How does the USPTO handle allowed claims after a Federal Circuit decision?

The USPTO’s handling of allowed claims after a Federal Circuit decision depends on the specific outcome of the appeal. According to MPEP 1216.01:

“Where the case includes one or more allowed claims, including claims allowed by the examiner prior to appeal and claims whose rejections were reversed by either the Board or the court, the proceedings are considered terminated only as to any claims which still stand rejected.”

The MPEP provides two examples of how the examiner should proceed:

1. Convert dependent claims into independent form by examiner’s amendment, cancel rejected claims, and issue the application.
2. Set a 2-month time limit for the appellant to rewrite dependent claims in independent form.

If no formal matters remain, the examiner will pass the application to issue on the allowed claims or, for reexaminations, issue a “Notice of Intent to Issue a Reexamination Certificate.”

To learn more:

• Federal Circuit
• Patent Appeals
• Allowed Claims
• USPTO Procedure