1448 Fraud, Inequitable Conduct, or Duty of Disclosure Issues [R-08.2017]
The Office does not investigate or reject reissue applications under 37 CFR 1.56. The Office will not comment upon duty of disclosure issues which are brought to the attention of the Office in reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer considered by the Office during its examination of patent applications. Examination as to the lack of deceptive intent requirement in reissue applications filed before September 16, 2012 will continue but without any investigation of fraud, inequitable conduct, or duty of disclosure issues. Applicant’s statement in the reissue oath or declaration of lack of deceptive intent will be accepted as dispositive except in special circumstances such as an admission or judicial determination of fraud, inequitable conduct, or violation of the duty of disclosure.
I. ADMISSION OR JUDICIAL DETERMINATION[Editor Note: This subsection is only applicable to reissue applications filed before September 16, 2012.]
An admission or judicial determination of fraud, inequitable conduct, or violation of the duty of disclosure is a special circumstance, because no investigation need be made. Accordingly, for a reissue application filed before September 16, 2012, after consulting with the Technology Center (TC) Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS), a rejection should be made using the appropriate one of form paragraphs 14.21.09.fti or 14.22.fti as reproduced below.
Any admission of fraud, inequitable conduct or violation of the duty of disclosure must be explicit, unequivocal, and not subject to other interpretation. Where a rejection is made based upon such an admission (see form paragraph 14.22.fti below) and applicant responds with any reasonable interpretation of the facts that would not lead to a conclusion of fraud, inequitable conduct or violation of the duty of disclosure, the rejection should be withdrawn. Alternatively, if applicant argues that the admission noted by the examiner was not in fact an admission, the rejection should also be withdrawn.
Form paragraph 14.21.09.fti should be used for applications filed before September 16, 2012, where the examiner becomes aware of a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant independently of the record of the case, i.e. the examiner has external knowledge of the judicial determination.
Form paragraph 14.22.fti should be used for applications filed before September 16, 2012, where, in the application record, there is (a) an explicit, unequivocal admission by applicant of fraud, inequitable conduct or violation of the duty of disclosure which is not subject to other interpretation, or (b) information as to a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant. External information which the examiner believes to be an admission by applicant should never be used by the examiner, and such external information should never be made of record in the reissue application.
¶ 14.21.09.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention - Application filed Before Sept. 16, 2012, External Knowledge
Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error “without any deceptive intention” has not been established. In view of the judicial determination in [2] of [3] on the part of applicant, a conclusion that any error was “without deceptive intention” cannot be supported. [4]
Examiner Note:
- 1. In bracket 1, list all claims in the reissue application.
- 2. In bracket 2, list the Court or administrative body which made the determination of fraud or inequitable conduct on the part of applicant.
- 3. In bracket 3, insert --fraud--, --inequitable conduct-- and/or --violation of duty of disclosure--.
- 4. In bracket 4, point out where in the opinion (or holding) of the Court or administrative body the determination of fraud, inequitable conduct or violation of duty of disclosure is set forth. Page number, column number, and paragraph information should be given as to the opinion (or holding) of the Court or administrative body. The examiner may add explanatory comments.
- 5. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
¶ 14.22.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention — Application filed Before Sept. 16, 2012, Evidence in the Application
Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error “without any deceptive intention” has not been established. In view of the reply filed on [2], a conclusion that any error was “without deceptive intention” cannot be supported. [3]
Examiner Note:
- 1. In bracket 1, list all claims in the reissue application.
- 2. In bracket 2, insert the filing date of the reply which provides an admission of fraud, inequitable conduct or violation of duty of disclosure, or that there was a judicial determination of same.
- 3. In bracket 3, insert a statement that there has been an admission or a judicial determination of fraud, inequitable conduct or violation of duty of disclosure which provide circumstances why applicant’s statement in the oath or declaration of lack of deceptive intent should not be taken as dispositive. Any admission of fraud, inequitable conduct or violation of duty of disclosure must be explicit, unequivocal, and not subject to other interpretation.
- 4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
See MPEP § 2012 for additional discussion as to fraud, inequitable conduct or violation of duty of disclosure in a reissue application.
