Invalidity/validity question

Q) Federal Court Decisions binding for Office (4.00.19p)

19. Which of the following is true?

(A) A final decision by a United States District Court finding a patent to be invalid

will have no binding effect during reexamination since the PTO may still find the

claims of the patent to be valid.

(B) A final decision by a United States District Court finding a patent to be valid will

have no binding effect during reexamination since the PTO may still find the

claims of the patent to be invalid.

(C) Once the Court of Appeals for the Federal Circuit determines that the claims of a

patent are valid, the USPTO may not find such claims invalid based upon newly

discovered art.

(D) If a patentee fails to disclose prior art to the PTO during regular prosecution, the

only way that a patentee can disclose later discovered prior art to the PTO after

issuance is by filing a request for reexamination.

(E) Once a patent claim is found valid during a District Court Proceeding then the

patent claims are entitled to a higher standard of patentability and the presumption

of validity can only be rebutted by clear and convincing evidence in a concurrent

or later reexamination proceeding.

19. ANSWER: (B) is the most correct answer. As to (A) and (B) see MPEP 2286, page 2200-97,

stating, “[t]he issuance of a final district court decision upholding validity during a

reexamination also will have no binding effect on the examination of the reexamination.” Thus,

(A) is incorrect because a final holding of invalidity is binding on the PTO. As to (C), the PTO

may discover new art and find claims unpatentable as that art would raise a substantial new

question. MPEP §§ 2216 and 2286. As to (D), the patentee could file a prior art statement under

35 U.S.C. § 301, or disclose prior art in reissue application if the original patent (through error

without deceptive intent) is defective or claims more or less than should be claimed. As to (E),

preponderance of evidence standard does not change in reexamination proceedings. MPEP 2286.