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Preventing Harassment in Patent Reexamination: MPEP § 2240’s Smoking Gun Requirement
The legislative history of 35 U.S.C. § 312 suggests that a purpose of the substantial new question of patentability (“SNQ”) prerequisite is to prevent patent owner harassment via seriatim requests for reexamination.[1] Consistent with that purpose, MPEP § 2240.II provides:
In certain situations, after a grant of a second or subsequent request for ex parte reexamination, where (A) the patent owner files a petition under 37 CFR 1.182 as part of the statement or as the statement, and (B) it appears clear that the second or subsequent request was filed for purposes of harassment of the patent owner, if the petition is granted, prosecution on the second or subsequent reexamination would be suspended. {Emphasis added.}
However, absent an overt and documented threat to tie up a patent in reexamination, can a patent owner establish a “clear” intent by the third party requester to harass a patent owner? Read the rest of this entry »
