MPEP § 1442.05 — Court Ordered Filing of Reissue Application (Annotated Rules)
§1442.05 Court Ordered Filing of Reissue Application
This page consolidates and annotates all enforceable requirements under MPEP § 1442.05, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Court Ordered Filing of Reissue Application
This section addresses Court Ordered Filing of Reissue Application. Contains: 1 requirement, 1 permission, and 2 other statements.
Key Rules
Consent of Assignee
In most instances, the reissue-examination procedure is instituted by a patent owner who voluntarily files a reissue application as a consequence of related patent litigation. Some federal district courts in earlier decisions have required a patentee-litigant to file a reissue application as a consequence of the patent litigation. However, the Court of Appeals for the Federal Circuit held in Green v. The Rich Iron Co., 944 F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir. 1991) that a federal district court in an infringement case could not compel a patentee to seek reissue by the USPTO.
It is to be noted that only a patentee or assignee may file a reissue patent application. An order by a court for a different party to file a reissue will not be binding on the Office.
Disclosure of Litigation
In most instances, the reissue-examination procedure is instituted by a patent owner who voluntarily files a reissue application as a consequence of related patent litigation. Some federal district courts in earlier decisions have required a patentee-litigant to file a reissue application as a consequence of the patent litigation. However, the Court of Appeals for the Federal Circuit held in Green v. The Rich Iron Co., 944 F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir. 1991) that a federal district court in an infringement case could not compel a patentee to seek reissue by the USPTO.
PTAB Jurisdiction
It is to be noted that only a patentee or assignee may file a reissue patent application. An order by a court for a different party to file a reissue will not be binding on the Office.
Citations
| Primary topic | Citation |
|---|---|
| Consent of Assignee Disclosure of Litigation | for the Federal Circuit held in Green v. The Rich Iron Co., 944 F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir. 1991) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1442.05 — Court Ordered Filing of Reissue Application
Source: USPTO1442.05 Court Ordered Filing of Reissue Application [R-10.2019]
In most instances, the reissue-examination procedure is instituted by a patent owner who voluntarily files a reissue application as a consequence of related patent litigation. Some federal district courts in earlier decisions have required a patentee-litigant to file a reissue application as a consequence of the patent litigation. However, the Court of Appeals for the Federal Circuit held in Green v. The Rich Iron Co., 944 F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir. 1991) that a federal district court in an infringement case could not compel a patentee to seek reissue by the USPTO.
It is to be noted that only a patentee or assignee may file a reissue patent application. An order by a court for a different party to file a reissue will not be binding on the Office.