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In re Swanson: Reaffirming a Substantially Old Question

By Bryan Gallo

According to the legislative history accompanying 35 U.S.C. '303(a), Congress intended the re-examination procedure to provide an important “quality check” on patents that would allow the government to remove defective and erroneously granted patents. Indeed, Congress amended 35 U.S.C. '303(a) in 2002 because it disagreed with the restrictive scope of re-examination imposed by the Federal Circuit in In re Portola Packaging Inc., 110 F.3d 786 (Fed. Cir. 1997). In a panel decision by Judge Arthur J. Gajarsa, joined by Judges Alan D. Lourie and William C. Bryson, the court in In re Swanson, 540 F.3d 1368, (Fed. Cir. 2008), held that a piece of prior art relied on for a prior rejection could, nevertheless, create a new question of patentability sufficient to warrant a re-examination. In so ruling, the court made it easier for third parties to invoke the re-examination statute by broadening the ability of prior art, cited or un-cited, to support a re-examination request.

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