What is the Office policy regarding reexamination when there has been a federal court decision on the merits of a patent?
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According to MPEP § 2659, “Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding.”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.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2659 - Res Judicata And Collateral Estoppel In Reexamination Proceedings,
Patent Law,
Patent Procedure