1442.01 Litigation-Related or PTAB Trial-Related Reissues [R-08.2017]
During initial review, the examiner should determine whether the patent for which the reissue has been filed is involved in litigation or a pending trial before the Patent Trial and Appeal Board (PTAB), and if so, the status of that litigation or pending trial before the PTAB.
If the examiner becomes aware of litigation involving the patent sought to be reissued during examination of the reissue application, the examiner should first check MPEP § 1442.02 to determine whether prosecution in the reissue application should be suspended. If prosecution will not be suspended, and applicant has not made the details regarding that litigation of record in the reissue application, the examiner, in the next Office action, will inquire regarding the specific details of the litigation.
Form paragraph 14.06 may be used for such an inquiry.
¶ 14.06 Litigation-Related Reissue
The patent sought to be reissued by this application [1] involved in litigation. Any documents and/or materials which would be material to patentability of this reissue application are required to be made of record in response to this action.
Due to the related litigation status of this application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION OF THIS APPLICATION.
Examiner Note:
In bracket 1, insert either —is— or —has been—.
If additional details of the litigation appear to be material to examination of the reissue application, the examiner may make such additional inquiries as necessary and appropriate.
For any pending trial before the PTAB, the examiner may view the status by using the PTAB’s electronic file system accessible from www.uspto.gov. The PTAB (as delegated by the Director) may exercise exclusive jurisdiction within the Office over every application and patent that is involved in a pending trial before it. Therefore, prior to acting on the application, the examiner should ensure that the PTAB has not suspended the reissue application.
For reissue application files that are maintained in the Image File Wrapper (IFW) system, if the existence of litigation or PTAB trial has not already been noted, the examiner should annotate the printed bibliographic data sheet such that adequate notice is provided of the existence of the litigation or PTAB trial.
Applicants will normally be given 2 months to reply to Office actions in all reissue applications that are being examined during litigation or PTAB trial, or after litigation or PTAB trial had been stayed, dismissed, etc., to allow for consideration of the reissue by the Office. This 2-month period may be extended only upon a showing of clear justification under 37 CFR 1.136(b). The Office action will inform applicant that the provisions of 37 CFR 1.136(a) are not available. Of course, up to 3 months may be initially set for reply if the examiner, consulting with their supervisor, determines such a period is clearly justified.