How does the USPTO handle newly discovered prior art in inter partes reexamination when there’s concurrent litigation?

The USPTO’s handling of newly discovered prior art in inter partes reexamination with concurrent litigation is as follows:

• Estoppel under 35 U.S.C. 317(b) does not apply to newly discovered prior art unavailable during the litigation.
• The patent owner must show that the art was known to the requester at a time when it could have been raised in the litigation.
• If the art is truly new and unavailable, the reexamination can proceed based on those new issues.

The MPEP clarifies: Prior art was unavailable at the time if it was not known to the individuals who were involved in the civil action or inter partes reexamination proceeding on behalf of the third-party requester and the USPTO.

To learn more:

• inter partes reexamination
• newly discovered prior art
• concurrent litigation
• USPTO procedures