What should an examiner do if they become aware of litigation during the examination of a reissue application?

If an examiner becomes aware of litigation involving the patent sought to be reissued during the examination process, and the applicant has not provided details about this litigation, the examiner should take the following steps:

1. In the next Office action, inquire about the litigation details.
2. Use Form paragraph 14.06 for this inquiry.
3. If the litigation details appear material to patentability, make additional inquiries as necessary.

The MPEP provides guidance on this matter: “If the examiner becomes aware of litigation involving the patent sought to be reissued during examination of the reissue application, and applicant has not made the details regarding that litigation of record in the reissue application, the examiner, in the next Office action, should inquire regarding the same.”

For more information on handling litigation-related inquiries, examiners are directed to MPEP § 1442.01.

To learn more:

• patent examination
• reissue application
• litigation inquiry
• examiner procedure