How does the USPTO prioritize reexamination proceedings and reissue applications?
The USPTO prioritizes reexamination proceedings and reissue applications as follows: Highest Priority: Cases involved in litigation (both reexamination proceedings and reissue applications) Second Priority: Reexamination proceedings not involved in litigation Lower Priority: All other cases As stated in MPEP 2661: “Any cases involved in litigation, whether they are reexamination proceedings or reissue applications, will have…
Read MoreAre reissue applications subject to the Sequence Listing XML requirement?
Yes, reissue applications filed on or after July 1, 2022, are subject to the Sequence Listing XML requirement if they contain nucleotide and/or amino acid sequences as defined in 37 CFR 1.831(a) or (b). The MPEP clarifies: “Compliance with 37 CFR 1.831 through 1.835 (rules based on WIPO Standard ST.26) is also applicable to any…
Read MoreCan a patent be reissued if fraud was committed in the original application?
No, a patent cannot be reissued if fraud was committed in the original application. The MPEP is clear on this point: It is clear that “fraud” cannot be purged through the reissue process. This statement is supported by case law, as the MPEP cites: Where such a condition [fraudulent or deceptive intention] is shown to…
Read MoreHow are reissue applications treated in the context of interferences?
MPEP 2303 discusses the treatment of reissue applications in interferences: “Applicants sometimes, however, file reissue applications to amend patent claims in response to events occurring in the interference. To maintain parity with other applicants, the Board does not permit reissue applicants to add claims that would not correspond to a count.“ This policy, based on…
Read MoreWhat are the disclosure requirements for reissue applications involved in litigation?
For reissue applications where the original patent has been involved in litigation, the MPEP 2001.06(c) outlines specific disclosure requirements: The existence of such litigation must be brought to the examiner’s attention at the time of filing or shortly after. This information can be disclosed in the reissue oath/declaration or in a separate paper, preferably accompanying…
Read MoreWhat is the difference in priority between reexamination proceedings and reissue applications?
According to MPEP 2261, there is no inherent difference in priority between reexamination proceedings and reissue applications at the United States Patent and Trademark Office (USPTO). The key factor determining their priority is whether they are involved in litigation. The MPEP states: “Any cases involved in litigation, whether they are reexamination proceedings or reissue applications,…
Read MoreHow are protests handled for unpublished patent applications?
For unpublished patent applications, the handling of protests differs from published applications. According to MPEP 1901.05: “If a protest is filed in a reissue application or if a protest is filed in an application where the existence of the application is not public, e.g., an application that has not been published, the return postcard receipt…
Read MoreCan a protestor receive information about the application they’re protesting?
Generally, protestors are not entitled to receive information about the application they’re protesting, unless it’s a reissue application or has been published. The MPEP 1901.05 states: “Original applications are, of course, required by 35 U.S.C. 122 to be kept in confidence unless published pursuant to 35 U.S.C. 122(b) or are available to the public pursuant…
Read MoreHow does pre-AIA 35 U.S.C. 103(c) apply to reissue applications?
The application of pre-AIA 35 U.S.C. 103(c) to reissue applications involves specific considerations, particularly regarding the doctrine of recapture. The MPEP states: “For reissue applications, the doctrine of recapture may prevent the presentation of claims in the reissue applications that were amended or cancelled from the application which matured into the patent for which reissue…
Read MoreCan a patentee suggest an interference?
No, a patentee cannot directly suggest an interference. According to MPEP 2304.03, “A patentee cannot suggest an interference under this section“. However, there are limited options available to patentees: A patentee may file a reissue application to become an applicant, which would then allow them to suggest an interference. Alternatively, a patentee may, to a…
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