What is the Office policy regarding reexamination when there has been a federal court decision on the merits of a patent?
The Office policy regarding reexamination when there has been a federal court decision on the merits of a patent is outlined in MPEP § 2642 and MPEP § 2686.04. These sections provide guidance on how to handle requests for reexamination and the subsequent examination phase in such cases. According to MPEP § 2659, “Claims finally…
Read MoreIs res judicata applicable in patent reexamination proceedings?
No, res judicata (claim preclusion) is generally not applicable in patent reexamination proceedings. MPEP § 2659 states: “The doctrine of res judicata based on a court holding in an infringement proceeding is not applicable in reexamination proceedings, because the Office was not a party to the litigation.” This means that even if a court has…
Read MoreHow are claims held invalid by a federal court treated in reexamination proceedings?
Claims that have been finally held invalid by a federal court, after all appeals have been exhausted, are treated differently in reexamination proceedings. According to MPEP § 2659: “Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding.” This means that if…
Read MoreWhat is the significance of the In re Construction Equipment Company case for reexamination proceedings?
The case of In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011) is significant for reexamination proceedings as it reinforces the principle that neither claim preclusion (res judicata) nor issue preclusion (collateral estoppel) typically bar reexamination. According to MPEP § 2659: “See also In re Construction Equipment Company, 665 F.3d…
Read MoreCan collateral estoppel be applied against the USPTO in reexamination proceedings?
No, collateral estoppel (issue preclusion) generally cannot be applied against the USPTO in reexamination proceedings based on a district court holding in an infringement proceeding. This principle was established in the case of In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007). According to MPEP § 2659: “In In…
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