How does the USPTO handle reissue applications merged with ex parte reexamination proceedings when there is concurrent litigation?
When a reissue application is merged with an ex parte reexamination proceeding and there is concurrent litigation, the merged proceeding will not be stayed. The MPEP provides clear guidance on this matter: “Thus, where a reissue application has been merged with an ex parte reexamination proceeding, the merged proceeding will not be stayed where there…
Read MoreAre extensions of time permitted for reissue applications with related stayed litigation?
No, extensions of time are generally not permitted for reissue applications with related stayed litigation. The MPEP 1442.03 provides a form paragraph (14.07) that examiners may use to address such situations: “Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.”…
Read MoreUnder what circumstances might the USPTO not suspend action on a reissue application with concurrent litigation?
The USPTO may choose not to suspend action on a reissue application with concurrent litigation if certain conditions are met. According to the MPEP, these conditions include: A stay of the litigation is in effect The litigation has been terminated There are no significant overlapping issues between the application and the litigation The applicant requests…
Read MoreAre there any exceptions to the public access policy for reissue applications?
While the general policy is to provide public access to reissue applications, there is an exception for certain types of continued prosecution applications (CPAs). According to MPEP 1470: “37 CFR 1.11(b) opens all reissue applications to inspection by the general public.“ However, the MPEP also notes an exception: “The filing of a continued prosecution application…
Read MoreAre there exceptions to announcing reissue applications in the Official Gazette?
Yes, there are exceptions to announcing reissue applications in the Official Gazette. According to MPEP 1430: Continued Prosecution Applications (CPAs) of design reissue applications: “The filing of a continued prosecution application (CPA) of a design reissue application under 37 CFR 1.53(d) (effective July 14, 2003, CPA practice was eliminated as to utility and plant applications)…
Read MoreAre continued prosecution applications (CPAs) of reissue applications announced in the Official Gazette?
No, continued prosecution applications (CPAs) of reissue applications are not announced in the Official Gazette. MPEP 1470 clarifies: “The filing of a continued prosecution application (CPA) under 37 CFR 1.53(d) of a design reissue application (effective July 14, 2003, CPAs are only available in design applications) will not be announced in the Official Gazette.“ This…
Read MoreHow does the USPTO handle concurrent reissue applications and PTAB Review Proceedings?
When a reissue application and a PTAB Review Proceeding (such as inter partes review, post grant review, or covered business method review) are concurrent, the Director of the USPTO has discretion in determining how to proceed. According to MPEP 1442.03: “The Director may determine the manner in which the PTAB Review Proceeding and the other…
Read MoreHow does the Antares Pharma case impact the original patent requirement?
The Antares Pharma Inc., v. Medac Pharma Inc. case significantly impacted the interpretation of the original patent requirement. According to MPEP 1412.01: “To satisfy the original patent requirement where a new invention is sought by reissue, ‘… the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.’” This means that…
Read MoreHow should amendments be made in reissue applications?
How should amendments be made in reissue applications? Amendments in reissue applications should be made in accordance with MPEP 1453. The MPEP states: “Amendments in reissue applications are made pursuant to 37 CFR 1.121(i).” This means that amendments in reissue applications follow specific rules: All amendments must be made relative to the patent specification and…
Read MoreWhat are the special considerations for amending a reissue application with prior changes?
When amending a reissue application where the patent has undergone prior changes: For a previously reissued patent: Use double underlining and double bracketing to show changes relative to the first reissue For a patent with a certificate of correction: Present the amendment as if changes from the certificate are part of the original patent For…
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