37 CFR 42.73: Judgment

Taken from the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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42.73    Judgment.

  • (a) A judgment, except in the case of a termination, disposes of all issues that were, or by motion reasonably could have been, raised and decided.
  • (b) Request for adverse judgment. A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include:
    • (1) Disclaimer of the involved application or patent;
    • (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial;
    • (3) Concession of unpatentability or derivation of the contested subject matter; and
    • (4) Abandonment of the contest.
  • (c) Recommendation. The judgment may include a recommendation for further action by an examiner or by the Director.
  • (d) Estoppel.
    • (1) Petitioner other than in derivation proceeding. A petitioner, or the real party in interest or privy of the petitioner, is estopped in the Office from requesting or maintaining a proceeding with respect to a claim for which it has obtained a final written decision on patentability in an inter partes review, post-grant review, or a covered business method patent review, on any ground that the petitioner raised or reasonably could have raised during the trial, except that estoppel shall not apply to a petitioner, or to the real party in interest or privy of the petitioner who has settled under 35 U.S.C. 317 or 327.
    • (2) In a derivation, the 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.
    • (3) Patent applicant or owner. A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:
      • (i) A claim that is not patentably distinct from a finally refused or canceled claim; or
      • (ii) An amendment of a specification or of a drawing that was denied during the trial proceeding, but this provision does not apply to an application or patent that has a different written description.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]