How does concurrent litigation affect ex parte reexamination proceedings?
Concurrent litigation can significantly impact ex parte reexamination proceedings. According to MPEP 2286, when a request for ex parte reexamination is filed as a result of a court order or an agreement sanctioned by a court, or when litigation is stayed for the filing of a reexamination request, “all aspects of the proceeding will be expedited to the extent possible.”
However, it’s important to note that the existence of a court decision does not necessarily preclude the USPTO from finding a substantial new question of patentability. The MPEP states:
“Thus, while the Office may accord deference to factual findings made by the court, the determination of whether a substantial new question of patentability exists will be made independently of the court’s validity determination as it is not controlling on the Office.”
This is due to the different standards of proof and claim interpretation used by courts and the USPTO.
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