37 CFR 1.178 Original patent; continuing duty of applicant.
- (b) In any reissue application before the Office, the applicant must call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings (see also § 1.173(a)(1)).
37 CFR 1.178(b) requires reissue applicants to call to the attention of the Office any prior or concurrent proceeding in which the patent (for which reissue is requested) is or was involved and the results of such proceedings. These proceedings would include interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, and litigations. Litigation would encompass any papers filed in the court or issued by the court, which may include, for example, motions, pleadings, and court decisions. This duty to submit information is continuing, and runs from the time the reissue application is filed until the reissue application is abandoned or issues as a reissue patent.
In addition, a reissue application is subject to the same duty of disclosure requirements as is any other nonprovisional application. A person may not execute an oath or declaration unless that person is “aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.” 37 CFR 1.63. For reissue applications filed before September 16, 2012, the provisions of pre-AIA 37 CFR 1.63 require acknowledgment of this duty of disclosure in the reissue oath or declaration. Note that the Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the “References Cited” in the patent for which reissue is sought. Rather, applicant has a continuing duty under 37 CFR 1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in the reissue application.
37 CFR 1.97 and 37 CFR 1.98 provide a mechanism to submit information known to applicants to be material to patentability. Information submitted in compliance with 37 CFR 1.97 and 37 CFR 1.98 will be considered by the Office. See MPEP § 609. Although a reissue applicant may utilize 37 CFR 1.97 and 37 CFR 1.98 to comply with the duty of disclosure required by 37 CFR 1.56, this does not relieve applicant of the duties under 37 CFR 1.175 of, for example, stating “at least one error being relied upon.”
While 37 CFR 1.97(b) provides for the filing of an information disclosure statement within 3 months of the filing of an application or before the mailing date of a first Office action, reissue applicants are encouraged to file information disclosure statements at the time of filing of the reissue application so that such statements will be available to the public during the 2-month period provided in MPEP § 1441. Form paragraph 14.11.01 may be used to remind applicant of the duties to timely make the Office aware of (A) any prior or concurrent proceeding (e.g., litigation or Office proceedings) in which the patent to be reissued is or was involved, and (B) any information which is material to patentability of the claims in the reissue application.
¶ 14.11.01 Reminder of Duties Imposed by 37 CFR 1.178(b) and 37 CFR 1.56
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No.  is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
- 1. This form paragraph is to be used in the first action in a reissue application.
- 2. In bracket 1, insert the patent number of the original patent for which reissue is requested.