2242 Criteria for Deciding Request
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I. SUBSTANTIAL NEW QUESTION OF PATENTABILITY
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 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 as to the claim is present, unless the same question of patentability has already been:
- (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim, after all appeals;
- (B) decided in an earlier concluded examination or review of the patent by the Office; or
- (C) raised to or by the Office in a pending reexamination or supplemental examination of the patent.
An earlier concluded examination or review 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;
- (C) the examination of the patent in an earlier concluded reexamination or supplemental examination;
- (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of the patent; or
- (E) any other contested Office proceeding which has been concluded and which involved the patent.
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 the examiner’s determination may be reconsidered:
- If reexamination is denied
- If reexamination is granted
For “a substantial new question of patentability” to be present, it is only necessary that:
- 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
- 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 or by 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.
II. POLICY IN SPECIFIC SITUATIONS
A. Prior Favorable Decisions by the U.S. Patent and Trademark Office (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 prior art presented in a reexamination request 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.
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, for example, 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 USPTO or the Board Based Upon Grounds Other Than Patents or Printed Publications.
Any prior adverse final decision by the Director of the USPTO 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.
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 to be given such decisions will depend upon the circumstances.
III. POLICY WHERE A FEDERAL COURT DECISION HAS BEEN ISSUED ON THE PATENT
A. Final Holding of Validity by the Courts.
When the initial question as to whether the prior art raises a substantial new question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different prior art does not necessarily mean that no new question is present, because of the different standards of proof employed by the Federal District Courts and the Office.
B. Nonfinal Holding of Invalidity or Unenforceability by the Courts.
A nonfinal holding of claim invalidity or unenforceability will not be controlling on the question of whether a substantial new question of patentability is present.
C. Final Holding of Invalidity or Unenforceability by the Courts.
A final holding of claim invalidity or unenforceability, after all appeals, is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims finally held invalid or unenforceable.
