Editing MPEP 1400
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MPEP Chapter 2600 for inter partes reexamination. | MPEP Chapter 2600 for inter partes reexamination. | ||
1401Reissue [R-3] | |||
35 U.S.C. 251. Reissue of defective patents. | |||
Whenever any patent is, through error without any deceptive | Whenever any patent is, through error without any deceptive | ||
intention, deemed wholly or partly inoperative or invalid, by reason | intention, deemed wholly or partly inoperative or invalid, by reason | ||
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claims of the original patent unless applied for within two years | claims of the original patent unless applied for within two years | ||
from the grant of the original patent. | from the grant of the original patent. | ||
The provisions of 35 U.S.C. 251 permit the reissue | The provisions of 35 U.S.C. 251 permit the reissue | ||
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directed to reissue. | directed to reissue. | ||
1402Grounds for Filing [R-5] | |||
A reissue application is filed to correct an error in | A reissue application is filed to correct an error in | ||
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present). | present). | ||
These corrections may be made via a certificate of | These corrections may be made via a certificate of | ||
correction; see MPEP § 1481. | correction; see MPEP § 1481. | ||
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by filing a request for a certificate of correction under | by filing a request for a certificate of correction under | ||
the provisions of 35 U.S.C. 256 and 37 CFR 1.324. | the provisions of 35 U.S.C. 256 and 37 CFR 1.324. | ||
See MPEP § 1412.04 and § 1481. A Certificate of | See MPEP § | ||
1412.04 and § 1481. A Certificate of | |||
Correction will be issued if all parties are in agreement | Correction will be issued if all parties are in agreement | ||
and the inventorship issue is not contested. | and the inventorship issue is not contested. | ||
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A reissue was granted in Brenner v. State of Israel, | A reissue was granted in Brenner v. State of Israel, | ||
400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where | 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where | ||
the only ground urged was failure to file a certified | the only ground urged was failure to file a certified | ||
copy of the original foreign application to obtain the | copy of the original foreign application to obtain the | ||
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within the time period set forth in 37 CFR 1.78(a)(2), | within the time period set forth in 37 CFR 1.78(a)(2), | ||
then a petition for an unintentionally delayed benefit | then a petition for an unintentionally delayed benefit | ||
claim under 37 CFR 1.78(a)(3) along with the surcharge | claim under 37 CFR 1.78(a)(3) along with the surcharge | ||
set forth in 37 CFR 1.17(t) would be required | set forth in 37 CFR 1.17(t) would be required | ||
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one substantive “error ” under 35 U.S.C. 251. | one substantive “error ” under 35 U.S.C. 251. | ||
1403Diligence in Filing [R-3] | |||
When a reissue application is filed within 2 years | When a reissue application is filed within 2 years | ||
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1410.01. | 1410.01. | ||
1404Submission of Papers Where Reissue | |||
Patent Is in Litigation [R-2] | |||
Marking of envelope: Applicants and protestors | Marking of envelope: Applicants and protestors | ||
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marked “REISSUE LITIGATION” will be given special | marked “REISSUE LITIGATION” will be given special | ||
attention and expedited handling. (For IFW processing, | attention and expedited handling. (For IFW processing, | ||
see IFW Manual.) See MPEP § 1442.01through § 1442.04 for examination of litigation- | see IFW Manual.) See MPEP § | ||
1442.01through § 1442.04 for examination of litigation- | |||
related reissue applications. Protestor’s participation, | related reissue applications. Protestor’s participation, | ||
including the submission of papers, is limited in | including the submission of papers, is limited in | ||
accordance with 37 CFR 1.291(c). | accordance with 37 CFR 1.291(c). | ||
1405Reissue and Patent Term [R-2] | |||
35 U.S.C. 251 prescribes the effect of reissue on the | 35 U.S.C. 251 prescribes the effect of reissue on the | ||
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original patent.” | original patent.” | ||
1406Citation and Consideration of | |||
References Cited in Original Patent[R-3] | |||
