What is the Office policy regarding reexamination when there has been a federal court decision on the merits of a patent?

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.

The Office policy regarding reexamination when there has been a federal court decision on the merits of a patent is outlined in MPEP § 2642 and MPEP § 2686.04. These sections provide guidance on how to handle requests for reexamination and the subsequent examination phase in such cases.

According to MPEP § 2659, “Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding.”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 on the invalidity of certain claims, those claims will not be subject to reexamination.