How does the USPTO treat claims held “not invalid” by a federal court in reexamination?
The USPTO may still reexamine claims that have been held “not invalid” by a federal court. According to MPEP § 2259: “Claims finally held as ‘not invalid’ by a federal court, after all appeals, may still be subject to reexamination.” This means that even if a court has upheld the validity of certain claims, the…
Read MoreDoes res judicata apply in patent reexamination proceedings?
Res judicata, or claim preclusion, generally does not apply in patent reexamination proceedings. The MPEP § 2259 states: “A rejection on the grounds of res judicata will not be appropriate in reexamination.” This is because one of the essential elements of res judicata is the involvement of the same parties, and the USPTO is not…
Read MoreWhat is the impact of federal court decisions on reexamination proceedings?
Federal court decisions can significantly impact reexamination proceedings. According to MPEP § 2259: Claims held invalid: “Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding.” Claims held not invalid: “Claims finally held as ‘not invalid’ by a federal court, after all…
Read MoreCan collateral estoppel apply in patent reexamination proceedings?
Collateral estoppel, or issue preclusion, can apply in certain circumstances during patent reexamination proceedings. According to MPEP § 2259: “If the claims in a reexamination proceeding present the same issue(s) as claims that were finally held invalid by a federal court in a proceeding involving a different patent in the same patent family, collateral estoppel…
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