What 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 type of information must be disclosed to the USPTO?
The duty of disclosure requires individuals to disclose information that is material to patentability. While the specific MPEP section provided doesn’t elaborate on this, the general understanding based on 37 CFR 1.56 is that material information includes: Prior art references Information about enablement Information related to statutory bars Any information that a reasonable examiner would…
Read MoreHow should information from AIA trial proceedings be disclosed to patent examiners?
Information from AIA trial proceedings, such as inter partes reviews, post-grant reviews, and covered business method reviews, should be disclosed to patent examiners through an Information Disclosure Statement (IDS). The MPEP 2001.06(c) states: “In particular, material information that is raised in trial proceedings that is relevant to related applications undergoing examination should be submitted on…
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