MPEP § 1442 — MPEP § 1442
Current through: 2022-07-01

1442-Special Status 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1442 
 

 
 
 
 
 
 1442 Special Status [R-08.2017]

 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. Furthermore, reissue applications involved in
 litigation will be taken up for action in advance of other reissue applications. A pending
 trial before the PTAB includes a derivation proceeding, an inter partes 
 review, a post-grant review, and a covered business method review. See 37 CFR
 42.2 .
 

 
 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.
 

 

 
 1442.02 Concurrent Litigation or Trial Before the Patent Trial and
 Appeal Board [R-08.2017]
 

 To avoid duplicating effort, action in reissue applications in which
 there is an indication of concurrent litigation will generally be suspended sua
 sponte . Also, if there is a pending trial before the Patent Trial and
 Appeal Board (PTAB), the PTAB may suspend action in the reissue application. If it is
 evident to the examiner, or the applicant indicates, that any one of the following
 applies: 
 

 
 (A) a stay of the litigation is in effect; 

 (B) the litigation or trial before the PTAB has been terminated; 

 (C) there are no significant overlapping issues between the
 application and the litigation or pending trial before the PTAB; or 
 

 (D) it is applicant’s desire that the application be examined at that
 time; 
 

 
 then the Office may or may not suspend the reissue
 application using its discretion based upon the facts of the situation.
 

 Where any of (A) - (D) above apply, form paragraphs
 14.08 - 14.10 may be used to deny a suspension
 of action in the reissue, i.e., to deny a stay of the reissue proceeding.
 

 ¶ 14.08 Action in Reissue Not Stayed — Related Litigation Terminated

 Since the litigation related to this reissue application is terminated and final, action in this reissue application will
 NOT be stayed. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF
 37 CFR 1.136(a) WILL NOT BE PERMITTED.
 

 

 ¶ 14.09 Action in Reissue Not Stayed — Related Litigation Not Overlapping

 While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed
 because there are no significant overlapping issues between the application and that litigation. Due to the related litigation
 status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
 

 

 ¶ 14.10 Action in Reissue Not Stayed — Applicant’s Request

 While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed
 because of applicant’s request that the application be examined at this time. Due to the related litigation status of this
 reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
 

 

 Where none of (A) through (D) above apply, action in the reissue
 application in which there is an indication of concurrent litigation will be suspended
 by the examiner. The examiner should consult with the Technology Center Training Quality
 Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS) before
 suspending action in the reissue application. Form paragraph 14.11 may be used to
 suspend action, i.e., stay action, in a reissue application with concurrent
 litigation.
 

 ¶ 14.11 Action in Reissue Stayed - Related Litigation

 In view of concurrent litigation, and in order to avoid duplication of effort between the two proceedings, action in this
 reissue application is STAYED until such time as it is evident to the examiner that (1) a stay of the litigation is in effect,
 (2) the litigation has been terminated, (3) there are no significant overlapping issues between the application and the litigation,
 or (4) applicant requests that the application be examined.
 

 

 An ex parte reexamination proceeding will
 not be stayed where there is litigation. See Ethicon v.
 Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988). Thus, where a reissue
 application has been merged with an ex parte reexamination
 proceeding, the merged proceeding will not be stayed where there is
 litigation. In a merged ex parte reexamination/reissue proceeding,
 the ex parte reexamination will control because of the
 statutory ( 35 U.S.C. 305 ) requirement that
 ex parte reexamination proceedings be conducted with special
 dispatch. See MPEP §
 2285 and § 2286 . As to a stay or suspension
 where reissue proceedings are merged with inter partes reexamination
 proceedings, see 37
 CFR 1.937 and MPEP § 2686 .
 

 

 
 1442.03 Litigation Stayed [R-08.2017]

 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. Great
 emphasis is placed on the expedited processing of such reissue applications. The courts
 are especially interested in expedited processing in the Office where litigation is
 stayed.
 

 In reissue applications with “stayed litigation,” the Office will
 entertain petitions under 37 CFR 1.182 , which are accompanied
 by the fee under 37 CFR 1.17(f) , to not apply the
 2-month delay period stated in MPEP § 1441 . Such petitions are decided
 by the Office of Patent Legal Administration.
 

