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Posts Tagged: "substantial new question of patentability"

Placing limits on innovation may exclude great inventions before it’s known what has been excluded

Since U.S. patents are granted with exclusive right to exclude, the only way to realize values of inventions is licensing, suing for damages or both. This reward mechanism would depend upon corporate cultural attitude to patents. In the early time, corporations were more willing to license and buy patents. After corporations have developed a culture of using free inventions, patent owners are unable to get rewards and unable to enforce their rights due to excessive enforcement fees. Thus, the only way to recover tiny values is selling patents to enforcement firms… All inventions are rare birds that cannot be mass-produced like articles in production shops. Thus, the patent office must use the most inclusive fishnet with an ability to capture as many inventions as possible. Since each invention is unknown at the time of capturing, one cannot design any method to capture all good inventions. Placing any limitation in the capturing method could exclude great and even greatest inventions before the patent office even knows what would be excluded.

SCOTUS asked to consider proper scope of ex parte reexamination proceedings at USPTO

Pactiv, LLC v. Lee presents a question fundamental to all ex parte reexaminations: whether, after the PTO initiates an ex parte reexamination, that proceeding is limited in scope to the question determined to qualify as the “substantial new question of patentability.” The “substantial new question of patentability” identified by the Director included certain prior art references. But the examiner subsequently rejected several of Pactiv’s claims due to wholly different prior art references. There was never any determination under 35 U.S.C. § 303 that these other references raised a “substantial new question of patentability,” nor did the Director issue the order required under Section 304 identifying a “substantial new question of patentability” based on these wholly different prior art references.

Dueling Press Releases Over Reexamination Ordered by USPTO

The substantial new question of patentability standard is lower than the prima facie case of unpatentability standard needed for a patent examiner to make a valid rejection. In other words, just because a prior art patent or printed publication raises a substantial new question of patentability does not necessarily mean that the prior art patent or printed publication can be used either alone or in combination with the other art of record to reject the claims. Nevertheless, it is most common that a reexamination when ordered will result in the claims all being rejected. Thus, in the clear majority of cases a reexamination request is granted if the request will support a prima facie case of unpatentability.