In a reissue application, the examiner should consider | In a reissue application, the examiner should consider | ||
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patent may no longer be relevant, e.g., in view of a | patent may no longer be relevant, e.g., in view of a | ||
narrowing of the claim scope in the reissue application. | narrowing of the claim scope in the reissue application. | ||
Should applicants wish to ensure that all of the references | Should applicants wish to ensure that all of the references | ||
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1.98(a)(2) requires | 1.98(a)(2) requires | ||
(A) a legible copy of each foreign patent, | (A)a legible copy of each foreign patent, | ||
(B) each publication or that portion which caused | |||
(B)each publication or that portion which caused | |||
it to be listed, | it to be listed, | ||
(C) each pending unpublished U.S. application | (C)each pending unpublished U.S. application | ||
unless the cited pending U.S. application is stored in | unless the cited pending U.S. application is stored in | ||
the Image File Wrapper (IFW) system. The requirement | the Image File Wrapper (IFW) system. The requirement | ||
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(Oct. 19, 2004), | (Oct. 19, 2004), | ||
(D) all other information or that portion which | (D)all other information or that portion which | ||
caused it to be listed. | caused it to be listed. | ||
See MPEP § 609.04(a). The Office imposes no | See MPEP § 609.04(a). The Office imposes no | ||
responsibility on a reissue applicant to resubmit, in a | responsibility on a reissue applicant to resubmit, in a | ||
reissue application, all the “References Cited” in the | reissue application, all the “References Cited” in the | ||
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reference has been considered. | reference has been considered. | ||
1410Content of Reissue Application[R-3] | |||
37 CFR 1.171. Application for reissue. | |||
An application for reissue must contain the same parts required | An application for reissue must contain the same parts required | ||
for an application for an original patent, complying with all the | for an application for an original patent, complying with all the | ||
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must comply with the requirements of the rules relating to | must comply with the requirements of the rules relating to | ||
reissue applications. | reissue applications. | ||
37 CFR 1.173. Reissue specification, drawings, and | |||
amendments. | |||
(a)Contents of a reissue application. An application for | |||
(a) Contents of a reissue application. An application for | |||
reissue must contain the entire specification, including the claims, | reissue must contain the entire specification, including the claims, | ||
and the drawings of the patent. No new matter shall be introduced | and the drawings of the patent. No new matter shall be introduced | ||
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35 U.S.C. 251. | 35 U.S.C. 251. | ||
(1)Specification, including claims. The entire specification, | |||
including the claims, of the patent for which reissue is | including the claims, of the patent for which reissue is | ||
requested must be furnished in the form of a copy of the printed | requested must be furnished in the form of a copy of the printed | ||
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of correction (§§ 1.322 through 1.324), or reexamination certificate | of correction (§§ 1.322 through 1.324), or reexamination certificate | ||
(§ 1.570) issued in the patent must be included. (See also § | (§ 1.570) issued in the patent must be included. (See also § | ||
1.178). | 1.178). | ||
(2)Drawings. Applicant must submit a clean copy of | |||
each drawing sheet of the printed patent at the time the reissue | each drawing sheet of the printed patent at the time the reissue | ||
application is filed. If such copy complies with § 1.84, no further | application is filed. If such copy complies with § 1.84, no further | ||
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the changes to the drawing must be made in accordance with | the changes to the drawing must be made in accordance with | ||
paragraph (b)(3) of this section. The Office will not transfer the | paragraph (b)(3) of this section. The Office will not transfer the | ||
drawings from the patent file to the reissue application. | drawings from the patent file to the reissue application. | ||
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made either by: | made either by: | ||
(A) physically incorporating the changes within | (A)physically incorporating the changes within | ||
