Out of the blue, the USPTO published in the June 25th Federal Register a notice “clarifying the procedure for seeking review of a determination that a substantial new question (SNQ) has been raised in an ex parte reexamination proceeding.”

Read the full notice here: Clarification on the Procedure for Seeking Review of a Finding of a Substantial New Question of Patentability in Ex Parte Reexamination Proceedings

The notice clarifies that Director Kappos has delegated to the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) the authority to review issues relating to the grant of the SNQ.  The Chief Judge can further delegate the SNQ review to a panel of Administrative Patent Judges who are deciding the appeal in the ex parte reexamination proceeding.  As is currently the case, the notice identifies that separate from the BPAI’s consideration of the SNQ issue, a patent owner may file a petition under 37 CFR 1.181(a)(3) to vacate an ex parte reexamination as “ultra vires.”

This right of appeal is not interlocutory.  Instead, for an ex parte reexamination proceeding ordered before June 25, 2010, the patent owner may include a challenge to the finding of an SNQ as a separate ground in an appeal to the BPAI, even if the patent owner did not request that the Central Reexamination Unit (CRU) reconsider the finding of the SNQ during prosecution.

For ex parte reexaminations proceedings ordered on or after June 25, 2010, the patent owner must request that the CRU reconsider the grant of the SNQ as part of a full response to the Office action in order to preserve the issue for appeal.

The notice procedures do not apply to inter partes reexamination proceedings.  A determination by the USPTO in an inter partes reexamination either that no SNQ has been raised or that a reference raises a SNQ is final and non-appealable.  See 35 U.S.C. 312(c).

This change is a good one for the reexamination system.  However, it can be argued that it does not solve the problem of serial ex parte reexaminations filed by third party requesters to harrass the patent owner because it does not provide an interlocutory appeal.  Moreover, it can also be argued that 35 U.S.C. needs to be amended to apply this procedure to a grant of an SNQ in an inter partes reexamination.