In re NTP, Inc.

A patent cannot claim the priority date of a previous application if the patent introduces new subject matter; as of 2002, during reexamination an examiner can consider any “substantial new question of patentability” and there is no longer a presumption of full consideration of cited sources during initial examination.

Opinion (Gajarsa): NTP, Inc. (“NTP”) appealed from the Board of Patent Appeals and Interferences (“BPAI”) decision rejecting all 764 claims of U.S. Patent No 6,317,592 (“the ‘592 patent”) during reexamination due to anticipation by prior art. The U.S. Court of Appeals for the Federal Circuit upheld BPAI’s decision rejecting all claims of the ‘592 patent. NTP argued that the BPAI improperly used U.S. Patent No. 6,219,694, issued to Lazaridis, as prior art to reject the ‘592 patent claims. NTP based its argument on the fact that the ‘592 patent claimed, and should have received, the priority date of its parent application, U.S. Patent Application No. 09/161,462 (“Parent Application”). The Court of Appeals agreed with the BPAI, finding that the claim construction given by the BPAI to the term “destination processor” in the Parent Application was proper and the construction did not include the claimed invention in the ‘592 patent. Since the subject matter claimed in the ‘592 patent was not included in the subject matter of the parent application, the ‘592 patent was not entitled to the priority date of the parent application. NTP also argued that rejection of priority was not proper on reexamination. The Court of Appeals held that as of a 2002 amendment to 35 U.S.C. § 303(a) “the existence of a substantial new question of patentability” is proper to consider on reexamination and without evidence that the initial examination considered the question appearing on reexamination there will not be a presumption that the question had been considered before. AFFIRMED.