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Case 1:04-cv-00360-JJF Document 236-8 Filed O9/13/2006 Page1 of 2 -
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MPE? § 200l.O6(C} Page l
i PATENT AND TRADEMARK OFFICE
U.S. DEPARTMENT OF COM RCE
MANUAL OF PATENT EXAMINENG PROCEDURE
CHARTER 2000 DUTY OF DISCLOSURE
Current through the Eighth Edition, Revision 4, October 2005
2G0l.06{c) Information From Related Litigation [R-2]
Where the subject matter for which a patent is being sought is or has been
involved in litigation, the existence of such litigation and any other material
a information arising therefrom.must be brought to the attention of the U.S. Patent
` and Trademark Office. Examples of such material information include evidence of
possible prior public use or sales, questions of inventorship, prior art,
i allegations of "fraud," "inequitable conduct," and "violation of duty of
disclosure." Another example of such material information is any assertion that is
made during litigation which is contradictory to assertions made to the examiner.
Environ Prods., lnc. v. Total Containment, Inc., 43 USPQ2d 1288, l29l {E.D. Pa.
1997). Such information might arise during litigation in, for example, pleadings,
admissions, discovery including interrogatories, depositions, and other documents
and testimony.
1 Where a patent for which reissue is being sought is, or has been, involved in
litigation which raised a question material to examination of the reissue
application, such as the validity of the patent, or any allegation of "fraud,"
"inequitable conduct," or "violation of duty of disclosure," the existence of such
litigation must be brought to the attention of the Office by the applicant at the
time of, or shortly after, filing the application, either in the reissue oath or
declaration, or in a separate paper, preferably accompanying the application, as
filed. Litigation begun after filing of the reissue application should be promptly
brought to the attention of the Office. The details and documents from the
litigation, insofar as they are "material to patentability" of the reissue
application as defined in 37 CFR 1.56, should accompany the application as filed,
or be submitted as promptly thereafter as possible. See Critikon, Inc. v. Becton
Dickinson Vascular Access, Inc., 120 F.3d l253, l258, l259, 43 US?Q2d 1666,
1670-71 (Fed. Cir, 1997) (patent held unenforceable due to ineguitable conduct
based on patentee's failure to disclose a relevant reference and for failing to
disclose ongoing litigation).
U For example, the defenses raised against validity of the patent, or charges of
"fraud" or "ineguitable conduct" in the litigation, would normally be "material to
the examination" of the reissue application. It would, in most situations, be
appropriate to bring such defenses to the attention of the Office by filing in the
reissue application a copy of the court papers raising such defenses. At a
minimum, the applicant should call the attention of the Office to the litigation,
the existence and the nature of any allegations relating to validity and/or
"fraud," or "inequitable conduct" relating to the original patent, and the nature
of litigation materials relating to these issues. Enough information should be
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MPE? § 200l.06{c) Page 2
submitted to clearly inform the Office of the nature of these issues so that the
Office can intelligently evaluate the need tor asking for further materials in the
litigation. See MPE? § 1442.04.
>If litigation papers of a live litigation relating to a pending reissue
application are filed with the Office, the litigation papers along with the
reissue application file should be forwarded to the Solicitor's Office for
processing. if the litigation is not live, the litigation papers are processed by
the Technology Center assigned the reissue application.<
MPEP § 20OI1..06(c) ‘
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Case 1:04-cv-00360-JJF

Document 236-8

Filed 09/13/2006

Page 1 of 2

Case 1:04-cv-00360-JJF

Document 236-8

Filed 09/13/2006

Page 2 of 2