What is an earlier concluded examination or review of the patent?
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;
- (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 Office proceeding which has been concluded and which involved the patent.
The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers citation of prior art and ex parte reexamination of patents.
The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.
This question and answer comes from section 2242 of the MPEP. The following is a brief summary of section 2242.
2242 Criteria for Deciding Request
This section lays out the criteria for deciding the request. It covers the meaning of the substantial new question of patentability and how the presence or absence of it determines whether or not reexamination will be ordered. In addition, in order to further clarify the meaning of “a substantial new question of patentability” certain situations are outlined in this section which, if present, should be considered when making a decision as to whether or not “a substantial new question of patentability” is present. Lastly, this section covers the policy where a federal court decision has been issued on the patent.