A Practice Note

Scott Daniels | June 28, 2010

On June 16, we reported the PTO Board decision Ex parte Yasukochi et al., in which the Board refused to consider the patentee’s argument that the examiner’s rejection was improper because it was based on a combination of references that did not constitute a substantial new question of patentability (SNQ) – according to the Board, the examiner’s determination of whether an SNQ exists may be reviewed through Petition to the Director, but not by appeal to the Board.

We are now informed by our good friend and reexamination scholar – Matt Smith – that the PTO issued a Federal Register notice published this past Friday stating that the Board does have jurisdiction to consider the SNQ issue.  The only caveat is that for reexamination proceedings ordered on or after June 25, 2010, the patentee must have first requested reconsideration by the examiner to preserve the issue for appeal to the Board.  Review by petition is still available, but only where the examiner’s finding of an SNQ is in “brazen defiance” of the standard for such a finding.

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