 Time-monitoring systems have been put into effect which will closely
 monitor the time used by applicants, protestors, and examiners in processing reissue
 applications of patents involved in litigation in which the court has stayed further
 action. Monthly reports on the status of reissue applications with related litigation
 are required from each Technology Center (TC). Delays in reissue processing are to be
 followed up. The TC Training Quality Assurance Specialist (TQAS) or Supervisory Patent
 Reexamination Specialist (SPRS) is responsible for oversight of reissue applications
 with related litigation.
 

 The purpose of these procedures and those deferring consideration of
 certain issues, until all other issues are resolved or the application is otherwise
 ready for consideration by the PTAB (note MPEP § 1448 ), is to reduce the time
 between filing of the reissue application and final action thereon, while still giving
 all parties sufficient time to be heard.
 

 Requests for stays or suspension of action in reissues where litigation
 has been stayed may be answered with form paragraph 14.07 .
 

 ¶ 14.07 Action in Reissue Not Stayed or Suspended — Related Litigation Stayed

 While there is a stay of the concurrent litigation related to this reissue application, action in this reissue application
 will NOT be stayed or suspended because a stay of that litigation is in effect for the purpose of awaiting the outcome of
 these reissue proceedings. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE
 PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
 

 

 If concurrently a reissue application and an
 inter partes review, post grant review proceeding, or covered
 business method review ("PTAB Review Proceeding") are copending, the Director may
 determine the manner in which the PTAB Review Proceeding and the other proceeding or
 matter (e.g., the reissue application) may proceed, including a stay, transfer,
 consolidation or termination of such matter or proceeding. See 35 U.S.C.
 315(d) and 35 U.S.C. 325(d) and
 37 CFR
 42.122 and 37 CFR 42.222 .
 

 

 
 1442.04 Litigation Involving Patent [R-08.2017]

 
 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) ). 
 

 
 

 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. 37 CFR 1.178(b) . 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. Litigation begun after filing of the reissue application also
 should be promptly brought to the attention of the Office. Additional proceedings that
 should be called to the attention of the Office include interferences and any pending
 trial before the Patent Trial and Appeal Board, such as derivation, post-grant review,
 inter partes review, and covered business method proceedings.
 

 Litigation encompasses any papers filed in the court or issued by the
 court. This may include, for example, motions, pleadings, and court decisions, as well
 as the results of such proceedings. When applicant notifies the Office of the existence
 of the litigation, enough information should be submitted so that the Office can
 reasonably evaluate the need for asking for further materials in the litigation. Note
 that the existence of supporting materials which may substantiate allegations of
 invalidity should, at least, be fully described, and preferably submitted. The Office is
 not interested in receiving voluminous litigation materials which are not relevant to
 the Office’s consideration of the reissue application. The status of the litigation
 should be updated in the reissue application as soon as significant events happen in the
 litigation. When a reissue application is filed, the examiner should determine whether
 the original patent has been adjudicated by a court. The decision(s) of the court, and
 also other papers in the suit, may provide information essential to the examination of
 the reissue. Examiners should inform the applicant of the duty to supply information as
 to litigation involving the patent. Form paragraph 14.11.01 may be used
 for this purpose. See MPEP § 1418 . 
 

 Additionally, the patented file will contain notices of the filing and
 termination of infringement suits on the patent. Such notices are required by law to be
 filed by the clerks of the federal district courts. These notices do not indicate if
 there was an opinion by the court, nor whether a decision was published.
 Shepard’s Federal Citations and the cumulative digests of the
 United States Patents Quarterly, contain tables of patent numbers
 giving the citation of published decisions concerning the patent. 
 

 A litigation search should be requested by the examiner to determine
 whether the patent has been, or is, involved in litigation. For IFW reissue application
 files, the 
 "Search Notes"
 
 
 box on
 the 
 "Search Notes"
 
 
 form is
 annotated to indicate that the review was conducted, and the 
 "Search Notes"
 
 
 form is then scanned into the
 reissue application file history.
 

 Additional information or guidance as to making a litigation search may
 be obtained from the library of the Office of the Solicitor. Where papers are not
 otherwise conveniently obtainable, the applicant may be requested to supply copies of
 papers and records in suits, or the Office of the Solicitor may be requested to obtain
 them from the court. The information thus obtained should be carefully considered for
 its bearing on the proposed claims of the reissue, particularly when the reissue
 application was filed in view of the holding of a court.
 

 If the examiner becomes aware of litigation involving the patent sought
 to be reissued during examination of the reissue application, and applicant has not made
 the details regarding that litigation of record in the reissue application, the
 examiner, in the next Office action, should inquire regarding the same. Form paragraph
 14.06 may be used for such an inquiry. See
 MPEP §
 1442.01 .
 

