(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’
Continue Reading Attacking a Patent in Reexamination for Lack of Written Description and Enablement?