Terms and Concepts

Scope of Proceedings

The scope of available validity challenges is far broader in district court litigation than it is in patent reexamination proceedings.  In district court litigation, patent validity may be challenged under any statutory provision, including provisions set forth at 35 U.S.C. §§ 101, 102, 103 and 112.  Further, patent challengers also may argue that the asserted patent is unenforceable due to either inequitable conduct or laches.

Patent reexamination, on the other hand, is far more limited in scope.  By statute, reexaminations may only be initiated when the PTO is presented with a “substantial new question of patentability” or (“SNQ”) [35 U.S.C. §§ 303, 304, 312, 313].  An SNQ only may be predicated on prior art printed publications and may not be cumulative to information already considered by the PTO in original prosecution or in prior reexaminations.  An SNQ may not be predicated on any other statutory provisions, including whether the claims contain statutory subject matter under section 101 or whether there exists an “on-sale-bar” or “public use” under section 102(b).  Any party considering a parallel reexamination should be aware of the limited scope available to challenge the patentability during a patent reexamination.