MPEP Section 2616, Substantial New Question of Patentability

Executive summary:

This document contains one section of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Fifth Revision (August 2006). This page was last updated in July 2007. You may return to the section index to find a particular section. Alternatively, you may search the MPEP use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the MPEP in the pop-up list.

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2616 Substantial New Question of Patentability

Under 35 U.S.C. 312 and 313, the Office must determine whether "a substantial new question of patentability" affecting any claim of the patent has been raised. 37 CFR 1.915(b)(3) requires that the request include "a statement pointing out each substantial new question of patentability based on the cited patents and printed publications...." Accordingly, it is extremely important that the request clearly set forth in detail exactly what the third party requester considers the "substantial new question of patentability" to be. The request should point out how any questions of patentability raised are substantially different from those raised in the previous examination of the patent before the Office. ** See * MPEP § 2642.

Questions relating to grounds of rejection other than those based on prior art patents or printed publications should not be included in the request and will not be considered by the examiner if included. Examples of such questions that will not be considered are questions as to public use, on sale, fraud, and compliance of the claims with 35 U.S.C. 112.

Affidavits or declarations which explain the contents or pertinent dates of prior art patents or printed publications in more detail may be considered in reexamination. See MPEP § 2258.

See MPEP § 2617 for a discussion of the statement in the request which applies the prior art patents or printed publications (the art) to establish the substantial new question(s) of patentability upon which the request for reexamination is based.