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2216    Substantial New Question of Patentability

MPEP SECTION SUMMARY The request must include a statement that points out each new question of patentability based on prior patents and printed publications. If a substantial new question is brought forth, the patent owner will need to file a statement within two months. Further details concerning the meaning of a substantial new question of patentability are covered in this section.

A substantial new question cannot be based upon:

• prior art expressly relied upon by the examiner during the prosecution
• prior art which was actually discussed

Rules for establishing a substantial new question of patentability to obtain a reexamination:

• an admission, per se, may not be the basis for establishing a substantial new question of patentability
• however, an admission by the patent owner of record in the file or in a court record may be utilized in combination with a patent or printed publication
• a prior art patent cannot be properly applied as a ground for reexamination if it is merely used as evidence of an alleged prior public use or sale, or an insufficiency of the disclosure
• the prior art patent must be applied directly to claims under 35 U.S.C. 103 and/or an application portion of 35 U.S.C. 102 or relate to the application of other prior art patents or printed publications to claims on such grounds
• any substantial new question of patentability must be based on prior patents and publications
• the name and address of the party served must be indicated if the request is by a person other than the patent owner

 

» 2217 Statement in the Request Applying Prior Art