MPEP § 2012.01 — Collateral Estoppel (Annotated Rules)
§2012.01 Collateral Estoppel
This page consolidates and annotates all enforceable requirements under MPEP § 2012.01, 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.
Collateral Estoppel
This section addresses Collateral Estoppel. Primary authority: 35 U.S.C. 251 and 37 CFR 1.56. Contains: 2 permissions and 6 other statements.
Key Rules
Scope of Duty
Therefore, since the Kahn patent was held invalid, inter alia, for “failure to disclose material facts of which * * * [Kahn] was aware” this application may be stricken under 37 CFR 1.56 via the doctrine of collateral estoppel as set forth in Blonder-Tongue, supra. ***** The Patent and Trademark Office… has found no clear justification for not adhering to the doctrine of collateral estoppel under Blonder-Tongue in this case. Applicant has had his day in court. He appears to have had a full and fair chance to litigate the validity of his patent.
Therefore, since the Kahn patent was held invalid, inter alia, for “failure to disclose material facts of which * * * [Kahn] was aware” this application may be stricken under 37 CFR 1.56 via the doctrine of collateral estoppel as set forth in Blonder-Tongue, supra. ***** The Patent and Trademark Office… has found no clear justification for not adhering to the doctrine of collateral estoppel under Blonder-Tongue in this case. Applicant has had his day in court. He appears to have had a full and fair chance to litigate the validity of his patent.
Therefore, since the Kahn patent was held invalid, inter alia, for “failure to disclose material facts of which * * * [Kahn] was aware” this application may be stricken under 37 CFR 1.56 via the doctrine of collateral estoppel as set forth in Blonder-Tongue, supra. ***** The Patent and Trademark Office… has found no clear justification for not adhering to the doctrine of collateral estoppel under Blonder-Tongue in this case. Applicant has had his day in court. He appears to have had a full and fair chance to litigate the validity of his patent.
Therefore, since the Kahn patent was held invalid, inter alia, for “failure to disclose material facts of which * * * [Kahn] was aware” this application may be stricken under 37 CFR 1.56 via the doctrine of collateral estoppel as set forth in Blonder-Tongue, supra. ***** The Patent and Trademark Office… has found no clear justification for not adhering to the doctrine of collateral estoppel under Blonder-Tongue in this case. Applicant has had his day in court. He appears to have had a full and fair chance to litigate the validity of his patent.
AIA Effective Dates
[Editor Note: This MPEP section is only applicable to reissue applications filed before September 16, 2012. For reissue applications filed on or after September 16, 2012, the requirement to state that the errors arose "without any deceptive intention" was eliminated consistent with the America Invents Act (AIA) amendments to 35 U.S.C. 251.]
[Editor Note: This MPEP section is only applicable to reissue applications filed before September 16, 2012. For reissue applications filed on or after September 16, 2012, the requirement to state that the errors arose "without any deceptive intention" was eliminated consistent with the America Invents Act (AIA) amendments to 35 U.S.C. 251.]