 If the additional details of the litigation appear to be material to
 patentability of the reissue application, the examiner may make such additional
 inquiries as necessary and appropriate.
 

 

 
 1442.05 Court Ordered Filing of Reissue Application [R-10.2019]

 In most instances, the reissue-examination procedure is instituted by a
 patent owner who voluntarily files a reissue application as a consequence of related
 patent litigation. Some federal district courts in earlier decisions have required a
 patentee-litigant to file a reissue application as a consequence of the patent
 litigation. However, the Court of Appeals for the Federal Circuit held in Green
 v. The Rich Iron Co., 944 F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir.
 1991) that a federal district court in an infringement case could not compel a patentee
 to seek reissue by the USPTO.
 

 It is to be noted that only a patentee or 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.
 

 

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 1400.01-Introduction 

 1401-Reissue 

 1402-Grounds for Filing 

 1403-Diligence in Filing 

 1404-Submission of Papers Where Reissue Patent Is in Litigation 

 1405-Reissue and Patent Term 

 1406-Citation and Consideration of References Cited in Original Patent 

 1407-1409-[Reserved] 

 1410-Content of Reissue Application 
 1410.01-Reissue Applicant and Inventor's Oath or Declaration 

 1410.02-Assignee Consent to the Reissue 

 
 

 1411-Form of Specification 
 1411.01-Certificate of Correction or Disclaimer in Original Patent 

 1411.02-New Matter 

 
 

 1412-Content of Claims 
 1412.01-Reissue Claims Must Be for Same General Invention 

 1412.02-Recapture of Canceled Subject Matter 

 1412.03-Broadening Reissue Claims 

 1412.04-Correction of Inventorship By Reissue 

 1412.05-Correction of Inventorship in a Broadening Reissue Application 

 
 

 1413-Drawings 

 1414-Content of Reissue Oath/Declaration 
 1414.01-Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012 

 1414.02-Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012 

 1414.03-Supplemental Reissue Oath/Declaration 

 
 

 1415-Reissue Application and Issue Fees 
 1415.01-Maintenance Fees on the Original Patent 

 
 

 1416-No Physical Surrender of Original Patent 

 1417-Claim for Priority Under 35 U.S.C. 119(a)-(d) 

 1418-Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability 

 1419-1429-[Reserved] 

 1430-Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette 

 1431-1439-[Reserved] 

 1440-Examination of Reissue Application 

 1441-Two-Month Delay Period 
 1441.01-Protest and Pre-issuance Submission in Reissue Applications 

 
 

 1442-Special Status 
 1442.01-Litigation-Related or PTAB Trial-Related Reissues 

 1442.02-Concurrent Litigation or Trial Before the Patent Trial and Appeal Board 

 1442.03-Litigation Stayed 

 1442.04-Litigation Involving Patent 

 1442.05-Court Ordered Filing of Reissue Application 

 
 

 1443-Initial Examiner Review 

 1444-Review of Reissue Oath/Declaration 

 1445-Reissue Application Examined in Same Manner as Original Application 

 1446-1447-[Reserved] 

 1448-Fraud, Inequitable Conduct, or Duty of Disclosure Issues 

 1449-Protest Filed in Reissue Where Patent Is in Interference or Contested Case 
 1449.01-Concurrent Office Proceedings 

 1449.02-Interference in Reissue 

 1449.03-Reissue Application in Derivation Proceeding 

 
 

 1450-Restriction and Election of Species Made in Reissue Application 

 1451-Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending 

 1452-Request for Continued Examination of Reissue Application 

 1453-Amendments to Reissue Applications 

 1454-Appeal Brief 

 1455-Allowance and Issue 

 1456-Reissue Review 

 1457-Design Reissue Applications and Patents 

 1458-1459-[Reserved] 

 1460-Effect of Reissue 

 1461-1469-[Reserved] 

 1470-Public Access to Reissue Applications 

 1471-1479-[Reserved] 

 1480-Certificates of Correction — Office Mistake 
 1480.01-Expedited Issuance of Certificates of Correction - Error Attributable to Office 

 
 

 1481-Certificates of Correction - Applicant’s Mistake 
 1481.01-Correction of Assignees’ Names 

 1481.02-Correction of Named Inventor 

 1481.03-Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits 

 
 

 1482-1484-[Reserved] 

 1485-Handling of Request for Certificates of Correction 

 1486-1489-[Reserved] 

 1490-Disclaimers 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:26