Entry of Court Decision in Patent File

The Solicitor’s Office processes

notices

required by

35 U.S.C.

290

, received from the clerks of the various courts in the United

States, and has them entered in the patent file. However, it is considered desirable that

the

entire court decision

be supplied to the Office for entry into the

patent file. Accordingly, the Office will accept at

any time

from

any party

for placement in the patent file, submissions of the

following: copies of notices of suits, copies of notices regarding other proceedings

involving the patent and copies of decisions from litigation or other proceedings involving

the patent. The Office will accept for entry into the patent file other court papers, or

papers filed in the court, from litigation or other proceedings involving the patent. The

decisions from litigation or other proceedings include final court decisions (even if the

decision is still appealable), decisions to vacate, decisions to remand, and decisions as

to the merits of the patent claims. Non-merit decisions (e.g., on motions for a new venue,

a new trial/discovery date, or sanctions) will not be entered and will be expunged from the

patent file by closing the appropriate paper if they were entered before recognizing their

nature. Further, papers filed in the court from litigation or other proceedings involving

the patent will not be entered into the patent file (and will be expunged if already

entered) if they provide a party’s arguments (e.g., a memorandum in support of summary

judgment). If the argument has an entry right in the reexamination proceeding, it must be

submitted via the proper procedural vehicle (provision(s) of the rules) that provides for

their entry. It is not required nor is it permitted that parties submit copies of copending

reexamination proceedings and applications (which copies can be mistaken for a new

request/filing); rather, submitters may provide a notice identifying the

application/proceeding number and its status

eding, it must be

submitted via the proper procedural vehicle (provision(s) of the rules) that provides for

their entry. It is not required nor is it permitted that parties submit copies of copending

reexamination proceedings and applications (which copies can be mistaken for a new

request/filing); rather, submitters may provide a notice identifying the

application/proceeding number and its status. Any submission that is not permitted entry

will be returned, expunged, or discarded, at the sole discretion of the Office.

It is noted that if the Office, in its sole discretion, deems the volume

of the papers filed from litigation or other proceedings to be too lengthy, the Office may

return, expunge, or discard, at its sole discretion, all or part of the submission. In such

an instance, a party may limit the submission in accordance with what is deemed relevant,

and resubmit the papers. Such submissions must be provided without additional comment.

Persons making such submissions must

limit the submission to the

notification

and not include further arguments or information. Highlighting of

certain text by underlining, fluorescent marker, etc., goes beyond bare notice of the prior

or concurrent proceedings. Any proper submission will be promptly placed on record

(entered) in the patent file. Entry of these submissions is performed by the Files

Repository personnel, unless a reexamination proceeding is pending, in which case, the

Central Reexamination Unit, the Technology Center, or other area of the Office having

responsibility for the reexamination enters the submission.

It is to be further noted that

35 U.S.C. 290

is directed to “courts of

the United States.” Accordingly, any submission of papers from a court outside the United

States (a foreign jurisdiction) will be returned, expunged or discarded, at the sole

discretion of the Office.

Where a request for reexamination has been filed, see

MPEP §

2282

for

ex parte

reexamination and

MPEP §

2686

for

inter partes

reexamination

further noted that

35 U.S.C. 290

is directed to “courts of

the United States.” Accordingly, any submission of papers from a court outside the United

States (a foreign jurisdiction) will be returned, expunged or discarded, at the sole

discretion of the Office.

Where a request for reexamination has been filed, see

MPEP §

2282

for

ex parte

reexamination and

MPEP §

2686

for

inter partes

reexamination. See

MPEP §

2240

and

§ 2242

for handling of requests for

ex parte

reexamination of patents involved in litigation. See

MPEP §

2640

and

§ 2642

for handling of requests for

inter partes

reexamination of patents involved in litigation.

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