the specification by cutting the column of the printed | the specification by cutting the column of the printed | ||
patent and inserting the added material and rejoining | patent and inserting the added material and rejoining | ||
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printed patent. Markings pursuant to 37 CFR 1.173(d) | printed patent. Markings pursuant to 37 CFR 1.173(d) | ||
must be used to show the changes. The columnar | must be used to show the changes. The columnar | ||
structure of the printed patent must be preserved, and | structure of the printed patent must be preserved, and | ||
the physically modified page must comply with | the physically modified page must comply with | ||
37 CFR 1.52(a)(1). As to compliance with 37 CFR | 37 | ||
CFR 1.52(a)(1). As to compliance with 37 CFR | |||
1.52(a)(1)(iv), the “written either by a typewriter or | 1.52(a)(1)(iv), the “written either by a typewriter or | ||
machine printer in permanent dark ink or its equivalent” | machine printer in permanent dark ink or its equivalent” | ||
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typed legibly in the margin; or | typed legibly in the margin; or | ||
(B) providing a separate amendment paper with | (B)providing a separate amendment paper with | ||
the reissue application. | the reissue application. | ||
In either case, the amendment must be made pursuant | In either case, the amendment must be made pursuant | ||
to 37 CFR 1.173(b) and must comply with all the | to 37 CFR 1.173(b) and must comply with all the | ||
provisions of 37 CFR 1.173(b)– (e) and (g). | provisions of 37 CFR 1.173(b)– (e) and (g). | ||
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The initial contents of a | The initial contents of a | ||
reissue application are discussed | reissue application are discussed | ||
in detail in MPEP § 1410.01 through § 1418. | in detail in MPEP § | ||
1410.01 through § 1418. | |||
For expedited processing, new and continuing reissue | For expedited processing, new and continuing reissue | ||
application filings under 37 CFR 1.53(b) may be | application filings under 37 CFR 1.53(b) may be | ||
addressed to: Mail Stop REISSUE, Commissioner for | addressed to: Mail Stop REISSUE, Commissioner for | ||
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MPEP § 1410.01. | MPEP § 1410.01. | ||
Form PTO/SB/50, Reissue Patent Application | |||
Transmittal, may be used for filing reissue applications. | |||
Reissue Patent Application Transmittal | |||
PTO/SB/50 (04-05) | |||
Approved for use through 04/30/2007. OMB 0651-0033 | |||
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE | |||
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. | |||
REISSUE PATENT APPLICATION TRANSMITTAL | |||
Attorney Docket No. | |||
First Named Inventor | |||
Original Patent Number | |||
Original Patent Issue Date | |||
(Month/Day/Year) | |||
Address to: | |||
Mail Stop Reissue | |||
Commissioner for Patents | |||
P.O. Box 1450 | |||
Alexandria, VA 22313-1450Express Mail Label No. | |||
APPLICATION FOR REISSUE OF: | |||
(Check applicable box) | |||
Utility Patent Design Patent Plant Patent | |||
APPLICATION ELEMENTS (37 CFR 1.173) ACCOMPANYING APPLICATION PARTS | |||
Statement of status and support for all | |||
10. changes to the claims. See 37 CFR 1.173(c). | |||
11. Foreign Priority Claim (35 U.S.C. 119) | |||
(if applicable) | |||
12. Information Disclosure Statement (IDS) | |||
PTO/SB/08 or PTO-1449 | |||
Copies of foreign patent documents, | |||
publications & other information | |||
13. English Translation of Reissue Oath/Declaration | |||
(if applicable) | |||
14. Preliminary Amendment | |||
Return Receipt Postcard (MPEP 503) | |||
15. (Should be specifically itemized) | |||
16. Other: | |||
1. Fee Transmittal Form (PTO/SB/56)(Submit a duplicate copy) | |||
2. Applicant claims small entity status. See 37 CFR 1.27. | |||
3. Specification and Claims in double column copy of patent format | |||
(amended, if appropriate) | |||
4. Drawing(s) (proposed amendments, if appropriate) | |||
5. Reissue Oath/Declaration (original or copy) | |||
(37 C.F.R. 1.175) (PTO/SB/51 or 52) | |||
6. Power of Attorney7. Original U.S. Patent currently assigned? Yes No | |||
(If Yes, check applicable box(es)) | |||
Written Consent of all Assignees (PTO/SB/53) | |||
37 CFR 3.73(b) Statement (PTO/SB/96) | |||
8. CD-ROM or CD-R in duplicate, Computer Program (Appendix) | |||
or large table | |||
Landscape Table on CD | |||
9. Nucleotide and/or Amino Acid Sequence Submission | |||
(if applicable, items a. – c. are required)) | |||
a. Computer Readable Form (CRF) | |||
b. Specification Sequence Listing on: | |||
i CD-ROM (2 copies) or CD-R (2 copies); or | |||
