MPEP § 1449 — Protest Filed in Reissue Where Patent Is in Interference or Contested Case (Annotated Rules)
§1449 Protest Filed in Reissue Where Patent Is in Interference or Contested Case
This page consolidates and annotates all enforceable requirements under MPEP § 1449, 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.
Protest Filed in Reissue Where Patent Is in Interference or Contested Case
This section addresses Protest Filed in Reissue Where Patent Is in Interference or Contested Case. Contains: 1 guidance statement, 3 permissions, and 1 other statement.
Key Rules
Examiner Action on Protest
In consultation with the examiner and the PTAB, a TC TQAS or SPRS will check to see that:
- (A) all parties to the interference or contested case are aware of the filing of the reissue; and
- (B) the Office does not allow claims in a reissue that are unpatentable over the pending interference count(s), or found unpatentable in the interference proceeding or contested case. After the PTAB has finished their review, the PTAB will inform the examiner that they may now act on the reissue application. See MPEP § 1441.01 for a discussion as to protests under 37 CFR 1.291 in reissue applications.
In consultation with the examiner and the PTAB, a TC TQAS or SPRS will check to see that:
…
After the PTAB has finished their review, the PTAB will inform the examiner that they may now act on the reissue application. See MPEP § 1441.01 for a discussion as to protests under 37 CFR 1.291 in reissue applications.
Protest Timing Requirements
If a protest (see MPEP Chapter 1900) is filed in a reissue application related to a patent involved in a pending interference proceeding or contested case before the Patent Trial and Appeal Board (PTAB), the reissue application should be referred to the PTAB before considering the protest and taking any action on the reissue application. A contested case includes a derivation proceeding, an inter partes review, a post-grant review, and a covered business method review.
PTAB Contested Case Procedures
If a protest (see MPEP Chapter 1900) is filed in a reissue application related to a patent involved in a pending interference proceeding or contested case before the Patent Trial and Appeal Board (PTAB), the reissue application should be referred to the PTAB before considering the protest and taking any action on the reissue application. A contested case includes a derivation proceeding, an inter partes review, a post-grant review, and a covered business method review.
Protest Practice
In consultation with the examiner and the PTAB, a TC TQAS or SPRS will check to see that:
…
(B) the Office does not allow claims in a reissue that are unpatentable over the pending interference count(s), or found unpatentable in the interference proceeding or contested case.
Citations
| Primary topic | Citation |
|---|---|
| Examiner Action on Protest Protest Practice | 37 CFR § 1.291 |
| Examiner Action on Protest Protest Practice | MPEP § 1441.01 |
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 § 1449 — Protest Filed in Reissue Where Patent Is in Interference or Contested Case
Source: USPTO1449 Protest Filed in Reissue Where Patent Is in Interference or Contested Case [R-08.2017]
If a protest (see MPEP Chapter 1900) is filed in a reissue application related to a patent involved in a pending interference proceeding or contested case before the Patent Trial and Appeal Board (PTAB), the reissue application should be referred to the PTAB before considering the protest and taking any action on the reissue application. A contested case includes a derivation proceeding, an inter partes review, a post-grant review, and a covered business method review.
In consultation with the examiner and the PTAB, a TC TQAS or SPRS will check to see that:
- (A) all parties to the interference or contested case are aware of the filing of the reissue; and
- (B) the Office does not allow claims in a reissue that are unpatentable over the pending interference count(s), or found unpatentable in the interference proceeding or contested case. After the PTAB has finished their review, the PTAB will inform the examiner that they may now act on the reissue application. See MPEP § 1441.01 for a discussion as to protests under 37 CFR 1.291 in reissue applications.
It is particularly important that the reissue application not be allowed without the administrative patent judge’s approval.