MPEP 1442.03
Litigation Stayed

Ninth Edition of the MPEP, Revision 07.2022, Last Revised in February 2023

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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.