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, subject matter eligibility, enablement and best mode are generally 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, noting that:
However, what does the Office mean by “undermine the sufficiency of the declaration”?
For an example of the Office’s interpretation of this MPEP revision, two recent ex parte reexamination orders are illustrative. In Reexamination Control No. 90/010,683 (the ’683 reexamination), a Substantial New Question of Patentability (SNQ) was found based upon the Third Party Requester’s undermining of a 1.131 declaration submitted in the original prosecution. Yet, in Reexamination Control No. 90/010,681 (the ’681 reexamination), an SNQ was not found with respect to an attempted undermining of the 1.131 declaration filed in the prosecution of the original patent.
In the ’683 reexamination, the Requester noted that the 1.131 declaration of the original prosecution did not account for a section 102(e) filing date of a previously considered reference in the prosecution of the original patent based on the reference’s claimed priority to an earlier filed provisional application. In analyzing the issue, the Office noted at page 5 of the October 30, 2009 order that:
The declaration under 1.131 sought to swear behind the [reference]. The declaration stated that conception occurred prior to Sept 13, 1996. Subsequently, the Examiner accepted the declaration as overcoming the [reference], withdrew the rejections, and issued the claims in a notice of allowance mailed January 25, 1999.
It appears that the declaration we insufficient to overcome the [reference] because conception was asserted prior to [the reference] filing data, but not before [the reference’s] priority date. [The reference] claims priority to provisional application 60/006,448 filed November 13, 1995. Thus the declaration failed to claim conception prior to the priority date of the [reference].
The sufficiency of the declaration in overcoming the [reference] would be important to a reasonable examiner in deciding patentability because the claims were allowed in light of the Examiner’s removal of the [reference] as prior art.
Contrast this determination with that of the ’681 reexamination, which noted at page 8 of the November 14, 2009 order that:
Instead of presenting the patents in a new light, Requester has asserted that reexamination is proper because the references were mistakenly withdrawn as prior art in view of the Rule 131 declaration submitted on February 12, 2001. Requester alleges that the Rule 131 declaration was insufficient for failure to establish possession of the invention prior to the effective filing dates of the references and failure to establish diligence from prior to the effective filing dates to the filing of the application. These allegations do not present a substantial new question. A substantial new question may be raised through the showing of an “inaccuracy/mistake of fact in the declaration.” MPEP § 2258.01. In the present case, no such showing has been made. The sufficiency of the Rule 131 declaration was previously considered by the Office and thus a substantial new question is not raised.
Previously, in an earlier version, MPEP § 2258.01 stated that the sufficiency of a declaration may be undermined in a request as the basis for an SNQ. If the ’681 reexamination request had been filed prior to this change, it appears as though the Office would have had little choice but to have ordered reexamination of the ’681 patent.
As can be seen from the cases above, MPEP § 2258.01 has been revised to limit when an SNQ can be raised when a third party requester challenges the sufficiency of a declaration filed during the prosecution of a patent. In future revisions of the MPEP, perhaps the parenthetical aspect of this language may be eliminated as potentially misleading practitioners into believing that reexamination will be ordered as a matter of right when a third party challenges the sufficiency of a declaration filed during the prosecution of the original patent.
 Cf., Quad Environmental Technologies Corp. v. Union Sanitary District, 946 F.2d 870 (Fed. Cir. 1991) (MPEP § 2217 revised to allow considerations of admissions of public use or sale.) Written description, enablement and claim definiteness issues may be raised in reexamination against new and amended claims.