How should information from related litigation and trial proceedings be handled?
Information from related litigation and trial proceedings, including those conducted by the Patent Trial and Appeal Board (PTAB), must be disclosed if it is material to pending related patent applications. The MPEP states: “Where the subject matter for which a patent is being sought is or has been involved in litigation and/or a trial proceeding,…
Read MoreWhat types of court decisions can be entered into a patent file?
The U.S. Patent and Trademark Office (USPTO) accepts various types of court decisions for entry into patent files. According to MPEP 2207, these include: Final court decisions (even if still appealable) Decisions to vacate Decisions to remand Decisions on the merits of patent claims The MPEP states: The decisions from litigation or other proceedings include…
Read MoreHow does litigation or a PTAB trial affect the time extensions for reissue applications?
For reissue applications being examined during litigation or PTAB trials, or after such proceedings have been stayed or dismissed: Applicants are normally given 2 months to reply to Office actions This 2-month period can only be extended upon showing clear justification under 37 CFR 1.136(b) The provisions of 37 CFR 1.136(a) for automatic extensions are…
Read MoreHow does litigation affect the processing of reissue applications?
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…
Read MoreWhat are the exceptions to immediate action on reissue applications?
While reissue applications generally receive immediate attention, there are two main exceptions where they may be suspended or delayed: Litigation: If the reissue application is involved in ongoing litigation. Pending PTAB Trial: If there is a pending trial before the Patent Trial and Appeal Board (PTAB). The MPEP 1442 specifies that “A pending trial before…
Read MoreWhat are the requirements for a reissue application filed during litigation?
What are the requirements for a reissue application filed during litigation? When a reissue application is filed during litigation, there are specific requirements that must be met: Notification to the Office: The applicant must notify the Office that the patent is involved in litigation. Nature of the litigation: The applicant must provide information about the…
Read MoreWhat is the duty of a reissue applicant regarding prior or concurrent proceedings?
According to 37 CFR 1.178(b), a reissue applicant has a duty to inform the USPTO about any prior or concurrent proceedings involving the patent for which reissue is requested. This includes: Interferences or trials before the Patent Trial and Appeal Board Reissues Reexaminations Litigations The MPEP states: “Where the patent for which reissue is being…
Read MoreWhat are the special considerations for Office actions in litigation-related or PTAB trial-related reissue applications?
When issuing Office actions for litigation-related or PTAB trial-related reissue applications, examiners must consider several special factors: A 2-month reply period is typically set for these applications The Office action must inform applicants that 37 CFR 1.136(a) provisions are not available Extensions beyond 2 months require clear justification under 37 CFR 1.136(b) In some cases,…
Read MoreHow does litigation affect the examination of reissue applications?
Reissue applications with related litigation are given priority in examination. The MPEP 1440 states: “Reissue applications with related litigation will be acted on by the examiner before any other special applications, and will be acted on immediately by the examiner, subject only to a 2-month delay after publication for examining reissue applications.” This means that…
Read MoreWhat is Form Paragraph 14.06 used for in reissue applications?
Form Paragraph 14.06 is used by examiners to inquire about specific details of litigation related to a reissue application. It serves several purposes: Notifies the applicant that the patent sought to be reissued is involved in litigation Requests that any documents or materials material to patentability be made of record Informs the applicant that extensions…
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