1441 Two-Month Delay Period [R-08.2012]
37 CFR 1.176 provides that reissue applications will be acted on by the examiner in advance of other applications, i.e., “special.” Generally, a reissue application will not be acted on sooner than 2 months after announcement of the filing of the reissue has appeared in the Official Gazette. The 2-month delay is provided in order that members of the public may have time to review the reissue application and submit pertinent information to the Office before the examiner’s action. The pertinent information is submitted in the form of a protest under 37 CFR 1.291(a). For a discussion as to protests under 37 CFR 1.291(a) in reissue applications, see MPEP § 1441.01. As set forth in MPEP § 1901.04, the public should be aware that such submissions should be made as early as possible, because under certain circumstances, the 2-month delay period will not be employed. For example, the Office may act on a continuation or a divisional reissue application before the expiration of the 2-month period after announcement. Additionally, the Office will entertain a petition under 37 CFR 1.182 which is accompanied by the required petition fee (37 CFR 1.17(f)) to act on a reissue application without delaying for 2 months. Accordingly, protestors to reissue applications (see MPEP § 1441.01) cannot automatically assume that a full 2-month delay period will always be available. Appropriate reasons for requesting that the 2-month delay period not be employed include that litigation involving a patent has been stayed to permit the filing of an application for the reissue of the patent. Where the basis for the petition is ongoing litigation, the petition must clearly identify the litigation, and detail the specifics of the litigation that call for prompt action on the reissue application before the expiration of the 2-month delay period. Such petitions are decided by the Office of Patent Legal Administration.
1441.01 Protest and Preissuance Submission in Reissue Applications [R-11.2013]
I. PROTESTS, BUT NOT PREISSUANCE SUBMISSIONS, ARE PERMITTED IN REISSUE APPLICATIONS
A protest pursuant to 37 CFR 1.291 may be filed throughout the pendency of a reissue application, before the date of mailing of a notice of allowance, subject to the timing constraints of the examination, as set forth in MPEP § 1901.04. While a reissue application is not published under 37 CFR 1.211, the reissue application is published pursuant to 35 U.S.C. 122(b)(1)(A) via an announcement in the Official Gazette (and public availability of the file content) per 37 CFR 1.11(b). Such a publication does not preclude the filing of a protest. 35 U.S.C. 122(c) states:
(c) PROTEST AND PRE-ISSUANCE OPPOSITION- The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.[Emphasis added.]
A protest is precluded after publication for an application for an original patent, as a "form of pre-issuance opposition." A reissue application is a post-issuance proceeding. A protest filed in a reissue application is not a "form of pre-issuance opposition to the grant of a patent" because the patent to be reissued has already been granted. Thus, the prohibition against the filing of a protest after publication of an application under 35 U.S.C. 122(c) is not applicable to a reissue application and a protest is permitted after publication of the reissue application.
Because a reissue application is a post-issuance proceeding, a preissuance submission under 35 U.S.C. 122(e) is not permitted to be filed in a reissue application; 35 U.S.C. 122(e) is limited to preissuance submissions by third parties in patent applications. Third parties who have a need to submit information in a reissue application are advised to avail themselves of the protest provisions of 37 CFR 1.291. In an instance when a preissuance submission under 35 U.S.C. 122(e) is filed in a reissue application, the preissuance submission will be treated by the Office as a protest, if the preissuance submission complies with the provisions of 37 CFR 1.291.
II. TIME PERIOD FOR FILING PROTEST
A protest with regard to a reissue application should be filed within the 2-month period following the announcement of the filing of the reissue application in the Official Gazette. A potential protestor should be aware that reissue applications are taken up “special” and a protest filed outside the 2-month delay period may be received after action by the examiner. Further, if a protest is filed after a final rejection has been issued or prosecution on the merits has been otherwise closed for the reissue application, a petition for entry of the protest under 37 CFR 1.182 is required. The petition must include an explanation as to why the additional time was necessary and the nature of the protest intended. A copy of the petition must be served upon the applicant in accordance with 37 CFR 1.248. The petition should be directed to the Office of Petitions. A protest not filed prior to the date a notice of allowance under 37 CFR 1.311 is given or mailed will not be entered.
If the protest of a reissue application cannot be filed within the 2-month delay period, the protestor may petition to request (A) an extension of the 2-month period following the announcement in the Official Gazette, and (B) a delay of the examination until the extended period expires. Such a request will be considered only if filed in the form of a petition under 37 CFR 1.182 and accompanied by the petition fee set forth in 37 CFR 1.17(f). The petition under 37 CFR 1.182 and the petition fee must be filed before the expiration of the 2-month period following the announcement of the filing of the reissue application in the Official Gazette. The petition must explain why the additional time is necessary and the nature of the protest intended. A copy of the petition must be served upon applicant in accordance with 37 CFR 1.248. The petition should be directed to the appropriate Technology Center (TC) which will forward the petition to the Office of Patent Legal Administration.
If the protest is a "REISSUE LITIGATION" protest, it is particularly important that it be filed early if protestor wishes it considered at the time the Office first acts on the reissue application. Protestors should be aware that the Office will entertain petitions from the reissue applicants under 37 CFR 1.182 to waive the 2-month delay period in appropriate circumstances. Accordingly, protestors to reissue applications cannot automatically assume that the full 2-month delay period will always be available.
The Technology Center (TC) to which the reissue application is assigned is listed in the Official Gazette notice of filing of the reissue application. Accordingly, the indicated TC should retain jurisdiction over the reissue application file for 2 months after the date of the Official Gazette notice before transferring the reissue application under the procedure set forth in MPEP § 903.08(d).
The publication of a notice of a reissue application in the Official Gazette should be done before to any examination of the reissue application. If an inadvertent failure to publish notice of the filing of the reissue application in the Official Gazette is recognized later in the examination, action should be taken to have the notice published as quickly as possible, and action on the reissue application may be delayed until 2 months after the publication, allowing for any protests to be filed.
See MPEP § 1901.06 for general procedures on examiner treatment of protests in reissue applications.