What are the disclosure requirements for reissue applications involved in litigation?

For reissue applications where the original patent has been involved in litigation, the MPEP 2001.06(c) outlines specific disclosure requirements:

1. The existence of such litigation must be brought to the examiner’s attention at the time of filing or shortly after.
2. This information can be disclosed in the reissue oath/declaration or in a separate paper, preferably accompanying the application.
3. Details and documents from the litigation, insofar as they are “material to patentability,” should be submitted with the application or as promptly as possible.

The MPEP states: “Where a patent for which reissue is being sought is, or has been, involved in litigation and/or trial proceeding which raised a question material to examination of the reissue application, such as the validity of the patent, or any allegation of ‘fraud,’ ‘inequitable conduct,’ or ‘violation of duty of disclosure,’ the existence of such litigation and/or trial proceeding must be brought to the attention of the examiner by the applicant at the time of, or shortly after, filing the application.”

To learn more:

• reissue applications
• litigation disclosure
• patent examination
• material information
• USPTO disclosure