Question 1

What information from copending U.S. patent applications needs to be disclosed?

Accepted Answer

Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are "material to patentability" of the application in question. This includes:

Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
Applications that disclose similar subject matter
Prior art references from one application that are material to patentability of another application

The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.

It's important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.

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Question 2

How does litigation affect the processing of reissue applications?

Accepted Answer

Litigation can significantly impact the processing of reissue applications. According to MPEP 1442, "reissue applications involved in litigation will be taken up for action in advance of other reissue applications." This means that:

Reissue applications involved in litigation receive even higher priority than other reissue applications.
The USPTO aims to address these applications quickly to support ongoing legal proceedings.
However, in some cases, litigation may also cause a reissue application to be suspended, depending on the specific circumstances of the case.

It's important to note that the exact handling of a reissue application involved in litigation may depend on various factors and could be subject to case-by-case consideration by the USPTO.

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Question 3

When does the USPTO withdraw a restriction requirement?

Accepted Answer

The USPTO withdraws a restriction requirement when certain conditions are met during the examination process. According to MPEP 821.04(a):

"Where restriction was required between independent or distinct products, or between independent or distinct processes, and all claims directed to an elected invention are allowable, the examiner should withdraw any restriction requirement between the elected invention and any nonelected invention that depends from or otherwise requires all the limitations of an allowable claim."

This means that when a generic claim, linking claim, or subcombination claim becomes allowable, the restriction requirement is withdrawn for any previously withdrawn claims that depend on or require all the limitations of the allowable claim.

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Question 4

What is rejoinder in patent examination?

Accepted Answer

Rejoinder is a process in patent examination where previously withdrawn claims are reconsidered for patentability when the elected invention is found allowable. According to MPEP 821.04, "Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits."

The key points about rejoinder are:

It occurs when all claims to the elected invention are in condition for allowance
The nonelected invention(s) must be considered for rejoinder
To be eligible for rejoinder, a nonelected claim must depend from or require all limitations of an allowable claim
Rejoined claims must meet all criteria for patentability

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Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 2000 – Duty Of Disclosure (1)

What information from copending U.S. patent applications needs to be disclosed?

MPEP 2001.06 – Sources Of Information Under 37 Cfr 1.56 (1)

What information from copending U.S. patent applications needs to be disclosed?

Patent Law (1)

What information from copending U.S. patent applications needs to be disclosed?

Patent Procedure (1)

What information from copending U.S. patent applications needs to be disclosed?