MPEP § 2303.02 — Other Outstanding Issues with Patents (Annotated Rules)
§2303.02 Other Outstanding Issues with Patents
This page consolidates and annotates all enforceable requirements under MPEP § 2303.02, 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.
Other Outstanding Issues with Patents
This section addresses Other Outstanding Issues with Patents. Primary authority: 35 U.S.C. 41(c), 35 U.S.C. 253, and 35 U.S.C. 254. Contains: 4 requirements, 2 permissions, and 4 other statements.
Key Rules
Assignee as Applicant Signature
A statutory disclaimer under pre-AIA 35 U.S.C. 253, is filed for the sole patent claim directed to the same invention as the claims of the applicant. Since the patentee and applicant must both have claims to the same invention, in accordance with pre-AIA 35 U.S.C. 102(g)(1), no interference can be declared.
A statutory disclaimer under pre-AIA 35 U.S.C. 253, is filed for the sole patent claim directed to the same invention as the claims of the applicant. Since the patentee and applicant must both have claims to the same invention, in accordance with pre-AIA 35 U.S.C. 102(g)(1), no interference can be declared.
Similar to Example 2, a request for correction under 35 U.S.C. 254 or 255, is filed that results in a change to the sole patent claim such that it is no longer directed to the same invention as any claim of the applicant. Again, since the patentee and applicant must both have claims to the same invention, pre-AIA 35 U.S.C. 102(g)(1), no interference can be declared.
Similar to Example 2, a request for correction under 35 U.S.C. 254 or 255, is filed that results in a change to the sole patent claim such that it is no longer directed to the same invention as any claim of the applicant. Again, since the patentee and applicant must both have claims to the same invention, pre-AIA 35 U.S.C. 102(g)(1), no interference can be declared.
Reissue and PTAB Proceedings
Patents that are undergoing reexamination or reissue are subject to the requirement of 37 CFR 41.102 that examination be completed. Patents may, however, be the subject of other proceedings before the Office. For instance, a patent may be the subject of a petition to accept a late maintenance fee in accordance with 35 U.S.C. 41(c), or a request for disclaimer or correction. See pre-AIA 35 U.S.C. 253, 35 U.S.C. 254, 35 U.S.C. 255, and pre-AIA 35 U.S.C. 256. Such issues ordinarily must be resolved before an interference is suggested because they may affect whether or how an interference may be declared. Similarly, any administrative trial ordinarily must be resolved before an interference is suggested.
Patents that are undergoing reexamination or reissue are subject to the requirement of 37 CFR 41.102 that examination be completed. Patents may, however, be the subject of other proceedings before the Office. For instance, a patent may be the subject of a petition to accept a late maintenance fee in accordance with 35 U.S.C. 41(c), or a request for disclaimer or correction. See pre-AIA 35 U.S.C. 253, 35 U.S.C. 254, 35 U.S.C. 255, and pre-AIA 35 U.S.C. 256. Such issues ordinarily must be resolved before an interference is suggested because they may affect whether or how an interference may be declared. Similarly, any administrative trial ordinarily must be resolved before an interference is suggested.
Patents that are undergoing reexamination or reissue are subject to the requirement of 37 CFR 41.102 that examination be completed. Patents may, however, be the subject of other proceedings before the Office. For instance, a patent may be the subject of a petition to accept a late maintenance fee in accordance with 35 U.S.C. 41(c), or a request for disclaimer or correction. See pre-AIA 35 U.S.C. 253, 35 U.S.C. 254, 35 U.S.C. 255, and pre-AIA 35 U.S.C. 256. Such issues ordinarily must be resolved before an interference is suggested because they may affect whether or how an interference may be declared. Similarly, any administrative trial ordinarily must be resolved before an interference is suggested.
Post-Issuance & Maintenance Fees
Patents that are undergoing reexamination or reissue are subject to the requirement of 37 CFR 41.102 that examination be completed. Patents may, however, be the subject of other proceedings before the Office. For instance, a patent may be the subject of a petition to accept a late maintenance fee in accordance with 35 U.S.C. 41(c), or a request for disclaimer or correction. See pre-AIA 35 U.S.C. 253, 35 U.S.C. 254, 35 U.S.C. 255, and pre-AIA 35 U.S.C. 256. Such issues ordinarily must be resolved before an interference is suggested because they may affect whether or how an interference may be declared. Similarly, any administrative trial ordinarily must be resolved before an interference is suggested.
A patent maintenance fee has not been timely paid. By operation of law, 35 U.S.C. 41(b), the patent is considered to be expired. An interference cannot be declared with an expired patent. See pre-AIA 35 U.S.C. 135(a). Consequently, if a petition to accept delayed payment is not granted in accordance with 37 CFR 1.378, then no interference can be declared.
Reissue and Reexamination
Patents that are undergoing reexamination or reissue are subject to the requirement of 37 CFR 41.102 that examination be completed. Patents may, however, be the subject of other proceedings before the Office. For instance, a patent may be the subject of a petition to accept a late maintenance fee in accordance with 35 U.S.C. 41(c), or a request for disclaimer or correction. See pre-AIA 35 U.S.C. 253, 35 U.S.C. 254, 35 U.S.C. 255, and pre-AIA 35 U.S.C. 256. Such issues ordinarily must be resolved before an interference is suggested because they may affect whether or how an interference may be declared. Similarly, any administrative trial ordinarily must be resolved before an interference is suggested.
