37 C.F.R. § 41.127

Judgment

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(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.

[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]

Notes of Decisions

Cited in 10 cases (1 in the last 5 years), 2006–2025 · leading case: Human Genome Sciences, Inc. v. Amgen, Inc.

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Human Genome Sciences, Inc. v. Amgen, Inc. (2008) ded · cites it 6× “§ 146 of the decisions rendered in this interference without proceeding with the scheduled priority phase, Ni requests adverse judgment under 37 C.F.R. § 41.127 (b), since it is unlikely that Ni will prevail on priority during the scheduled priority phase in this proceeding due…”

Loughlin v. Ling (2012) cafc “On March 8, 2011, Loughlin requested adverse judgment under 37 C.F.R. § 41.127 (b) (“Board Rule 127(b)”), in essence conceding that his entire case hinged on the Board’s interpretation of § 135(b)(2).”

Enzo Therapeutics, Inc. v. Yeda Research & Development Co. of the Weizmann Institute of Science (2006) vaed · cites it 2× “On April 18, 2006, Enzo filed a Request for Adverse Judgment Pursuant to 37 C.F.R. § 41.127 (b), which the Board granted on May 2, 2006, effectively concluding the administrative proceedings regarding the Interference.”

Human Genome Sciences, Inc. v. Genentech, Inc. (2008) ded · cites it 2× “j” 37 C.F.R. § 41.127 (b)(3). Section 146 provides in relevant part that “[a]ny party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences on the interference, may have remedy by civil action[.”

Enzo Therapeutics, Inc. v. Yeda Research & Development Co. (2007) vaed “Two days thereafter, on April 18, 2006, Enzo filed a Request for Adverse Judgment Pursuant to 37 C.F.R. § 41.127 (b), which the Board granted on May 2, 2006, effectively concluding the administrative proceedings for the Interference.”

Mayo Clinic Found. v. Iancu (2018) vaed “See 37 C.F.R. § 41.127 (c). If, on the other hand, the PTAB determines that the applicant has priority with respect to a claim, the examiner "should update the search and *429 may, but is not required to, reopen prosecution for any claim not disposed of in the judgment.”

Igt v. Zynga Inc. (2025) cafc · cites it 7× “IGT, opposing institution, ar- gued that interference estoppel under 37 C.F.R. § 41.127 (a)(1) barred Zynga from raising its obviousness challenge.”

Omura v. Shafer (2011) cafc · cites it 4× “37 C.F.R. § 41.127 (b)(3). The request is granted.”

Mayo Foundation v. Iancu (2019) cafc “PTO Regulations Authorize post-interference examina- tion: 37 C.F.R. § 41.127 (c). The [interference] judgment may include a recommendation for further action by the examiner or by the Director.”

Chevron U.S.A. Inc. v. University of Wyoming Research (2020) cafc “125 (“Decision on Motions”) and from the Board’s Judgment under 37 C.F.R. § 41.127 (a) in Interference No.”

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