How should ongoing litigation be disclosed during the patent examination process?

For ongoing litigation related to a pending patent application, the MPEP 2001.06(c) provides guidance on how to disclose this information:

1. Promptly bring the litigation to the attention of the USPTO.
2. Provide enough information to clearly inform the Office of the nature of the issues in the litigation.
3. Submit relevant litigation materials that are “material to patentability” as defined in 37 CFR 1.56.

The MPEP states: “Litigation and/or trial proceedings that begin after filing of the reissue application should be promptly brought to the attention of the Office. The details and documents from the litigation and/or trial proceedings, insofar as they are ‘material to patentability’ of the reissue application as defined in 37 CFR 1.56, should accompany the application as filed, or be submitted as promptly thereafter as possible.”

This ensures that the examiner has all relevant information to make an informed decision on patentability.

To learn more:

• ongoing litigation
• patent examination
• material information
• duty of disclosure
• USPTO requirements