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2642    Criteria for Deciding Request [R-11.2013]

I.   SUBSTANTIAL NEW QUESTION OF PATENTABILITY/REASONABLE LIKELIHOOD THAT REQUESTER WILL PREVAIL

A.   For reexaminations filed prior to September 16, 2011:

The presence or absence of “a substantial new question of patentability” determines whether or not reexamination is ordered. The meaning and scope of the term “a substantial new question of patentability” is not defined in the statute and must be developed to some extent on a case-by-case basis, using the legislative history and case law to provide guidance as will be discussed in this section.

If the prior art patents and printed publications raise a substantial question of patentability of at least one claim of the patent, then a substantial new question of patentability is present, unless the same question of patentability has already been decided by (A) a final holding of invalidity, after all appeals, or (B) by the Office in a previous examination of the patent. A “previous examination” of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; or (C) the examination of the patent in an earlier pending or concluded reexamination. The answer to the question of whether a “substantial new question of patentability” exists, and therefore whether reexamination may be had, is decided by the examiner, and if reexamination is denied, requester may obtain reconsideration only pursuant to MPEP § 2648. If reexamination is granted, the decision that a reference raises a SNQ is final and non-appealable by the patent owner. See 35 U.S.C. 312(c).

A prior art patent or printed publication raises a substantial question of patentability where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable. If the prior art patents and/or publications would be considered important, then the examiner should find “a substantial new question of patentability” unless the same question of patentability has already been decided as to the claim in a final holding of invalidity by the Federal court system or by the Office in a previous examination. For example, the same question of patentability may have already been decided by the Office where the examiner finds the additional (newly provided) prior art patents or printed publications to be merely cumulative to similar prior art already fully considered by the Office in a previous examination of the claim.

Accordingly, for "a substantial new question of patentability" to be present, it is only necessary that:

  • (A) The prior art patents and/or printed publications raise a substantial question of patentability regarding at least one claim, i.e., the teaching of the prior art patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and
  • (B) The same question of patentability as to the claim has not been decided by the Office in a concluded previous examination of the patent, raised to the Office in a pending reexamination of the patent or decided in a final holding of invalidity by the Federal Courts in a decision on the merits involving the claim. If a reexamination proceeding was terminated/vacated without resolving the substantial question of patentability question, it can be re-presented in a new reexamination request.

It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either anticipated by, or obvious in view of, the prior art patents or printed publications. The difference between “a substantial new question of patentability” and a “prima facie” case of unpatentability is important. See generally In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed. Cir. 1985).

Note that the clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc.(KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists. See the discussion in MPEP § 2616. It should be also noted that the “substantial new question of patentability” standard for granting reexamination on a request for an inter partes reexamination is the same as the “substantial new question of patentability” standard for granting reexamination on a request for an ex parte reexamination.

B.   For reexaminations filed on or after September 16, 2011, and prior to September 16, 2012:

Whether or not the request and the prior art establish a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request determines whether or not reexamination is ordered. The meaning and scope of the term “a reasonable likelihood that the requester will prevail” is not defined in the statute and must be developed to some extent on a case-by-case basis. With respect to the reasonable likelihood standard, House Rep. 112-98 (Part 1), 112th Cong., 1st Sess., provides, in connection with inter partes review, the following:

"The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’--a standard that currently allows 95% of all requests to be granted--to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success." H.R. Rep. No. 112-98 (Part 1), at 47.

Thus, the reasonable likelihood standard requires a showing that is "elevated" from that of the substantial question of patentability question standard.

If a reexamination proceeding was terminated/vacated without resolving the "reasonable likelihood" question, it can be re-presented in a new reexamination request (but note that for an ex parte reexamination request, a substantial new question of patentability must be raised).

II.   POLICY AS TO SUBSTANTIAL NEW QUESTION OF PATENTABILITY IN SPECIFIC SITUATIONS

In order to further clarify the meaning of “a substantial new question of patentability,” certain situations are outlined below which, if present, should be considered when making a decision as to whether or not “a substantial new question of patentability” is present.

A.   Prior Favorable Decisions by the U.S. Patent and Trademark Office on the Same or Substantially Identical Prior Art in Relation to the Same Patent.

A "substantial new question of patentability" is not raised by the prior art if the Office has previously considered (in an earlier examination of the patent) the same question of patentability as to a patent claim favorable to the patent owner based on the same prior art patents or printed publications. In re Recreative Technologies, 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996).

In deciding whether to grant a request for reexamination of a patent, the examiner should check the patent’s file history to ascertain whether any of the prior art now advanced by requester was previously cited/considered in an earlier Office examination of the patent (e.g., in the examination of the application for the patent, or in a concluded or pending reexamination proceeding). For the sake of expediency, such art is referred to as “old art” throughout, since the term “old art” was coined by the Federal Circuit in its decision of In re Hiniker Co., 150 F.3d 1362, 1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998).

In a decision to order reexamination made on or after November 2, 2002, reliance on old art does not necessarily preclude the existence of a substantial new question of patentability that is based exclusively on that old art. See Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002), which expanded the scope of what qualifies for a substantial new question of patentability upon which a reexamination may be based. Determinations on whether a substantial new question of patentability exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a substantial new question of patentability 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 examination(s), in view of a material new argument or interpretation presented in the request.

