Office of Patent Legal Administration << Pre-OG Notices << Revised Guidelines for Usage of Previously Cited/Considered Prior Art In Reexamination Proceedings

The present notice sets forth reexamination policy and practice now in effect as a result of the revision of the reexamination statute made by Section 13105, part (a), of the Patent and Trademark Office Authorization Act of 2002 (H.R. 2215) (Pub. L. 107-273 (2002)) (hereinafter referred to as the "Act of 2002"). [1]

In the decision of In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), prior art was essentially precluded from being applied as the sole basis for providing a substantial new question of patentability (SNQ) in a reexamination proceeding if the art was: (1) relied upon to reject any claim in an earlier examination of the patent; or (2) cited in an earlier examination and its relevance to the patentability of any claim was discussed in that examination. Such art will be referred to as "old art" throughout the present Notice. [2] .

The Act of 2002 revised the reexamination statute by adding, inter alia, the following new last sentence of 35 U.S.C. §§ 303(a) and 312(a):

"The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office." [3] [4]

This revision made by the Act of 2002, in effect, overruled the Portola Packaging decision. [5]

The effective date of this revision is stated in the Act of 2002 as follows:

"The amendments made by this section shall apply with respect to any determination of the Director of the United States Patent and Trademark Office that is made under section 303(a) or 312(a) of title 35, United States Code, on or after the date of enactment of this Act." [6] [Emphasis added in bold]

Accordingly, for any reexamination ordered on or after November 2, 2002 (the effective date of the statutory revision), the Office is hereby repealing the Guidelines for Reexamination of Cases in View of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), 64 Fed. Reg. 15346 (Mar. 31, 1999), 1223 Off. Gaz. Pat. Office 124 (June 22, 1999) (notice), which were promulgated in order to conform with the decision of In re Portola Packaging Inc., supra.

Thus, in any reexamination ordered on or after November 2, 2002, reliance on old art does not necessarily preclude the existence of a SNQ that is based exclusively on that old art. Determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a SNQ may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s), in view of a material new argument or interpretation presented in the request.

FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor or Gerald A. Dost, Senior Legal Advisors in the Office of Patent Legal Administration. Kenneth M. Schor may be contacted by telephone at (703) 308-6710 or by e-mail addressed to KENNETH.SCHOR@USPTO.GOV. Gerald A. Dost may be contacted by telephone at (703) 305-8610; or by e-mail addressed to GERALD.DOST@USPTO.GOV.

[1] H.R. 2215 was enacted in Public Law 107-273, 21st Century Department of Justice Appropriations Authorization Act, 116 Stat. 1758 (2002).

[2] This term "old art" was coined in the decision of In re Hiniker Co., 150 F.3d 1362,1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998) where the Court stated "[w]e extended that holding in In re Portola Packaging ... which held that prior art that was before the original examiner could not support a reexamination proceeding despite the fact that it was not the basis of a rejection in the original prosecution; as long as the art was before the original examiner, it would be considered 'old art.'" [Emphasis added]

[3] See the 21st Century Department of Justice Appropriations Authorization Act, TITLE III- INTELLECTUAL PROPERTY, Subtitle A - Patent and Trademark Office, Section 13105, part (a), of the "Patent and Trademark Office Authorization Act" of 2002 -Enacted as part of Public Law 107-273 on November 2, 2002.

[4] The amended subsections of §§ 303(a) and 313(a) now read as follows (new sentence in italics):

35 U.S.C. 303 Determination of issue by Director.
     (a) Within three months following the filing of a request for reexamination under the provisions of section 302 of this title, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 of this title. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.
35 U.S.C. 312 Determination of issue by Director
     (a) REEXAMINATION.- Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.

[5] While the legislative history for H.R. 2215 is silent as to this point, the legislative history for the precursor bill H.R. 1866 clearly does make the point. In H.R. 1866, the same sentence (as in H.R. 2215) was added to 35 U.S.C. 303(a) and 312(a), and the legislative history explicitly stated the purpose of this addition was to overrule the Portola Packaging decision. See, for example, page 2 of H.R. 1866, House Judiciary Committee Report Number 107-120 (June 28, 2001). See also In re Robert T. Bass, 314 F.3d 575, 576-77, 65 USPQ2d 1156, 1157 (Fed. Cir. 2002), where the Court stated in the sole footnote:

"On November 2, 2002, 35 USC § 303(a) was amended by the passage of Pub. L. No. 107-273, § 13105, (116 Stat.) 1758, 1900, to add "[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office," thereby overruling Portola Packaging."

[6] See the 21st Century Department of Justice Appropriations Authorization Act, TITLE III- INTELLECTUAL PROPERTY, Subtitle A - Patent and Trademark Office, Section 13105, part (b), of the "Patent and Trademark Office Authorization Act of 2002" - Enacted as part of Public Law 107-273 on November 2, 2002.