How does pending litigation affect the USPTO’s determination in a supplemental examination proceeding?
According to MPEP 2816, pending litigation does not directly affect the USPTO’s determination in a supplemental examination proceeding. The MPEP states:
“In view of the statutory mandate to make the determination on the request within three months, the determination on the request based on the record before the examiner will be made without awaiting a decision by the federal court. It is not realistic to attempt to determine what issues will be treated, or what issues will be finally decided, by the federal court prior to the court decision. Accordingly, the determination on the request will be made without considering the issues allegedly before the court.“
However, patent owners should be aware of the potential implications of supplemental examination on pending litigation, as mentioned in the MPEP: “The patent owner may wish to consider the provisions of 35 U.S.C. 257(c)(1) and 35 U.S.C. 257(c)(2) on the effectiveness of any supplemental examination on already pending litigation when determining whether and when to file a request for supplemental examination.”
To learn more: