How does a final federal court decision affect a supplemental examination proceeding?

The effect of a final federal court decision on a supplemental examination proceeding depends on the nature of the decision. According to MPEP 2816:

1. Upholding validity: “A final federal court decision, i.e., after all appeals, which upholds the validity of one or more of the patent claims also has no binding effect on the supplemental examination proceeding.”
2. Invalidity or unenforceability: “A final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims held invalid or unenforceable.”

The MPEP further states: “The Office will not intentionally conduct supplemental examination of patent claims which have been finally held to be invalid or unenforceable by a federal court.“

If a final court decision is rendered after the supplemental examination certificate has been issued, the certificate will not be vacated. However, if reexamination has been ordered, claims held invalid or unenforceable will be withdrawn from consideration, and if all claims are affected, the reexamination will be terminated.

To learn more:

• Supplemental Examination
• Final Court Decision
• USPTO
• Patent Claims
• Validity