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Pursuing Denied SNQs in Inter Partes Patent Reexamination
Petition or Appeal?–Pursuit of SNQ Denial at the USPTO
When pursuing inter partes patent reexamination, denial of a Substantial New Question of Patentability (SNQ) by the USPTO can be especially troubling to third party requesters. This is because a third party is estopped from asserting in litigation the “invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.” 35 U.S.C. § 315(c).
Denied SNQs raise the fear of potential district court estoppel relative to the prior art underlying the denied SNQ. For this reason, third parties will almost always dispute such denials internal to the USPTO–even where the claims of the patent remain rejected based upon other SNQs of the same request.
But, what is the appropriate vehicle for such a dispute, petition or appeal? The answer to this question will depend upon whether or not the denied SNQ pertains to a claim that is being actively reexamined on other grounds. Read the rest of this entry »
