How does the USPTO handle ex parte reexamination when all claims are held invalid by a court?
When a court issues a final decision holding all claims invalid or unenforceable in a patent undergoing ex parte reexamination, the USPTO has specific procedures to follow. According to MPEP 2286: “If all of the claims being examined in the reexamination proceeding are finally held invalid or unenforceable, the reexamination will be vacated by the…
Read MoreWhat is the difference between USPTO and court standards in patent validity determinations?
The USPTO and federal courts use different standards when determining patent validity, which can lead to different outcomes. MPEP 2286 explains this distinction: “Specifically, invalidity in a district court must be shown by ‘clear and convincing’ evidence, whereas in the Office, it is sufficient to show unpatentability by a ‘preponderance of evidence.’ Since the ‘clear…
Read MoreWhat are the obligations of a patent owner during ex parte reexamination when there is concurrent litigation?
During ex parte reexamination, a patent owner has specific obligations regarding concurrent litigation. According to MPEP 2286: “The patent owner is required by 37 CFR 1.565(a) to call the attention of the Office to any prior or concurrent proceeding in which the patent is involved or was involved. Thus, the patent owner has an obligation…
Read MoreWhat 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…
Read MoreHow does concurrent litigation affect ex parte reexamination proceedings?
Concurrent litigation can significantly impact ex parte reexamination proceedings. According to MPEP 2286, when a request for ex parte reexamination is filed as a result of a court order or an agreement sanctioned by a court, or when litigation is stayed for the filing of a reexamination request, “all aspects of the proceeding will be…
Read More