What is the impact of federal court decisions on reexamination proceedings?
Federal court decisions can significantly impact reexamination proceedings. According to MPEP § 2259:
- Claims held invalid: “Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding.”
- Claims held not invalid: “Claims finally held as ‘not invalid’ by a federal court, after all appeals, may still be subject to reexamination.”
This means that while invalidated claims are excluded from reexamination, claims upheld by courts can still be reconsidered by the USPTO.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2259 - Res Judicata And Collateral Estoppel In Reexamination Proceedings,
Patent Law,
Patent Procedure