2816.02 Criteria for Making the Determination [R-07.2015]
The criteria for making the determination on the request for supplemental examination is whether any of the items of information submitted with or as part of the request raise a substantial new question of patentability affecting at least one claim of the patent. See 35 U.S.C. 257(a).
I. SUBSTANTIAL NEW QUESTION OF PATENTABILITY (SNQ)
The examiner will determine if a SNQ is raised by each item of information. The SNQ standard in supplemental examination proceedings is identical to the “substantial new question of patentability” standard in ex parte reexamination proceedings. The meaning and scope of the term “a substantial new question of patentability” is not defined in the statute, and must be developed on a case-by-case basis, with reference to earlier case law involving ex parte reexamination proceedings.
If an item of information raises a substantial new question of patentability (SNQ) for at least one claim of the patent, then a substantial new question of patentability as to the claim is present, unless the same question of patentability has already been: (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim, after all appeals; (B) decided in an earlier concluded examination or review of the patent by the Office; or (C) raised to or by the Office in a pending reexamination or supplemental examination of the patent. Issues involving 35 U.S.C. 325(d) must be referred to the Director of the CRU. An “earlier concluded examination or review” of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) the examination of the patent in an earlier concluded reexamination or supplemental examination of the patent; (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of the patent; or (E) any other contested proceeding, which has been concluded and which involved the patent.
For example, the same question of patentability may already have been decided if the Office has previously considered, in an earlier concluded examination or review of the patent, the same question of patentability based on the same prior art. See In re Recreative Technologies, 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996). Prior art which has been cited or considered by the Office is referred to, for the sake of expediency, as “old art,” as coined by the Federal Circuit in its decision in In re Hiniker, 150 F.3d 1362, 1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998). Reliance on old art does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. See Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002), which expanded the scope of what qualifies for a SNQ. Determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a SNQ may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s) or review(s), in view of a material new argument or interpretation presented in the request.
The answer to the question of whether a substantial new question of patentability (SNQ) exists, and therefore whether reexamination may be ordered, is decided by the Central Reexamination Unit (CRU), under the authority delegated by the Director of the USPTO.
An item of information raises a substantial new question of patentability where there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable. For example, if the supplemental examination request states and explains that there may be a potential issue under 35 U.S.C. 101 regarding claim 5, the examiner would review the supplemental examination record to decide whether there is a substantial likelihood that a reasonable examiner would find the item of information (e.g., the discussion in the request regarding claim 5 and the potential issue under 35 U.S.C. 101) important in determining the patentability of claim 5. If the item of information would be considered important, then the examiner should find a substantial new question of patentability unless the same question of patentability has already been decided as to the claim in a final holding of invalidity by a federal court, decided by the Office in an earlier concluded examination or review, or raised to or by the Office in a pending reexamination or supplemental examination of the patent. For example, the same question of patentability may have already been decided by the Office where the examiner finds that the items of information, which are newly provided prior art patents or printed publications, are merely cumulative to prior art already fully considered by the Office in an earlier concluded examination or review of the claim.
For a substantial new question of patentability (SNQ) to be present, it is only necessary that: (A) an item of information raises a SNQ regarding at least one claim, i.e., the teaching of the item of information 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 an earlier concluded examination or review of the patent, decided in a final holding of invalidity (after all appeals) by a federal court in a decision on the merits involving the claim, or raised to or by the Office in a pending reexamination or supplemental examination of the patent. 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 obvious in view of, the items of information. As to the importance of the difference between a substantial new question of patentability and a “prima facie” case of unpatentability, see generally In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed. Cir. 1985).
Note that the clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a SNQ exists.
II. POLICY IN SPECIFIC SITUATIONS
An item of information limited to a correction of factual information, alone, may not raise a substantial new question of patentability (SNQ). For example, an item of information limited to the correction of a missing or erroneous foreign priority or domestic benefit claim, alone, generally will not raise an issue of patentability. In order for the correction of a foreign priority or domestic benefit claim to raise a SNQ, the request for supplemental examination should also include one or more additional item(s) of information, such as one or more intervening reference(s), that would cause the patentability of the claims under, e.g., 35 U.S.C. 102 or 103, to depend upon the foreign priority or domestic benefit claim. In such an instance, the item of information may raise a SNQ, depending upon whether the foreign priority or domestic benefit claim is or is not corrected. Similarly, information limited to the correction of other factual information, such as the common ownership of the claims, alone, may not raise a SNQ, in the absence of one or more additional item(s) of information that would cause the patentability of the claims to depend upon the issue of common ownership. For this reason, the Office recommends that any request for supplemental examination that includes an item of information limited to the correction of factual information, should also include one or more additional item(s) of information that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected. See MPEP § 2809.01.
Example of Determination on Information Directed to a Missing Domestic Benefit Claim
The patent owner informs the Office, in a request for supplemental examination, that the effective filing date of the patent to be examined should be corrected to reflect the earlier filing date of a parent patent. The request includes, as an item of information, a copy of the parent patent and a discussion within the body of the request explaining how each claim limitation of the patent to be examined is supported by the disclosure of the parent patent. The request also includes, as a second item of information, a copy of an intervening patent or printed publication that caused the patent owner to reconsider the effective filing date of the claims. In such a case, the examiner will first determine whether the second item of information, i.e., the intervening reference, would raise a substantial new question of patentability (SNQ) if the effective filing date of the patent to be examined remains unchanged and is not corrected.
