What are the special considerations for Office actions in litigation-related or PTAB trial-related reissue applications?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When issuing Office actions for litigation-related or PTAB trial-related reissue applications, examiners must consider several special factors:

• A 2-month reply period is typically set for these applications
• The Office action must inform applicants that 37 CFR 1.136(a) provisions are not available
• Extensions beyond 2 months require clear justification under 37 CFR 1.136(b)
• In some cases, up to 3 months may be initially set if clearly justified

The MPEP states: The Office action will inform applicant that the provisions of 37 CFR 1.136(a) are not available. Of course, up to 3 months may be initially set for reply if the examiner, consulting with their supervisor, determines such a period is clearly justified.

These considerations ensure that the reissue examination proceeds efficiently while acknowledging the complexities of concurrent litigation or PTAB trials.