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Monday, August 10, 2020 | History

2 edition of Substantial new question of patentability in reexamination proceedings found in the catalog.

Substantial new question of patentability in reexamination proceedings

Substantial new question of patentability in reexamination proceedings

report (to accompany H.R. 1866) (including cost estimate of the Congressional Budget Office).

by

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Published by U.S. G.P.O. in [Washington, D.C .
Written in English

    Subjects:
  • Patent laws and legislation -- United States

  • Edition Notes

    SeriesReport / 107th Congress, 1st session, House of Representatives -- 107-120.
    The Physical Object
    Pagination14 p. ;
    Number of Pages14
    ID Numbers
    Open LibraryOL17717956M

    • A typical reexamination takes about two to three years, and the initial determination as to whether a substantial new question of patentability exists is usually made within three months of filing • Reexamination can be requested at any time during a patent litigation • Reexaminations generally cost less than patent litigation. Final Rules for Supplemental Examination. When receiving a request for supplemental examination, the USPTO evaluates whether the request sets forth a substantial and new question of patentability (SNQ), and if so, the USPTO orders ex parte reexamination of the patent.

    reexamination under the provisions of section of this title, the Commissioner 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 Commissioner. A determination that there is no substantial new question is final and non-appealable. If the PTO orders reexamination, the patent holder is given the opportunity to file a statement concerning the new question of patentability, including amendments or new claims they want to propose (provided, however, that the claims may not be broadened).

      MPEP - Ex Parte Reexamination and Litigation Proceedings The decision regarding patent validity decided by a US District Court does not have binding effect during reexamination. The PTO can still find the claims of a patent to be invalid. New art can be found by the PTO which render the claims unpatentable as they could raise a substantial new question of patentability. However, ex parte reexamination may only occur when a substantial new question of patentability is presented, or what a “reasonable examiner would find important in determining the patentability of the claims,” regarding 35 U.S.C. §§ and issues. This question .


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Substantial new question of patentability in reexamination proceedings by Download PDF EPUB FB2

The requirement for a substantial new question of patentability remains in place even if it is clear from the record of a patent for which reexamination is requested that the patent was granted because the Office did not show “motivation” to combine, or otherwise satisfy the.

Get this from a library. Substantial new question of patentability in reexamination proceedings: report (to accompany H.R. ) (including cost estimate of the Congressional Budget Office).

[United States. Congress. House. Committee on the Judiciary.]. Inter Partes Reexamination: Substantial New Questions of Patentability Attaches to a Particular Rejection. After a patent is granted, its validity can be tested in litigation, reexamination, interference and reissue.

In reexamination proceedings, both inter partes and ex parte statutes require that at least one SNQ is included in the request. That is to say, if the parent patent does not support the claims of the child patent claims under reexamination, a substantial new question of patentability (SNQ) may be presented that is based on intervening patents or printed publications as the child patent claims under reexamination would not be entitled to the filing date of the parent.

the request raised a substantial new question of patentability. (b) If the supplemental examination certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C.

Upon the conclusion of the ex parte. The pre-AIA standard required that the PTO commence reexamination of a patent if it found that any prior art patents or printed publications raised a “substantial new question of patentability.”.

Looking back on patent reexamination filings, the mean number of Substantial New Questions of Patentability (SNQs) presented differs based upon the type of reexamination proceeding. For ex parte patent reexamination, the mean value is SNQs per request, for inter partes patent reexamination the number is SNQs per request.

Substantial New Question of Patentability (SNQ) – A request for reexamination must establish the existence of at least one new technological teaching affecting any claim of the patent for which reexamination has been requested that was not considered by the Office in a prior Office proceeding involving the patent.

Last week I had the privilege of speaking on reexamination at the AIPLA Electronics and Computer Law Summit. The title of my speech was “Strategic Use of Reexam after Patent Reform – Post-Grant Review and Inter Partes Review.”.

During the reexamination, the Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter.

If the Director finds that there is a “substantial new question of patentability,” then the Director must issue an order for “reexamination of the patent for resolution of the question.” 35 U.S.C.

In35 U.S.C. § (a) was amended to state that the USPTO may only grant a reexamination request if “[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously. Dueling Press Releases Over Reexamination Ordered by USPTO.

The substantial new question of patentability standard is lower than the prima facie case of unpatentability standard needed for a patent examiner to make a valid rejection. from being a substantial new question of patentability before the USPTO in reexamination, since different rules and standards apply.

• Following the amendment to 35 U.S.C. § (a), previously considered references may be applied in a new light to form a substantial new question of patentability. This might include (as in the facts of. Swanson. Substantial New Question of Patentability [R] Under 35 U.S.C.the Office must determine whether "a substantial new question of patentability" affecting any claim of the patent has been raised.

37 CFR (b)(1) requires that a request for ex parte reexamination include "a statement pointing out each substantial new question of patentability based on prior patents and printed. During the reexamination, the Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter.

(c) EFFECT.—. Reexamination is a statutory procedure that permits the USPTO to reconsider the patentability of the claims in an issued patent in view of prior art which was not considered in the original prosecu­tion of the application.

1 Congress offered ex parte reexamination proceedings as a mechanism that did not require patent owners to offer to surrender. “SNQ” of Patentability. The substantial new question of patentability standard still applies to ex parte reexamination and will also apply to Supplemental Examinations.

Previous inter partes re-examination required a substantial new question of patentability to initiate the inter partes re-examination. With the new inter partes review the requester must only show a reasonable likelihood that they will prevail with respect to at least one claim in the challenged patent.

Such a request can be filed at any time during the enforceability of a patent, and the requester must establish that the submitted prior art establishes a substantial and new question of patentability (SNQ), at which point the USPTO will grant the reexamination request and order examination (i.e., reexamination) of the patent in question.

Thus, the question to be resolved by reexamination is limited to the substantial new question of patentability as determined by the Director. Belkin found that the statute does not give patent examiners or the Board authority to subsequently consider prior art references that the Director determined do not raise new questions of patentability.

In Concurrent Inter Partes Review and Reexamination Proceedings Reexamination More Likely Affected a substantial question of patentability, it did not raise a substantial new question .Once an ex parte reexamination has been requested, the Director of the USPTO will determine “whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request.”[7] In the past ten years, the Director of the USPTO has been given broad discretion, by both Congress and the Federal Circuit.