Late Payment and Reinstatement
A patent maintenance fee has not been timely paid. By operation of law, 35 U.S.C. 41(b), the patent is considered to be expired. An interference cannot be declared with an expired patent. See pre-AIA 35 U.S.C. 135(a). Consequently, if a petition to accept delayed payment is not granted in accordance with 37 CFR 1.378, then no interference can be declared.
Patent Reinstatement
A patent maintenance fee has not been timely paid. By operation of law, 35 U.S.C. 41(b), the patent is considered to be expired. An interference cannot be declared with an expired patent. See pre-AIA 35 U.S.C. 135(a). Consequently, if a petition to accept delayed payment is not granted in accordance with 37 CFR 1.378, then no interference can be declared.
Petition to Reinstate
A patent maintenance fee has not been timely paid. By operation of law, 35 U.S.C. 41(b), the patent is considered to be expired. An interference cannot be declared with an expired patent. See pre-AIA 35 U.S.C. 135(a). Consequently, if a petition to accept delayed payment is not granted in accordance with 37 CFR 1.378, then no interference can be declared.
Pre-AIA 102(f) – Derivation (MPEP 2137)
Inventorship is corrected such that the inventors for the patent and the application are the same. Because pre-AIA 35 U.S.C. 102(g)(1) requires the interference to be with “another inventor,” the correction eliminates the basis for an interference. Other rejections, such as a double-patenting rejection may be appropriate.
AIA vs Pre-AIA 102 (MPEP 2151)
Inventorship is corrected such that the inventors for the patent and the application are the same. Because pre-AIA 35 U.S.C. 102(g)(1) requires the interference to be with “another inventor,” the correction eliminates the basis for an interference. Other rejections, such as a double-patenting rejection may be appropriate.
Citations
| Primary topic | Citation |
|---|---|
| AIA vs Pre-AIA 102 (MPEP 2151) Assignee as Applicant Signature Pre-AIA 102(f) – Derivation (MPEP 2137) | 35 U.S.C. § 102(g)(1) |
| Late Payment and Reinstatement Patent Reinstatement Petition to Reinstate Post-Issuance & Maintenance Fees | 35 U.S.C. § 135(a) |
| Assignee as Applicant Signature Post-Issuance & Maintenance Fees Reissue and PTAB Proceedings Reissue and Reexamination | 35 U.S.C. § 253 |
| Assignee as Applicant Signature Post-Issuance & Maintenance Fees Reissue and PTAB Proceedings Reissue and Reexamination | 35 U.S.C. § 254 |
| Post-Issuance & Maintenance Fees Reissue and PTAB Proceedings Reissue and Reexamination | 35 U.S.C. § 255 |
| Post-Issuance & Maintenance Fees Reissue and PTAB Proceedings Reissue and Reexamination | 35 U.S.C. § 256 |
| Late Payment and Reinstatement Patent Reinstatement Petition to Reinstate Post-Issuance & Maintenance Fees | 35 U.S.C. § 41(b) |
| Post-Issuance & Maintenance Fees Reissue and PTAB Proceedings Reissue and Reexamination | 35 U.S.C. § 41(c) |
| Late Payment and Reinstatement Patent Reinstatement Petition to Reinstate Post-Issuance & Maintenance Fees | 37 CFR § 1.378 |
| Post-Issuance & Maintenance Fees Reissue and PTAB Proceedings Reissue and Reexamination | 37 CFR § 41.102 |
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 § 2303.02 — Other Outstanding Issues with Patents
Source: USPTO2303.02 Other Outstanding Issues with Patents [R-08.2017]
Patents that are undergoing reexamination or reissue are subject to the requirement of 37 CFR 41.102 that examination be completed. Patents may, however, be the subject of other proceedings before the Office. For instance, a patent may be the subject of a petition to accept a late maintenance fee in accordance with 35 U.S.C. 41(c), or a request for disclaimer or correction. See pre-AIA 35 U.S.C. 253, 35 U.S.C. 254, 35 U.S.C. 255, and pre-AIA 35 U.S.C. 256. Such issues ordinarily must be resolved before an interference is suggested because they may affect whether or how an interference may be declared. Similarly, any administrative trial ordinarily must be resolved before an interference is suggested.
Example 1
A patent maintenance fee has not been timely paid. By operation of law, 35 U.S.C. 41(b), the patent is considered to be expired. An interference cannot be declared with an expired patent. See pre-AIA 35 U.S.C. 135(a). Consequently, if a petition to accept delayed payment is not granted in accordance with 37 CFR 1.378, then no interference can be declared.
Example 2
A statutory disclaimer under pre-AIA 35 U.S.C. 253, is filed for the sole patent claim directed to the same invention as the claims of the applicant. Since the patentee and applicant must both have claims to the same invention, in accordance with pre-AIA 35 U.S.C. 102(g)(1), no interference can be declared.
Example 3
Similar to Example 2, a request for correction under 35 U.S.C. 254 or 255, is filed that results in a change to the sole patent claim such that it is no longer directed to the same invention as any claim of the applicant. Again, since the patentee and applicant must both have claims to the same invention, pre-AIA 35 U.S.C. 102(g)(1), no interference can be declared.
Example 4
Inventorship is corrected such that the inventors for the patent and the application are the same. Because pre-AIA 35 U.S.C. 102(g)(1) requires the interference to be with “another inventor,” the correction eliminates the basis for an interference. Other rejections, such as a double-patenting rejection may be appropriate.