How does the USPTO handle ex parte reexamination when all claims are held invalid by a court?

When a court issues a final decision holding all claims invalid or unenforceable in a patent undergoing ex parte reexamination, the USPTO has specific procedures to follow. According to MPEP 2286:

“If all of the claims being examined in the reexamination proceeding are finally held invalid or unenforceable, the reexamination will be vacated by the CRU or TC Director if the decision was rendered prior to the order, or terminated by the CRU or TC Director as no longer containing a substantial new question of patentability if the decision was rendered subsequent to the order, and the reexamination will be concluded.”

In other words:

• If the court decision comes before the reexamination order, the proceeding will be vacated.
• If the decision comes after the reexamination order, the proceeding will be terminated.

This approach reflects the USPTO’s policy of deferring to final court decisions on patent validity while maintaining the independence of the reexamination process.

To learn more:

• ex parte reexamination
• court invalidation
• USPTO procedures
• patent claims