What 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 MoreWhat happens if drawing changes in a reissue application are not approved?
If drawing changes in a reissue application are not approved or if a submitted sheet of drawings is not entered, the examiner will inform the applicant in the next Office action. The MPEP states: “If any drawing change is not approved, or if any submitted sheet of drawings is not entered, the examiner will so…
Read MoreCan new rejections be made in a reissue application that weren’t made in the original patent?
Yes, new rejections can be made in a reissue application, even if they weren’t made during the prosecution of the original patent. The MPEP 1445 clearly states: “It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a…
Read MoreCan a new category of invention be added in a reissue application?
Yes, a new category of invention can be added in a reissue application, but it is generally considered broadening the invention. The MPEP states: The addition of process claims as a new category of invention to be claimed in the patent (i.e., where there were no method claims present in the original patent) is generally…
Read MoreHow does the “materially narrowed” test apply in patent reissue recapture analysis?
How does the “materially narrowed” test apply in patent reissue recapture analysis? The “materially narrowed” test is a crucial part of the third step in the recapture analysis for patent reissue applications. It determines whether the reissue claims have avoided recapture by including a materially narrowing limitation relative to the original claims. According to MPEP…
Read MoreWhat information should be provided to the USPTO about litigation involving a patent under reissue?
When informing the USPTO about litigation involving a patent under reissue, applicants should provide sufficient information for the Office to evaluate the need for further materials. The MPEP advises: “Litigation encompasses any papers filed in the court or issued by the court. This may include, for example, motions, pleadings, and court decisions, as well as…
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 the difference between correcting inventorship in a reissue application and a certificate of correction?
The main difference between correcting inventorship in a reissue application and a certificate of correction lies in the nature and extent of the correction: Reissue application: Used for more substantial changes, including adding or deleting inventors. As stated in MPEP 1412.04, “Where one or more inventors are being added, it must be demonstrated that the…
Read MoreDoes correcting inventorship through reissue enlarge the scope of patent claims?
No, correcting inventorship through reissue does not enlarge the scope of the patent claims. The MPEP explicitly states: “The correction of inventorship does not enlarge the scope of the patent claims.” This is important because it means that a reissue application for correcting inventorship can be filed even when the reissue application does not seek…
Read MoreHow does the “intervening rights” doctrine affect patent reissue recapture?
How does the “intervening rights” doctrine affect patent reissue recapture? The “intervening rights” doctrine is an important consideration in patent reissue cases, including those involving recapture. While not directly part of the recapture analysis, it can affect the enforceability of reissued patent claims. According to MPEP 1460, intervening rights are provided for in 35 U.S.C.…
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