When it is determined that a substantial new question of patentability based solely on old art is raised, form paragraph 22.01.01 should be included in the order for reexamination.

¶ 22.01.01    Criteria for Applying "Old Art" as Sole Basis for Reexamination

The above [1] is based solely on patents and/or printed publications already cited/considered in an earlier examination of the patent being reexamined. On November 2, 2002, Public Law 107-273 was enacted. Title III, Subtitle A, Section 13105, part (a) of the Act revised the reexamination statute by adding the following new last sentence to 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."

For any reexamination ordered on or after November 2, 2002, the effective date of the statutory revision, reliance on previously cited/considered art, i.e., “old art,” does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. Rather, 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.

In the present instance, there exists a SNQ based solely on [2]. A discussion of the specifics now follows:

[3]

Examiner Note:

  • 1. In bracket 1, insert "substantial new question of patentability" if the present form paragraph is used in an order granting reexamination (or a TC or CRU Director’s decision on petition of the denial of reexamination). If this form paragraph is used in an Office action, insert "ground of rejection" .
  • 2. In bracket 2, insert the old art that is being applied as the sole basis of the SNQ. For example, "the patent to J. Doe" or "the patent to J. Doe when taken with the Jones publication" or "the combination of the patent to J. Doe and the Smith publication" could be inserted. Where more than one SNQ is presented based solely on old art, the examiner would insert all such bases for SNQ.
  • 3. In bracket 3, for each basis identified in bracket 2, explain how and why that fact situation applies in the proceeding being acted on. The explanation could be for example that the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Inter. 1984).
  • 4. This form paragraph is only used the first time the "already cited/considered" art is applied, and is not repeated for the same art in subsequent Office actions.

MPEP § 2258.01 provides a discussion of the use of “old art” in the examination stage of an ordered reexamination (as a basis for rejecting patent claims).

B.   Prior Adverse Decisions by the Office on the Same or Substantially Identical Prior Art in the Same Patent.

A prior decision adverse to the patentability of a claim of a patent by the Office based upon prior art patents or printed publications would usually mean that “a substantially new question of patentability” is present. Such an adverse decision by the Office could arise from a reissue application which was abandoned after rejection of the claim and without disclaiming the patent claim.

C.   Prior Adverse Reissue Application Final Decision by the Director of the Office or the Board Based Upon Grounds Other Than Patents or Printed Publications.

Any prior adverse final decision by the Director of the Office, or the Patent Trial and Appeal Board or Board of Patent Appeals and Interferences (Board), on an application seeking to reissue the same patent on which reexamination is requested will be considered by the examiner when determining whether or not a “substantial new question of patentability” is present. To the extent that such a prior adverse final decision was based upon grounds other than patents or printed publications, the prior adverse final decision will not be considered in determining whether or not a “substantial new question of patentability” is present.

D.   Prior Favorable or Adverse Decisions on the Same or Substantially Identical Prior Art Patents or Printed Publications in Other Cases not Involving the Patent.

While the Office would consider decisions involving substantially identical patents or printed publications in determining whether a “substantial new question of patentability” is raised, the weight given to such decisions will depend upon the circumstances.

III.   POLICY WHERE A FEDERAL COURT DECISION HAS BEEN ISSUED ON THE PATENT

As to A - C which follow, see Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).

A.   Final Holding of a Failure to Prove Invalidity by the Courts.

When the initial question as to whether the prior art raises a substantial new question of patentability (SNQ) or there is a reasonable likelihood that the requester will prevail (RLP) as to a patent claim is under consideration, the existence of a final court decision that a patent claim is not invalid in view of the same or different prior art does not necessarily mean that no SNQ/RLP is present, because of the different standards of proof and different standards of claim construction applied by the Federal District Courts and the Office. While the Office may accord deference to factual findings made by the court, the determination of whether a SNQ/RLP xists will be made independently of the court’s decision on validity, because it is not binding on the Office. See, e.g., In re Swanson et al, 540 F.3d 1368, 1378 (Fed. Cir. 2008) (Federal Circuit approved of the Office’s interpretation in MPEP § 2242). Note, where the requester was a party to the prior litigation resulting in the final court decision that a patent claim is not invalid, see MPEP § 2686.04, subsection II(B) for a discussion of the application of the estoppel provisions of the inter partes reexamination statute.

B.   Non-final Holding of Invalidity or Unenforceability by the Courts.

A non-final holding of claim invalidity or unenforceability will not be controlling on the question of whether a substantial new question of patentability/a reasonable likelihood that the requester will prevail is present.

C.   Final Holding of Invalidity or Unenforceability by the Courts.

However, a final holding of claim invalidity or unenforceability, after all appeals, binds the Office. In such cases, a substantial new question of patentability/a reasonable likelihood that the requester will prevail would not be present as to any claims finally held invalid or unenforceable.

Note: Any situations requiring clarification should be brought to the attention of the Office of Patent Legal Administration.

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Last Modified: 03/27/2014 10:10:34