Patents Post Grant Blog

Expanded BPAI Panel Shoots Down Repackaged SNQ

Since In re Swanson, the standard for establishing a Substantial New Question of Patentability (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-used, if applied to the claims in a slightly different manner than that of the original prosecution. Understandably, since Swanson, arguing that a rejection adopted by the Office in patent reexamination does not in fact present the previously considered art in a new light has been an uphill battle.

Yesterday, the USPTO found a rare SNQ it didn’t like….and pigs were seen flying down Dulany Street. Read the rest of this entry »

What Exactly is a Substantial New Question of Patentability Anyway?

As noted in Part I of this two part series, the purpose of a request for patent reexamination is quite simple, to present SNQs relative to some or all of the claims of an issued patent.  Certainly there are numerous grounds to challenge a patent in a Federal District Court.  However, one must realize that an SNQ is a particular subset of the universe of available grounds applied at the USPTO.  The appropriate subset is explicitly identified by the reexamination statutes.  Simply stated, proper SNQs must be based on patents and/or printed publications only.  So, a proper SNQ cannot embrace arguments relating to public use/on sale bar, inequitable conduct, 35 U.S.C §112, or statutory subject matter, for example.

For “a substantial new question of patentability” to be present, it is only necessary that: (A) the prior art patents and/or printed publications raise a substantial new 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 (B) the same question of patentability as to the claim has not been decided by the Office in a previous examination or pending reexamination of the patent or in a final holding of invalidity by the Federal Courts in a decision on the merits involving the claim. 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. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or rendered obvious in view of, the prior art patents or printed publications. MPEP 2240/2640

In our last discussion, in addition to the above distinctions, we identified common misconceptions and practitioner errors in preparing reexamination requests.  Yet, assuming you have omitted such materials, and have a proper basis for your SNQ, what are some best practices in presenting SNQs to the Office? Read the rest of this entry »

It is well established that patent reexamination is limited in scope, by statutory definition, to unpatentability issues presented by patents and printed publications.  In other words, invalidity and/or unenforceability issues relating to inequitable conduct, public use or sale[1], subject matter eligibility, enablement and best mode are generally[2] outside the scope of patent reexamination (See 37 C.F.R. §§1.552 & 1.906).  Yet, a little known exception to these bright line rules exists with respect to previously submitted declaration evidence; an exception that has recently been narrowed even further. 

MPEP 2258.01, in its current form, describes the right of a third party to attack the sufficiency of original prosecution declaration evidence as a basis for a reexamination request Read the rest of this entry »

(Clarification: This post analyzes patent reexaminations of a subject patent that claims the benefit of an earlier filed CIP and/or provisional application for priority purposes.  In such circumstances, intervening art presenting a Substantial New Question of patentability (SNQ) may be applied calling into question these priorty dates.  In such unique circumstances, enablement and written description issues pertaining to the originally issued patent claims will be considered by the USPTO for the purpose of detemining whether or not the priority claim is properly supported.  Of course, such an analysis of original patent claims is not performed outside of these limited circumstances). 

According the MPEP §§ 2258 and 2658, the USPTO during a reexamination proceeding will not consider 35 U.S.C. § 112, 1st paragraph issues with respect to the reexamination of original patent claims. It will, however, consider such issues where new or amended claims are presented or where any part of the disclosure is amended.

Nevertheless, where the patent subject to reexamination has claimed the benefit of the filing date of an earlier filed U.S. or foreign patent application, reexamination proceedings may be based on intervening patents or printed publications where the patent claims under reexamination may be entitled only to the actual filing date of the patent.

But can this strategy be used as a “back door” attack on the original patent claims’ Read the rest of this entry »