All reissue applications are taken up "special," and remain "special" even if applicant does not respond promptly.
All reissue applications, except those under suspension because of litigation or a pending trial before the Patent Trial and Appeal Board (PTAB), will be taken up for action ahead of other "special" applications; this means that all issues not deferred will be treated and responded to immediately. A pending trial before the PTAB includes a derivation proceeding, an inter partes review, a post-grant review, and a covered business method review.
Furthermore, reissue applications involved in litigation will be taken up for action in advance of other reissue applications.
1442.01 Litigation-Related or PTAB Trial-Related Reissues
MPEP SECTION SUMMARY
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).
1442.02 Concurrent Litigation or Trial Before the Patent Trial and Appeal Board
MPEP SECTION SUMMARY
To avoid duplicating effort, action in reissue applications in which there is an indication of concurrent litigation will be suspended sua sponte unless and until it is evident to the examiner, or the applicant indicates, that any one of the following applies:
a stay of the litigation is in effect;
the litigation or trial before the PTAB has been terminated;
there are no significant overlapping issues between the application and the litigation; or
it is applicant’s desire that the application be examined at that time.
The PTAB may suspend if there is a pending PTAB trial and that the Office has discretion to suspend based on the facts of the case.
1442.03 Litigation Stayed
MPEP SECTION SUMMARY
All reissue applications, except those under suspension because of litigation, will be taken up for action ahead of other “special” applications; this means that all issues not deferred will be treated and responded to immediately. Furthermore, reissue applications involved in “stayed litigation” will be taken up for action in advance of other reissue applications.
1442.04 Litigation Involving Patent
MPEP SECTION SUMMARY
Where the patent for which reissue is being sought is, or has been, involved in litigation, the applicant should bring the existence of such litigation to the attention of the Office. This should be done at the time of, or shortly after, the applicant files the application, either in the reissue oath or declaration, or in a separate paper, preferably accompanying the application as filed.
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(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.
1442.05 Court Ordered Filing of Reissue Application
MPEP SECTION SUMMARY
It is to be noted that only a patentee or their assignee may file a reissue patent application. An order by a court for a different party to file a reissue will not be binding on the Office.
