What role does the examiner’s perspective play in determining a substantial new question of patentability?

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 examiner’s perspective plays a crucial role in determining a substantial new question of patentability (SNQ) during supplemental examination. According to MPEP 2816.02:

“A substantial new question of patentability is present when it is shown that there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable.“

This statement highlights several key aspects:

• The standard is based on a “reasonable examiner’s” perspective
• The information must be likely to be considered “important” in the patentability decision
• The threshold is “substantial likelihood,” not absolute certainty

Examiners must put themselves in the shoes of the original examiner and consider whether the new information would have been important enough to change the patentability determination. This approach ensures a consistent and fair evaluation of supplemental examination requests.