Entry of Court Decision in Patent File
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
2207 Entry of Court Decision in Patent File [R-07.2015]
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. 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. 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.