Rejections Specific to Reissue
Under pre-AIA 35 U.S.C. 251, the Director can reissue a patent only if there is “error without any deceptive intention.” The Director is without authority to reissue a patent when “deceptive intention” was present during prosecution of the parent application. See In re Clark, 522 F.2d 62, 187 USPQ 209 (CCPA 1975) and In re Heany, 1911 C.D. 138, 180 (1911). Thus, the collateral estoppel barrier applies where reissue is sought of a patent which has been held invalid or unenforceable for “fraud” or “violation of duty of disclosure” in procuring of said patent. It was held in In re Kahn, 202 USPQ 772, 773 (Comm’r Pat. 1979):
Timing of Duty
Under pre-AIA 35 U.S.C. 251, the Director can reissue a patent only if there is “error without any deceptive intention.” The Director is without authority to reissue a patent when “deceptive intention” was present during prosecution of the parent application. See In re Clark, 522 F.2d 62, 187 USPQ 209 (CCPA 1975) and In re Heany, 1911 C.D. 138, 180 (1911). Thus, the collateral estoppel barrier applies where reissue is sought of a patent which has been held invalid or unenforceable for “fraud” or “violation of duty of disclosure” in procuring of said patent. It was held in In re Kahn, 202 USPQ 772, 773 (Comm’r Pat. 1979):
Unenforceability Remedy
Under pre-AIA 35 U.S.C. 251, the Director can reissue a patent only if there is “error without any deceptive intention.” The Director is without authority to reissue a patent when “deceptive intention” was present during prosecution of the parent application. See In re Clark, 522 F.2d 62, 187 USPQ 209 (CCPA 1975) and In re Heany, 1911 C.D. 138, 180 (1911). Thus, the collateral estoppel barrier applies where reissue is sought of a patent which has been held invalid or unenforceable for “fraud” or “violation of duty of disclosure” in procuring of said patent. It was held in In re Kahn, 202 USPQ 772, 773 (Comm’r Pat. 1979):
Citations
| Primary topic | Citation |
|---|---|
| AIA Effective Dates Rejections Specific to Reissue Timing of Duty Unenforceability Remedy | 35 U.S.C. § 251 |
| Scope of Duty | 37 CFR § 1.56 |
| – | MPEP § 2259 |
| Rejections Specific to Reissue Timing of Duty Unenforceability Remedy | In re Clark, 522 F.2d 62, 187 USPQ 209 (CCPA 1975) |
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 § 2012.01 — Collateral Estoppel
Source: USPTO2012.01 Collateral Estoppel [R-08.2017]
[Editor Note: This MPEP section is only applicable to reissue applications filed before September 16, 2012. For reissue applications filed on or after September 16, 2012, the requirement to state that the errors arose “without any deceptive intention” was eliminated consistent with the America Invents Act (AIA) amendments to 35 U.S.C. 251.]
The Supreme Court in Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 169 USPQ 513 (1971) set forth the rule that once a patent has been declared invalid via judicial inquiry, a collateral estoppel barrier is created against further litigation involving the patent, unless the patentee-plaintiff can demonstrate “that he did not have” a full and fair chance to litigate the validity of his patent in “the earlier case.” See also Ex parte Varga, 189 USPQ 209 (Bd. App. 1973). As stated in Kaiser Industries Corp. v. Jones & Laughlin Steel Corp., 515 F.2d 964, 987, 185 USPQ 343, 362 (3rd Cir. 1975):
In fashioning the rule of Blonder-Tongue, Justice White for a unanimous Court made it clear that a determination of patent invalidity, after a thorough and equitable judicial inquiry, creates a collateral estoppel barrier to further litigation to enforce that patent.
Under pre-AIA 35 U.S.C. 251, the Director can reissue a patent only if there is “error without any deceptive intention.” The Director is without authority to reissue a patent when “deceptive intention” was present during prosecution of the parent application. See In re Clark, 522 F.2d 62, 187 USPQ 209 (CCPA 1975) and In re Heany, 1911 C.D. 138, 180 (1911). Thus, the collateral estoppel barrier applies where reissue is sought of a patent which has been held invalid or unenforceable for “fraud” or “violation of duty of disclosure” in procuring of said patent. It was held in In re Kahn, 202 USPQ 772, 773 (Comm’r Pat. 1979):
Therefore, since the Kahn patent was held invalid, inter alia, for “failure to disclose material facts of which * * * [Kahn] was aware” this application may be stricken under 37 CFR 1.56 via the doctrine of collateral estoppel as set forth in Blonder-Tongue, supra.
*****
The Patent and Trademark Office . . . has found no clear justification for not adhering to the doctrine of collateral estoppel under Blonder-Tongue in this case. Applicant has had his day in court. He appears to have had a full and fair chance to litigate the validity of his patent.
See MPEP § 2259 for collateral estoppel in reexamination proceedings.