ii paper | |||
c. Statements verifying identity of above copies17. CORRESPONDENCE ADDRESS | |||
The address associated withCustomer Number: OR Correspondence address below | |||
Name | |||
Address | |||
City State Zip Code | |||
Country Telephone Email | |||
Signature Date | |||
Name (Print/Type) Registration No. (Attorney/Agent) | |||
This collection of information is required by 37 CFR 1.173. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO | |||
to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete, | |||
including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on | |||
the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and | |||
Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS | |||
ADDRESS. SEND TO: Mail Stop Reissue,Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. | |||
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2. | |||
Doc Code: | |||
Privacy Act Statment | |||
Privacy Act Statement | |||
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection | |||
with your submission of the attached form related to a patent application or patent. Accordingly, | |||
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the | |||
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; | |||
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark | |||
Office is to process and/or examine your submission related to a patent application or patent. If you do | |||
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to | |||
process and/or examine your submission, which may result in termination of proceedings or | |||
abandonment of the application or expiration of the patent. | |||
The information provided by you in this form will be subject to the following routine uses: | |||
1. The information on this form will be treated confidentially to the extent allowed under the | |||
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from | |||
this system of records may be disclosed to the Department of Justice to determine whether | |||
disclosure of these records is required by the Freedom of Information Act. | |||
2. A record from this system of records may be disclosed, as a routine use, in the course of | |||
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to | |||
opposing counsel in the course of settlement negotiations. | |||
3. A record in this system of records may be disclosed, as a routine use, to a Member of | |||
Congress submitting a request involving an individual, to whom the record pertains, when the | |||
individual has requested assistance from the Member with respect to the subject matter of the | |||
record. | |||
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the | |||
Agency having need for the information in order to perform a contract. Recipients of | |||
information shall be required to comply with the requirements of the Privacy Act of 1974, as | |||
amended, pursuant to 5 U.S.C. 552a(m). | |||
5. A record related to an International Application filed under the Patent Cooperation Treaty in | |||
this system of records may be disclosed, as a routine use, to the International Bureau of the | |||
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty. | |||
6. A record in this system of records may be disclosed, as a routine use, to another federal | |||
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to | |||
the Atomic Energy Act (42 U.S.C. 218(c)). | |||
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, | |||
General Services, or his/her designee, during an inspection of records conducted by GSA as | |||
part of that agency’s responsibility to recommend improvements in records management | |||
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall | |||
be made in accordance with the GSA regulations governing inspection of records for this | |||
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not | |||
be used to make determinations about individuals. | |||
8. A record from this system of records may be disclosed, as a routine use, to the public after | |||
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent | |||
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 | |||
CFR 1.14, as a routine use, to the public if the record was filed in an application which | |||
became abandoned or in which the proceedings were terminated and which application is | |||
referenced by either a published application, an application open to public inspection or an | |||
issued patent. | |||
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, | |||
or local law enforcement agency, if the USPTO becomes aware of a violation or potential | |||
violation of law or regulation. | |||
(a) A reissue oath must be signed and sworn to or declaration | |||
