requirement for Continuation Reissue Applications MPEP 1414 Required Other Related FAQs 5 FAQs Collapse How does 35 U.S.C. 312(a) affect the determination in inter partes reexamination? When can an examiner perform additional prior art searches for reexamination? Can examiners use prior art not cited in the reexamination request? What claims are considered in the determination for patent reexamination? What is the purpose of 37 CFR 1.927 in the reexamination process?