Gregory Novak looks at the options for using previously cited prior art in patent re-examinations.
The re-examination alternative
A patent re-examination is similar to a litigation invalidity defence, but there are some key differences. For instance, unlike litigation, a re-examination cannot raise all statutory challenges to validity. Specifically, re-examinations may only be based on certain types of prior art, specifically prior art patents or printed publications that create a substantial new question of patentability (SNQ).
As the Federal Circuit found in In re Etter: “[T]he intent underlying reexamination is to ‘start over’ in the PTO with respect to the limited examination areas involved, and to re examine the claims, and to examine new or amended claims, as they would have been considered if they had been originally examined in light of all of the prior art of record in the reexamination proceeding.”
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patent examination, prior art, SNQ