What are the limitations on a protestor’s participation in reissue applications involved in litigation?
Protestors’ participation in reissue applications, including those involved in litigation, is subject to specific limitations as outlined in USPTO regulations. These limitations are designed to balance public input with the efficient examination of patent applications. According to MPEP 1404: “Protestor’s participation, including the submission of papers, is limited in accordance with 37 CFR 1.291(c).” Key…
Read MoreWhat is the procedure for suspending action in a reissue application with concurrent litigation?
When suspending action in a reissue application with concurrent litigation, examiners are instructed to follow a specific procedure. The MPEP states: “The examiner should consult with the Technology Center Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS) before suspending action in the reissue application.” Additionally, examiners are provided with a form paragraph…
Read MoreWhat is the priority status of reissue applications with stayed litigation?
Reissue applications with stayed litigation are given high priority in the USPTO. According to MPEP 1442.03, “reissue applications involved in ‘stayed litigation’ will be taken up for action in advance of other reissue applications. Great emphasis is placed on the expedited processing of such reissue applications.” This means that these applications are processed more quickly…
Read MoreWhat reasons might justify a petition to act on a reissue application before the two-month delay period ends?
The USPTO may consider petitions to act on a reissue application before the two-month delay period ends if there are appropriate reasons. MPEP § 1441 provides an example: Appropriate reasons for requesting that the 2-month delay period not be employed include that litigation involving a patent has been stayed to permit the filing of an…
Read MoreHow does the Patent Trial and Appeal Board (PTAB) affect reissue applications?
The Patent Trial and Appeal Board (PTAB) can have a significant impact on reissue applications, particularly when there are pending trials before the PTAB. The MPEP indicates: “Also, if there is a pending trial before the Patent Trial and Appeal Board (PTAB), the PTAB may suspend action in the reissue application.” This means that in…
Read MoreWhat are “overlooked aspects” in the context of reissue applications?
“Overlooked aspects” in reissue applications refer to claims drawn to separate inventions, embodiments, or species that were disclosed but never covered by the claims in the original application prosecution. As explained in MPEP 1412.01: “Claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was…
Read MoreWhat information is included in the Official Gazette announcement for a reissue application?
The Official Gazette announcement for a reissue application includes specific details to inform the public. According to MPEP 1430, the announcement includes: Filing date Reissue application and original patent numbers Title Class and subclass Name of the inventor(s) Name of the owner of record Name of the attorney or agent of record Technology Center (TC)…
Read MoreCan non-elected inventions be recovered through a reissue application?
Generally, non-elected inventions cannot be recovered through a reissue application if the applicant failed to file a continuing application prior to the issuance of the original patent. According to MPEP 1412.01: “Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a…
Read MoreHow are new claims presented and amended in a reissue application?
For new claims in a reissue application: Present the entire claim with underlining throughout, including the claim number Use the status identifier “New” Number new claims starting after the last original patent claim number When amending a previously added new claim: Present the entire amended claim with underlining Do not use brackets to show changes…
Read MoreHow does MPEP Chapter 800 apply to reissue applications?
MPEP Chapter 800 principles generally apply to reissue applications, but with some important considerations. The introduction states: “The general principles set forth in this chapter apply to reissue applications, however see MPEP § 803.05 and § 1450 for a discussion of the prerequisites to making a restriction requirement in reissue applications.” This means that while…
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