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

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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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 § 22.6. As to a stay or suspension where reissue proceedings are merged with inter partes reexamination proceedings, see 37 CFR 1.937 and MPEP § 2686.