What is the effect of a final court decision on an inter partes reexamination?

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.

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• If a final court decision holds claims invalid, those claims will typically be withdrawn from the reexamination.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 reexamination for those claims, but only if certain conditions are met under 35 U.S.C. 317(b).

The MPEP states: Upon the issuance of a final holding of invalidity or unenforceability, the claims held invalid or unenforceable will be withdrawn from consideration in the reexamination if the Office is notified of the final court decision.