37 CFR 41.127: Judgment

Taken from the Ninth Edition of the MPEP, Revision 07.2022, Published February 2023

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41.127    Judgment.

  • (a) Effect within Office—(1) Estoppel. A judgment disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party’s failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment.
    • (2) Final disposal of claim. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently.
  • (b) Request for adverse judgment. A party may at any time in the proceeding request judgment against itself. Actions construed to be a request for adverse judgment include:
    • (1) Abandonment of an involved application such that the party no longer has an application or patent involved in the proceeding,
    • (2) Cancellation or disclaiming of a claim such that the party no longer has a claim involved in the proceeding,
    • (3) Concession of priority or unpatentability of the contested subject matter, and
    • (4) Abandonment of the contest.
  • (c) Recommendation. The judgment may include a recommendation for further action by the examiner or by the Director. If the Board recommends rejection of a claim of an involved application, the examiner must enter and maintain the recommended rejection unless an amendment or showing of facts not previously of record is filed which, in the opinion of the examiner, overcomes the recommended rejection.
  • (d) Rehearing. A party dissatisfied with the judgment may file a request for rehearing within 30 days of the entry of the judgment. The request must specifically identify all matters the party believes to have been misapprehended or overlooked, and the place where the matter was previously addressed in a motion, opposition or reply.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (d) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30, 2004]