What is the effect of a final court decision on an ex parte reexamination?
A final court decision can have a significant impact on an ex parte reexamination proceeding. According to MPEP 2286:
“A final holding of claim invalidity or unenforceability (after all appeals), however, 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 because such claims no longer exist in the patent.”
This means that if a court issues a final decision holding a claim invalid or unenforceable, the USPTO will withdraw that claim from consideration in the reexamination. However, the reexamination will continue for any remaining claims that were not found invalid or unenforceable by the court.
It’s important to note that a final court decision holding a claim “not invalid” does not bind the USPTO. The MPEP explains that this is because courts and the USPTO use different standards of proof and claim construction.
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