If a protest (see MPEP Chapter 1900) is filed in a reissue application related to a patent involved in a pending interference proceeding or contested case before the Patent Trial and Appeal Board (PTAB), the reissue application should be referred to the PTAB before considering the protest and taking any action on the reissue application. A contested case includes a derivation proceeding, an inter partes review, a post-grant review, and a covered business method review.
In consultation with the examiner and the PTAB, a TC TQAS or SPRS will check to see that:
- (A) all parties to the interference or contested case are aware of the filing of the reissue; and
- (B) the Office does not allow claims in a reissue that are unpatentable over the pending interference count(s), or found unpatentable in the interference proceeding or contested case. After the PTAB has finished their review, the PTAB will inform the examiner that they may now act on the reissue application. See MPEP § 1441.01 for a discussion as to protests under 37 CFR 1.291 in reissue applications.
It is particularly important that the reissue application not be allowed without the administrative patent judge’s approval.