MPEP § 1448 — MPEP § 1448
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1448 
 

 
 
 
 
 
 1448 Fraud, Inequitable Conduct, or Duty of Disclosure
 Issues [R-08.2017]
 

 The Office does not investigate or reject reissue applications under
 37 CFR
 1.56 . The Office will not comment upon duty of disclosure issues
 which are brought to the attention of the Office in reissue applications except to note in
 the application, in appropriate circumstances, that such issues are no longer considered by
 the Office during its examination of patent applications. Examination as to the lack of
 deceptive intent requirement in reissue applications filed before September 16, 2012 will
 continue but without any investigation of fraud, inequitable conduct, or duty of disclosure
 issues. Applicant’s statement in the reissue oath or declaration of lack of deceptive
 intent will be accepted as dispositive except in special circumstances such as an admission
 or judicial determination of fraud, inequitable conduct, or violation of the duty of
 disclosure. 
 

 I. ADMISSION OR JUDICIAL DETERMINATION [Editor Note: This subsection is only applicable to reissue
 applications filed before September 16, 2012.] 

 An admission or judicial determination of fraud, inequitable conduct,
 or violation of the duty of disclosure is a special circumstance, because no
 investigation need be made. Accordingly, for a reissue application filed before
 September 16, 2012, after consulting with the Technology Center (TC) Training Quality
 Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS), a
 rejection should be made using the appropriate one of form paragraphs
 14.21.09.fti or 14.22.fti as
 reproduced below.
 

 Any admission of fraud, inequitable conduct or violation of the duty of
 disclosure must be explicit, unequivocal, and not subject to other interpretation. Where
 a rejection is made based upon such an admission (see form paragraph
 14.22.fti below) and applicant responds with any
 reasonable interpretation of the facts that would not lead to a conclusion of fraud,
 inequitable conduct or violation of the duty of disclosure, the rejection should be
 withdrawn. Alternatively, if applicant argues that the admission noted by the examiner
 was not in fact an admission, the rejection should also be withdrawn.
 

 Form paragraph 14.21.09.fti should be used for
 applications filed before September 16, 2012, where the examiner becomes aware of a
 judicial determination of fraud, inequitable conduct or violation of the duty of
 disclosure on the part of the applicant independently of the record of the
 case, i.e. the examiner has external knowledge of the judicial
 determination.
 

 Form paragraph 14.22.fti should be used for
 applications filed before September 16, 2012, where, in the application
 record, there is (a) an explicit, unequivocal admission by applicant of fraud,
 inequitable conduct or violation of the duty of disclosure which is not subject to other
 interpretation, or (b) information as to a judicial determination of fraud, inequitable
 conduct or violation of the duty of disclosure on the part of the applicant. External
 information which the examiner believes to be an admission by
 applicant should never be used by the examiner, and such external information should
 never be made of record in the reissue application.
 

 ¶ 14.21.09.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive
 Intention - Application filed Before Sept. 16, 2012, External Knowledge 
 

 Claims [1] rejected under pre-AIA 35 U.S.C.
 251 because this application was filed before September 16, 2012 and
 error “without any deceptive intention” has not been established. In view of the judicial
 determination in [2] of [3] on the part of applicant, a conclusion
 that any error was “without deceptive intention” cannot be supported.
 [4] 

 Examiner Note:
 
 1. In bracket 1, list all claims in the reissue
 application.
 

 2. In bracket 2, list the Court or administrative body
 which made the determination of fraud or inequitable conduct on the part of applicant.
 
 

 3. In bracket 3, insert --fraud--, --inequitable
 conduct-- and/or --violation of duty of disclosure--. 
 

 4. In bracket 4, point out where in the opinion (or
 holding) of the Court or administrative body the determination of fraud, inequitable
 conduct or violation of duty of disclosure is set forth. Page number, column number, and
 paragraph information should be given as to the opinion (or holding) of the Court or
 administrative body. The examiner may add explanatory comments.
 

 5. Do not use this form paragraph in a reissue
 application filed on or after September 16, 2012.
 
 
 

 ¶ 14.22.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive
 Intention — Application filed Before Sept. 16, 2012, Evidence in the Application
 

 Claims [1] rejected under pre-AIA 35 U.S.C. 251 
 because this application was filed before September 16, 2012 and error “without any deceptive
 intention” has not been established. In view of the reply filed on [2] , a
 conclusion that any error was “without deceptive intention” cannot be supported.
 [3] 

 Examiner Note:
 
 1. In bracket 1, list all claims in the reissue application.

 2. In bracket 2, insert the filing date of the reply which provides
 an admission of fraud, inequitable conduct or violation of duty of disclosure, or that
 there was a judicial determination of same.
 

 3. In bracket 3, insert a statement that there has been an
 admission or a judicial determination of fraud, inequitable conduct or violation of duty
 of disclosure which provide circumstances why applicant’s statement in the oath or
 declaration of lack of deceptive intent should not be taken as dispositive. Any
 admission of fraud, inequitable conduct or violation of duty of disclosure must be
 explicit, unequivocal, and not subject to other interpretation.
 

 4. Do not use this form paragraph in a reissue application filed on
 or after September 16, 2012.
 
 
 

 See MPEP
 § 2012 for additional discussion as to fraud, inequitable
 conduct or violation of duty of disclosure in a reissue application.
 

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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