How does the USPTO evaluate “reasonable diligence” in filing a reissue application?
The USPTO evaluates “reasonable diligence” in filing a reissue application on a case-by-case basis, considering the specific circumstances of each situation. According to MPEP 1403: “What constitutes reasonable diligence must be determined on a case-by-case basis, taking all the facts and circumstances into account.” Factors that the USPTO may consider include: The complexity of the…
Read MoreHow does the USPTO determine if a delay in filing a reissue application was unintentional?
How does the USPTO determine if a delay in filing a reissue application was unintentional? The USPTO evaluates the unintentional nature of delays in filing reissue applications on a case-by-case basis. According to MPEP 1403: “In determining whether a delay in filing a reissue application was unintentional, the examiner should make an inquiry as to…
Read MoreHow does the USPTO handle concurrent proceedings for reissue applications?
How does the USPTO handle concurrent proceedings for reissue applications? The USPTO has specific procedures for handling concurrent proceedings involving reissue applications. According to MPEP 1442: “Where a reissue application and an ex parte reexamination proceeding on which an order pursuant to 37 CFR 1.525 has been mailed are copending, the reissue application is placed…
Read MoreHow should applicants update the USPTO about ongoing litigation during the reissue process?
Applicants have an ongoing duty to keep the USPTO informed about litigation involving the patent under reissue. The MPEP provides guidance on this matter: “The status of the litigation should be updated in the reissue application as soon as significant events happen in the litigation.” This means that applicants should: Promptly inform the USPTO of…
Read MoreWhat is the significance of the two-year period mentioned in MPEP 1403 for reissue applications?
What is the significance of the two-year period mentioned in MPEP 1403 for reissue applications? The two-year period mentioned in MPEP 1403 is significant for reissue applications because it serves as a benchmark for determining whether an explanation for delay is required. Specifically: “A reissue application can be filed within two years from the grant…
Read MoreWhat is the significance of the two-month special status for reissue applications?
What is the significance of the two-month special status for reissue applications? The two-month special status for reissue applications is a procedural benefit that expedites their examination. According to MPEP 1442: “All reissue applications are taken up ‘special’ and remain ‘special’ even though the applicant does not respond promptly.” This special status means that reissue…
Read MoreWhat is the role of a TQAS in reissue application examination?
A Training Quality Assurance Specialist (TQAS) plays a crucial role in the examination of reissue applications. Their responsibilities include: Monitoring and reviewing reissue applications at various stages of prosecution Ensuring that reissue-specific practices and procedures are followed Instructing examiners on reissue-specific procedures Conducting patentability reviews on a sample of reissue applications Setting and removing status…
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 MoreWhat is the significance of the “surrender generating limitation” in patent reissue recapture?
What is the significance of the “surrender generating limitation” in patent reissue recapture? The “surrender generating limitation” (SGL) is a critical concept in patent reissue recapture analysis. It refers to the claim limitation(s) or features that were added to the claims or argued during original prosecution to overcome prior art rejections. According to MPEP 1412.02(I)(B)(1)(A):…
Read MoreWhen is a supplemental reissue oath or declaration required in a reissue application?
The requirement for a supplemental reissue oath or declaration depends on the filing date of the reissue application: For applications filed on or after September 16, 2012: A supplemental oath or declaration is not required if additional defects or errors are corrected after the initial filing For applications filed before September 16, 2012: A supplemental…
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