If, in a determination made under the provisions of subsection 303(a), the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. The patent owner will be given a reasonable period, not less than two months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question, including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination. If the patent owner files such a statement, he promptly will serve a copy of it on the person who has requested reexamination under the provisions of section 302. Within a period of two months from the date of service, that person may file and have considered in the reexamination a reply to any statement filed by the patent owner. That person promptly will serve on the patent owner a copy of any reply filed.
Notes of Decisions
Cited in
34
cases (
3 in the last 5 years), 1983–2025 · leading case:
In Re Berwyn E. Etter, 756 F.2d 852 (Fed. Cir. 1985).
In Re Berwyn E. Etter, 756 F.2d 852 (Fed. Cir. 1985).
· cites it 3× “§ 303 , which requires the Commissioner to determine whether “a substantia] new question of patentability” has been raised, and in 35 U.S.C. § 304 , which provides for initiation of reexamination by the Commissioner sua sponte.”
MercExchange, L.L.C. v. eBay, Inc., 500 F. Supp. 2d 556 (E.D. Va. 2007).
“Tellingly, the PTO only grants a patent reexamination after objectively finding “that a substantial new question of patentability” exists, 35 U.S.C. § 304 , and here, not only has the PTO granted a reexamination request, but it has previously issued two interim actions rejecting…”
Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d 1316 (Fed. Cir. 2016).
“Before that appeal was decided, in June 2013 Cardpool filed a request for ex parte reexamination in accordance with 35 U.S.C. § 304 . For reexamination, Card-pool presented both amended and additional claims, in accordance with 37 C.”
Plumley v. Mockett, 836 F. Supp. 2d 1053 (C.D. Cal. 2010).
“See 35 U.S.C. § 304 (requiring PTO director to issue a reexamination order upon finding “a substantial new question of patentability”).”
Lockwood v. Sheppard, Mullin, Richter & Hampton, 173 Cal. App. 4th 675 (Cal. Ct. App. 2009).
“( 35 U.S.C. § 304 .) At the conclusion of the reexamination, the USPTO issues a certificate canceling any claim of the patent determined to be unpatentable, confirming any claim determined to be patentable, and incorporating in the patent any proposed amended or new claim…”
Patlex Corp., Inc. v. Mossinghoff, 585 F. Supp. 713 (E.D. Pa. 1983).
· cites it 2× “35 U.S.C. § 304 ; 37 C.F.R. § 1.525 . Within a period of not less than two months after the reexamination order, the patent owner may file a statement discussing new questions of patentability and other issues he deems appropriate.”
John H. Bruning v. Ryusho Hirose, 161 F.3d 681 (Fed. Cir. 1998).
“Second, an interference arises from a priority dispute, rather than from a patentability issue or patent defect.”
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