MPEP § 2012 — MPEP § 2012
Current through: 2022-07-01

2012-Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 2000 

 Section 2012 
 

 
 
 
 
 
 2012 Reissue Applications Involving Issues of Fraud, Inequitable
 Conduct, and/or Violation of Duty of Disclosure [R-08.2017]
 

 [Editor Note: This MPEP section is only applicable to
 reissue applications filed before September 16, 2012. For reissue applications filed on
 or after September 16, 2012, the requirement to state that the errors arose "without any
 deceptive intention" was eliminated consistent with the America Invents Act (AIA)
 amendments to 35 U.S.C. 251.] 

 Questions of “fraud,” “inequitable conduct,” or violation of “duty of
 disclosure” or “candor and good faith” can arise in reissue applications.
 

 “ERROR WITHOUT ANY DECEPTIVE INTENTION” For reissue applications filed prior to September 16, 2012, both
 pre-AIA 35 U.S.C.
 251 and pre-AIA 37 CFR 1.175 require that
 the reissue oath or declaration must state that the error arose “without any deceptive
 intention.” Further, the examiner should determine whether applicant has averred in the
 reissue oath or declaration, as required by pre-AIA 37 CFR 1.175(a)(2) ,
 (b)(1) , and (b)(2) , that all “errors” arose
 “without any deceptive intention.” However, the examiner should not normally comment or
 question as to whether the averred statement as to lack of deceptive intention appears
 correct or true. See MPEP
 § 1414 .
 

 In re Heany , 1911 C.D. 138, 180
 (1911), unequivocally states:
 

 
 Where such a condition [fraudulent or deceptive intention] is shown
 to exist the right to reissue the patent is forfeited. 
 

 
 Similarly, the court in In re Clark , 522 F.2d 623,
 627, 187 USPQ 209, 213 (CCPA 1975) indicated:
 

 
 Reissue is not available to rescue a patentee who had presented
 claims limited to avoid particular prior art and then had failed to disclose that
 prior art . . . after that failure to disclose has resulted in invalidating of the
 claims.
 

 
 It is clear that “fraud” cannot be purged through the reissue process.
 See conclusions of Law 89 and 91 in Intermountain Research and Eng’g Co. v.
 Hercules Inc. , 171 USPQ 577, 631-32 (C.D. Cal. 1971).
 

 Clearly, where several patents or applications stem from an original
 application which contained fraudulent claims ultimately allowed, the doctrine of
 unclean hands bars allowance or enforcement of any of the claims of any of the
 applications or patents. See Keystone Driller Co. v. General Excavator
 Co. , 290 U.S. 240, 245, 19 USPQ 228, 230 (1933); East Chicago
 Machine Tool Corp. v. Stone Container Corp. , 181 USPQ 744, 748 (N.D. Ill.),
 modified , 185 USPQ 210 (N.D. Ill. 1974). See also
 Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859,
 173 USPQ 295 (D.Del. 1972) and Strong v. General Electric Co. , 305 F.
 Supp. 1084, 162 USPQ 141 (N.D. Ga. 1969), aff’d , 434 F.2d 1042, 168
 USPQ 8 (5th Cir. 1970), cert. denied , 403 U.S. 906 (1971) where fraud
 or inequitable conduct affecting only certain claims or only one of related patents was
 held to affect the other claims or patent. Clearly, “fraud” practiced or attempted in an
 application which issues as a patent is “fraud” practiced or attempted in connection
 with any subsequent application to reissue that patent. The reissue application and the
 patent are inseparable as far as questions of “fraud,” “inequitable conduct,” or
 “violation of the duty of disclosure” are concerned. See In re Heany, supra;
 and Norton v. Curtiss , 433 F.2d 779, 792, 167 USPQ 532, 543
 (CCPA 1970), wherein the court stated:
 

 
 We take this to indicate that any conduct which will prevent the
 enforcement of a patent after the patent issues should, if discovered earlier,
 prevent the issuance of the patent. 
 

 
 Clearly, if a reissue patent would not be enforceable after reissue
 because of “fraud,” “inequitable conduct” or “violation of the duty of disclosure”
 during the prosecution of the patent sought to be reissued, the reissue patent
 application should not be allowed. Where no investigation is needed to establish such
 circumstances, an appropriate remedy would be to reject the claims in the reissue
 application in accordance with 35 U.S.C. 251 . 
 

 See MPEP
 § 1448 for information pertaining to the examination of a
 resissue application when there is an admission or judicial determination of fraud,
 inequitable conduct or violation of the duty of disclosure. 
 

