Article by Kenneth Cage and Lawrence T. Cullen
The U.S. Congress amended the reexamination statute and the inter partes reexamination statute to broaden the scope of the prior art that may be used to request a reexamination and further amended the inter partes reexamination statute to allow a third-party requester to appeal to the U. S. Court of Appeals for the Federal Circuit.
Prior Art in Reexaminations
Prior to the enactment of this statute, the Federal Circuit held in In re Portola Packaging that a reexamination request could not be granted if it was solely based on prior art that was previously relied upon by the examiner in an examination of the claims because that would not raise a "substantial new question of patentability." The new legislation effectively overrules the holding of In re Portola by amending 35 U.S.C. §§303(a) and 312(a) to add the sentence, "The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed
