2642 Criteria for Deciding Request
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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 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 proceeding which has been concluded and which involved the patent.
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 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.
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 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.
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.
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
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.
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.
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.