 
 2012.01 Collateral Estoppel [R-08.2017]

 [Editor Note: This MPEP section is only applicable to
 reissue applications filed before September 16, 2012. For reissue applications filed
 on or after September 16, 2012, the requirement to state that the errors arose
 "without any deceptive intention" was eliminated consistent with the America Invents
 Act (AIA) amendments to 35 U.S.C. 251.] 

 The Supreme Court in Blonder-Tongue Labs., Inc. v. Univ. of
 Ill. Found. , 402 U.S. 313, 169 USPQ 513 (1971) set forth the rule that once
 a patent has been declared invalid via judicial inquiry, a collateral estoppel barrier
 is created against further litigation involving the patent, unless the
 patentee-plaintiff can demonstrate “that he did not have” a full and fair chance to
 litigate the validity of his patent in “the earlier case.” See also Ex parte
 Varga , 189 USPQ 209 (Bd. App. 1973). As stated in Kaiser
 Industries Corp. v. Jones & Laughlin Steel Corp ., 515 F.2d 964, 987,
 185 USPQ 343, 362 (3rd Cir. 1975):
 

 
 In fashioning the rule of Blonder-Tongue, Justice
 White for a unanimous Court made it clear that a determination of patent invalidity,
 after a thorough and equitable judicial inquiry, creates a collateral estoppel
 barrier to further litigation to enforce that patent. 
 

 
 Under pre-AIA 35 U.S.C. 251 , the Director can reissue a patent only if
 there is “error without any deceptive intention.” The Director is without authority to
 reissue a patent when “deceptive intention” was present during prosecution of the parent
 application. See In re Clark , 522 F.2d 62, 187 USPQ 209 (CCPA 1975)
 and In re Heany , 1911 C.D. 138, 180 (1911). Thus, the collateral
 estoppel barrier applies where reissue is sought of a patent which has been held invalid
 or unenforceable for “fraud” or “violation of duty of disclosure” in procuring of said
 patent. It was held in In re Kahn , 202 USPQ 772, 773 (Comm’r Pat.
 1979):
 

 
 Therefore, since the Kahn patent was held invalid, inter alia, for
 “failure to disclose material facts of which * * * [Kahn] was aware” this application
 may be stricken under 37 CFR 1.56 via the doctrine of
 collateral estoppel as set forth in Blonder-Tongue, supra.
 

 *****

 The Patent and Trademark Office . . . has found no clear
 justification for not adhering to the doctrine of collateral estoppel under
 Blonder-Tongue in this case. Applicant has had his day in court. He appears to have
 had a full and fair chance to litigate the validity of his patent.
 

 
 See MPEP
 § 2259 for collateral estoppel in reexamination
 proceedings.
 

 

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 2000-Duty of Disclosure 
 2000.01-Introduction 

 
 

 2001-Duty of Disclosure, Candor, and Good Faith 
 2001.01-Who Has Duty To Disclose 

 2001.02-[Reserved] 

 2001.03-To Whom Duty of Disclosure Is Owed 

 2001.04-Information Under 37 CFR 1.56(a) 

 2001.05-Materiality Under 37 CFR 1.56(b) 

 2001.06-Sources of Information under 37 CFR 1.56 
 2001.06(a)-Prior Art Cited in Related Foreign Applications 

 2001.06(b)-Information Relating to or From Copending United States Patent Applications 

 2001.06(c)-Information From Related Litigation and/or Trial Proceedings 

 2001.06(d)-Information Relating to Claims Copied From a Patent 

 2001.06(e)-Information Relating to Regulatory Review 

 
 

 
 

 2002-Disclosure — By Whom and How Made 
 2002.01-By Whom Made 

 2002.02-Must be in Writing 

 
 

 2003-Disclosure __ When Made 
 2003.01-Disclosure After Patent Is Granted 

 
 

 2004-Aids to Compliance With Duty of Disclosure 

 2005-Comparison to Requirements for Information 

 2006‑2009-[Reserved] 

 2010-Office Handling of Duty of Disclosure/Inequitable Conduct Issues 

 2011-Correction of Errors in Application 

 2012-Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure 
 2012.01-Collateral Estoppel 

 
 

 2013-Protests Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure 

 2014-Duty of Disclosure in Reexamination Proceedings and Supplemental Examination 

 2015-Duties of Disclosure and Reasonable Inquiry Arise in Dealings With Other Government Agencies 

 2016-Fraud, Inequitable Conduct, or Violation of Duty of Disclosure Affects All Claims 

 2017‑2022-[Reserved] 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:38