If the examiner determines that a SNQ would be raised by the intervening reference if the effective filing date of the patent to be examined remains unchanged and is not corrected, the examiner may, at the examiner’s option, then make a preliminary determination of whether the patent owner is entitled to the benefit of the earlier filing date by, for example, analyzing whether the claim limitations of the patent to be examined are supported by the disclosure of the parent patent. A final determination, however, that the patent owner is entitled to the benefit of the earlier filing date will, in general, only be made during any resulting reexamination proceeding, when, for example, any appropriate amendment to the specification, and the required petition for an unintentionally delayed benefit claim under 37 CFR 1.78, may be filed. See MPEP §§ 2813–2813.01. For a discussion of the explanation under 37 CFR 1.610(b)(5) that must be provided in such a case, see MPEP § 2811.01, subsection III. Where the examiner determines that a substantial new question of patentability is raised, reexamination will be ordered, and the domestic benefit claim may be added during the resulting reexamination proceeding. See MPEP § 2809.01 and MPEP § 2816.03, subsection II.
If the examiner determines that the intervening reference does not raise a substantial new question of patentability even if the effective filing date of the patent to be examined remains unchanged and is not corrected, then the item of information limited to the correction of the missing domestic benefit claim, i.e., the parent patent and the discussion within the body of the request showing how each claim limitation is supported by the disclosure of the parent patent, will not be further considered on the merits. The examiner will issue a supplemental examination certificate indicating that no substantial new question of patentability is raised by the request, and the domestic benefit claim will not be added to the patent. See MPEP § 2816.03, subsection II.
Example of a Determination on Information Directed to the Deletion of an Earlier-Obtained Domestic Benefit Claim
The patent owner, in a request for supplemental examination, requests the deletion of an earlier-obtained domestic benefit claim. The request includes, as an item of information, an intervening reference which caused the patent owner to reconsider the effective filing date of the claims, and which would pre-date the effective filing date of the patent to be examined, if the domestic benefit claim is deleted. The request also includes a detailed explanation of how the intervening reference may be applied to the patent claims if the domestic benefit claim is deleted. See MPEP § 2811.01, subsection III. In this case, the examiner would determine whether the intervening reference would raise a substantial new question of patentability (SNQ) affecting the identified claims of the patent if the domestic benefit claim is deleted and the effective filing date of the patent to be examined is corrected to an appropriate later filing date. If the examiner determines that the intervening reference does not raise a SNQ, then the examiner will issue a supplemental examination certificate indicating that no SNQ is raised by the request. If the examiner determines that the intervening reference raises a SNQ, then the examiner will issue a supplemental examination certificate indicating that a SNQ affecting at least one claim of the patent is raised in the request. Reexamination will be ordered, and the domestic benefit claim may be corrected during the resulting reexamination proceeding. Patent owners are reminded, however, that the deletion of the domestic benefit claim in this example will not operate to extend the term of the patent. See MPEP § 2809.01 and MPEP § 2816.03, subsection II.
Determination Where the Request Only Includes Information Limited to the Correction of Factual Information
If the only information provided with the request is solely directed to the correction of factual information, such as the correction of a missing or erroneous foreign priority or domestic benefit claim, or the correction of the common ownership of the claims, which does not, itself, raise a substantial new question of patentability (SNQ), then (1) the supplemental examination certificate will state that no SNQ is raised in the request for supplemental examination; and (2) the reasons for SNQ determination will indicate that the information regarding the correction of factual information did not raise a SNQ because the patent owner did not include with the request any additional items of information that caused the patentability of the claim(s) to depend upon the corrected factual information.
For example, if the request only includes one item of information, and that item of information is limited to the correction of an erroneous domestic benefit claim, such as, e.g., a copy of a parent patent and a discussion within the body of the request showing how each claim limitation is supported by the disclosure of the parent patent, then the reasons for SNQ determination should indicate that the information regarding the domestic benefit claim did not raise a SNQ because the patent owner did not include with the request any intervening art or other information that caused the patentability of the claim(s) to depend upon the domestic benefit claim. See MPEP § 2809.01.
Determination Where the Request Includes Information Limited to Correction of Factual Information and Additional Information Unrelated to the Factual Information to be Corrected
Alternatively, the request may include one or more additional items of information which are unrelated to the factual information to be corrected, but which raise a substantial new question of patentability (SNQ). For example, the patent owner may include, in addition to information limited to the correction of a domestic benefit claim, an item of information such as a reference patent that would qualify as prior art under 35 U.S.C. 102 even if the domestic benefit claim is corrected. If the examiner determines that a SNQ is raised in the request, the examiner may, at the examiner’s option, make a preliminary determination of whether the patent owner is entitled to the benefit of the corrected benefit claim, as discussed previously. Reexamination will be ordered, and the domestic benefit claim may be corrected during the resulting reexamination proceeding. See MPEP § 2809.01 and MPEP § 2816.03, subsection II. If the examiner determines that no SNQ is raised by the additional item(s) of information, the information limited to a correction of the domestic benefit claim will not be further considered on the merits. A supplemental examination certificate, which indicates that no SNQ is raised by the request, will be issued, and the benefit claim will not be corrected.
See also MPEP § 2242, subsections II and III, for more information on how a substantial new question of patentability may be determined in specific situations.