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[astrojudo]

I just had an Examiner retract his initial granting of a re-exam request based on a SNQ. He granted the request last week and then this week he issued the re-exam certificate basically retracting the rejections and his initial granting of the request. How often does this happen? Is this even legal? Can I appeal??

Thanks.

[khazzah]

I just had an Examiner retract his initial granting of a re-exam request based on a SNQ.

Inter partes or ex partes? And if inter, are you the patentee or the requester?

[astrojudo]

ex parte and i'm requester

[khazzah]

I just had an Examiner retract his initial granting of a re-exam request based on a SNQ. He granted the request last week and then this week he issued the re-exam certificate basically retracting the rejections and his initial granting of the request. How often does this happen? Is this even legal? Can I appeal??

As a general rule, Examiners are allowed to change their mind on just about anything. So absent any special rule, I'd say Yeah, the Examiner is allowed to do this.

I don't know much about reexams, so maybe I'm off base here, but maybe you should ignore the "Examiner changed his mind" angle and instead traverse the merits -- petition his denial of SNQ.

Unless the Examiner's latest action wasn't actually a denial of SNQ, but was a "re-exam certificate", meaning the patent "passed" reexam? [Which is different than there being no reexam in the first place, I suppose.]

[lazyexaminer]

I just had an Examiner retract his initial granting of a re-exam request based on a SNQ. He granted the request last week and then this week he issued the re-exam certificate basically retracting the rejections and his initial granting of the request. How often does this happen? Is this even legal? Can I appeal??

Thanks.

Just to clarify...you say this week he issued the reexam certificate. This can't be right, because the examiner doesn't issue the certificate, did he issue a notice of intent to issue the certificate? Stating that the claims are patentable/confirmed? If so, that is no different than a first action allowance in a regular application. He looked at your art and decided it wasn't good. It doesn't happen a whole lot, but it happens.

You say he retracted the rejections...saying that there is an SNQ is not the same as saying there is a rejection, something can be important to a reasonable examiner yet still fail to raise to the level of rejection. So his previous grant of the request was not necessarily agreeing that your rejections raised a prima facie case. Allowing the claims now is not retracting anything.

Of course this is legal, I don't mean to be rude but do you think every granted reexam request means the claims will be cancelled? Sometimes claims are allowed, it happens.

The requester has no appeal rights in ex parte reexam. They aren't going to accept petitions or other papers either, as it's totally ex parte after the order. You have little recourse if any at this point.

[This is all assuming that what you got was a notice of intent to issue the certificate, because you weren't clear. If you were instead saying that the examiner retracted the order and has now denied the request, that's a different story. What forms did you actually get?]

[khazzah]

You say he retracted the rejections...saying that there is an SNQ is not the same as saying there is a rejection, something can be important to a reasonable examiner yet still fail to raise to the level of rejection. So his previous grant of the request was not necessarily agreeing that your rejections raised a prima facie case.

Sounds like you're saying that the standard for a Substantial New Question of Patentability is lower than the standard for a prima facie rejection. That doesn't make sense to me. Seems like the SNQ standard should be higher because we shouldn't mess with the patent owner's rights in an issued patent unless we're pretty sure that the prior art invalidates one or more claims.

What am I missing?

The requester has no appeal rights in ex parte reexam. They aren't going to accept petitions or other papers either, as it's totally ex parte after the order. You have little recourse if any at this point.

So the requester can petition a denial of SNQ, but once the SNQ is granted and prosecution begins, the requester is out of the game.

Makes sense ... that's the deal the requester agreed to by filing the request ex parte. If the requester wanted more opportunities to fight, he should have filed inter partes.

[lazyexaminer]

Yep, I am saying that. An SNQ is definitely a lesser standard than an actual rejection. And you say it doesn't make sense for SNQ to be a lower standard than prima facie rejection, but it does. Otherwise, reexams would only be granted any time rejections are appropriate, but I think they should be granted, as the law says, so long as a new question of patentability is raised, even in cases where a rejection might not be appropriate. As defined in the MPEP, an SNQ is that a reasonable examiner would find the reference important when considering patentability, but not necessarily that a rejection must be made. That is certainly less than a prima facie case of rejection. just my opinion, feel free to fight over it...

[bleedingpen]

Yep, I am saying that. An SNQ is definitely a lesser standard than an actual rejection. And you say it doesn't make sense for SNQ to be a lower standard than prima facie rejection, but it does. Otherwise, reexams would only be granted any time rejections are appropriate, but I think they should be granted, as the law says, so long as a new question of patentability is raised, even in cases where a rejection might not be appropriate. As defined in the MPEP, an SNQ is that a reasonable examiner would find the reference important when considering patentability, but not necessarily that a rejection must be made. That is certainly less than a prima facie case of rejection. just my opinion, feel free to fight over it...

To piggy back on this, I have seen several instances where an SNQ was presented, but on the first Office Action all claims were indicated as allowable and the re-exam certificate was then issued (with or without PO's statement).

[khazzah]

As defined in the MPEP, an SNQ is that a reasonable examiner would find the reference important when considering patentability, but not necessarily that a rejection must be made. That is certainly less than a prima facie case of rejection. just my opinion, feel free to fight over it...

Nope, don't have enough reexam experience to do that. Thanks for the info.