How does a final federal court decision affect a supplemental examination proceeding?
The effect of a final federal court decision on a supplemental examination proceeding depends on the nature of the decision. According to MPEP 2816: Upholding validity: “A final federal court decision, i.e., after all appeals, which upholds the validity of one or more of the patent claims also has no binding effect on the supplemental…
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 MoreWhat is the effect of a final court decision on an inter partes reexamination?
A final court decision can have significant effects on an inter partes reexamination: If a final court decision holds claims invalid, those claims will typically be withdrawn from the reexamination. If all claims being examined are held invalid, the reexamination may be terminated. A final court decision upholding validity may lead to termination of the…
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