How are claims held invalid by a federal court treated in reexamination proceedings?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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“Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding.”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 a court has definitively ruled that certain claims are invalid, and this decision has been upheld through all possible appeals, the USPTO will not reconsider these claims during a reexamination. They are effectively removed from the scope of the reexamination.

Additionally, the MPEP clarifies: “A rejection on the grounds of res judicata for such withdrawn claims will not be appropriate during reexamination.” This indicates that the USPTO does not use res judicata as a basis for rejecting these claims, but rather simply withdraws them from consideration.