Issue 86 | June 18, 2003
PTO: New Guidelines For Previously-Considered Prior Art In Reexamination Proceedings
 In a pre-OG notice dated June 6, 2003, the U.S Patent and Trademark Office ("PTO") published "Revised Guidelines for Usage of Previously Cited/Considered Prior Art In Reexamination Proceedings," which sets forth the reexamination policy and practice currently in effect as a result of the revision of the reexamination statute made by Section 13105 of the Patent and Trademark Authorization Act of 2002 ("H.R. 2215"). The Revised Guidelines state that reliance on "old art" does not necessarily preclude the existence of a substantial new question of patentability in any reexamination ordered on or after November 2, 2002.

In November of 2002, amendments to the reexamination statute added the following sentence to the provision regarding the standard by which the Director may grant a request for reexamination: "The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office."

Prior to these amendments, a request for reexamination was only granted where the substantial new question of patentability was based on "new art." In construing the term "substantial new question of patentability," the U.S. Court of Appeals for the Federal Circuit held in In re Portola Packaging Inc. that prior art was essentially precluded from being applied as the sole basis for providing a substantial new question of patentability in a reexamination proceeding if the art was: (1) relied upon to reject any claim in an earlier examination of the patent; or (2) cited in an earlier examination and its relevance to the patentability of any claim was discussed in that examination.

Until now, this so-called "old art" could not be considered as a basis for granting a reexamination. According to the Revised Guidelines, however, "a substantial new question of patentability 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), in view of a material new argument or interpretation presented in the request."

A copy of the Revised Guidelines are available on the Internet at http://www.uspto.gov/web/offices/pac/dapp/
. Please contact the author, Adam E. Crall (adam.crall@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia USA, for more information on this topic.

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