Patent re-examination is an administrative proceeding in which an issued patent is re-examined by the PTO because a “substantial new question of patentablity” arose after the issuance of that patent. Re-examination is designed to protect the public by ferreting out invalid patents without the expense of litigation. In addition, patent re-examination allows courts to refer patent validity questions to an administrative agency with expertise in both the patent laws and the technology involved. Patent re-examination can reinforce investor confidence in the certainty of patent rights by affording an opportunity to review patents of doubtful validity. Furthermore, patent re-examination provides an opportunity to patent holders as well, allowing them to strengthen the validity of a patent if new information comes to light.
H.R. 1866 would overrule the U.S. Court of Appeals for the Federal Circuit’s decision in the case of In re Portola Packaging Inc. In that case, the court held that as a matter of law, a substantial new question of patentablity cannot arise if the references asserted by the requestor were already relied upon by the examiner at the time the patent was initially examined. In other words, a re-examination proceeding cannot be granted if the reference that purports to raise a new issue of patentablity was applied by the examiner during the original examination process. Accordingly, the most effective way to meet the substantial new question threshold has been the citation of prior art not previously considered by the examiner.
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