MPEP § 1418 — MPEP § 1418
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1418 
 

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

 
 

 37 CFR
 1.178(b) requires reissue applicants to call to the attention of the
 Office any prior or concurrent proceeding in which the patent (for which reissue is
 requested) is or was involved and the results of such proceedings. These proceedings would
 include interferences or trials before the Patent Trial and Appeal Board, reissues,
 reexaminations, and litigations. Litigation would encompass any papers filed in the court
 or issued by the court, which may include, for example, motions, pleadings, and court
 decisions. This duty to submit information is continuing, and runs from the time the
 reissue application is filed until the reissue application is abandoned or issues as a
 reissue patent.
 

 In addition, a reissue application is subject to the same duty of
 disclosure requirements as is any other nonprovisional application. A person may not
 execute an oath or declaration unless that person is "aware of the duty to disclose to the
 Office all information known to the person to be material to patentability as defined in
 §
 1.56 ." 37 CFR 1.63 . For reissue applications
 filed before September 16, 2012, the provisions of pre-AIA 37 CFR 1.63 require
 acknowledgment of this duty of disclosure in the reissue oath or declaration. Note that the
 Office imposes no responsibility on a reissue applicant to resubmit, in a reissue
 application, all the 
 "References
 Cited"
 
 
 in the patent for which reissue is sought. Rather, applicant
 has a continuing duty under 37 CFR 1.56 to timely apprise the
 Office of any information which is material to the patentability of the claims under
 consideration in the reissue application.
 

 37 CFR
 1.97 and 37 CFR 1.98 provide a mechanism to
 submit information known to applicants to be material to patentability. Information
 submitted in compliance with 37 CFR 1.97 and 37 CFR 1.98 will be
 considered by the Office. See MPEP § 609 . Although a reissue applicant may utilize
 37 CFR
 1.97 and 37 CFR 1.98 to comply with the duty of
 disclosure required by 37
 CFR 1.56 , this does not relieve applicant of the duties under
 37 CFR
 1.175 of, for example, stating 
 "at least one error being relied upon."
 
 
 
 

 While 37
 CFR 1.97(b) provides for the filing of an information disclosure
 statement within 3 months of the filing of an application or before the mailing date of a
 first Office action, reissue applicants are encouraged to file information disclosure
 statements at the time of filing of the reissue application so that such statements will be
 available to the public during the 2-month period provided in MPEP § 1441 . Form
 paragraph 14.11.01 may be used to remind applicant of the duties to
 timely make the Office aware of (A) any prior or concurrent proceeding (e.g., litigation or
 Office proceedings) in which the patent to be reissued is or was involved, and (B) any
 information which is material to patentability of the claims in the reissue
 application.
 

 ¶ 14.11.01 Reminder of Duties Imposed by 37 CFR 1.178(b) and 37 CFR
 1.56
 

 Applicant is reminded of the continuing obligation under
 37 CFR
 1.178(b) , to timely apprise the Office of any prior or concurrent
 proceeding in which Patent No. [1] is or was involved. These proceedings would
 include any trial before the Patent Trial and Appeal Board, interferences, reissues,
 reexaminations, supplemental examinations, and litigation.
 

 Applicant is further reminded of the continuing obligation under
 37 CFR
 1.56 , to timely apprise the Office of any information which is material
 to patentability of the claims under consideration in this reissue application.
 

 These obligations rest with each individual associated with the filing
 and prosecution of this application for reissue. See also MPEP §§ 1404 ,
 1442.01 and 1442.04 . 
 

 Examiner Note:
 
 1. This form paragraph is to be used in the first action in a reissue
 application.
 

 2. In bracket 1, insert the patent number of the original patent for
 which reissue is requested.
 
 
 

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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 20:50:34