What happens to pending applications during a 35 U.S.C. 145 civil action?

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 a civil action under 35 U.S.C. 145 is initiated, it impacts the status of the pending patent application. The MPEP provides clear guidance on this:

“When an applicant files a civil action under 35 U.S.C. 145, the patent application remains pending, but in a suspended status, until the civil action is terminated.”

This suspension means that:

• The USPTO will not take any action on the application while the civil action is ongoing.
• The applicant cannot make amendments or file continuation applications based on the suspended application.
• The suspension remains in effect until the civil action reaches a final conclusion.

It’s crucial for applicants to consider this suspension when deciding whether to pursue a civil action, as it may delay the potential issuance of their patent.