1410.01Reissue Applicant, Oath or | |||
Declaration, and Consent of all | |||
Assignees [R-5] | |||
37 CFR 1.172. Applicants, assignees. | |||
(a)A reissue oath must be signed and sworn to or declaration | |||
made by the inventor or inventors except as otherwise provided | made by the inventor or inventors except as otherwise provided | ||
(see §§ 1.42, 1.43, 1.47), and must be accompanied by the | (see | ||
§§ | |||
1.42, 1.43, 1.47), and must be accompanied by the | |||
written consent of all assignees, if any, owning an undivided interest | written consent of all assignees, if any, owning an undivided interest | ||
in the patent, but a reissue oath may be made and sworn to or | in the patent, but a reissue oath may be made and sworn to or | ||
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patent. All assignees consenting to the reissue must establish | patent. All assignees consenting to the reissue must establish | ||
their ownership interest in the patent by filing in the reissue application | their ownership interest in the patent by filing in the reissue application | ||
a submission in accordance with the provisions of § 3.73(b) | a submission in accordance with the provisions of § | ||
3.73(b) | |||
of this chapter. | of this chapter. | ||
(b) A reissue will be granted to the original patentee, his | (b)A reissue will be granted to the original patentee, his | ||
legal representatives or assigns as the interest may appear. | legal representatives or assigns as the interest may appear. | ||
37 CFR 3.73. Establishing right of assignee to take action. | |||
(b)(1) In order to request or take action in a patent or trademark | |||
matter, the assignee must establish its ownership of the | matter, the assignee must establish its ownership of the | ||
patent or trademark property of paragraph (a) of this section to the | patent or trademark property of paragraph (a) of this section to the | ||
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takes the action. Ownership is established by submitting to the | takes the action. Ownership is established by submitting to the | ||
Office a signed statement identifying the assignee, accompanied | Office a signed statement identifying the assignee, accompanied | ||
by either: | by either: | ||
(i) Documentary evidence of a chain of title from the | |||
original owner to the assignee (e.g., copy of an executed assignment). | original owner to the assignee (e.g., copy of an executed assignment). | ||
For trademark matters only, the documents submitted to | For trademark matters only, the documents submitted to | ||
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the documentary evidence of the chain of title from the original | the documentary evidence of the chain of title from the original | ||
owner to the assignee was or concurrently is being submitted for | owner to the assignee was or concurrently is being submitted for | ||
recordation pursuant to § 3.11; or | recordation pursuant to § 3.11; or | ||
(ii) A statement specifying where documentary evidence | |||
of a chain of title from the original owner to the assignee is | of a chain of title from the original owner to the assignee is | ||
recorded in the assignment records of the Office (e.g., reel and | recorded in the assignment records of the Office (e.g., reel and | ||
frame number). | frame number). | ||
(2)The submission establishing ownership must show | |||
that the person signing the submission is a person authorized to | that the person signing the submission is a person authorized to | ||
act on behalf of the assignee by: | act on behalf of the assignee by: | ||
(i)Including a statement that the person signing the | |||
submission is authorized to act on behalf of the assignee; or | submission is authorized to act on behalf of the assignee; or | ||
(ii)Being signed by a person having apparent authority | |||
to sign on behalf of the assignee, e.g., an officer of the | to sign on behalf of the assignee, e.g., an officer of the | ||
assignee. | assignee. | ||
(c) For patent matters only: | (c)For patent matters only: | ||
(1)Establishment of ownership by the assignee must be | |||
submitted prior to, or at the same time as, the paper requesting or | submitted prior to, or at the same time as, the paper requesting or | ||
taking action is submitted. | taking action is submitted. | ||
(2)If the submission under this section is by an assignee | |||
of less than the entire right, title and interest, such assignee must | of less than the entire right, title and interest, such assignee must | ||
indicate the extent (by percentage) of its ownership interest, or the | indicate the extent (by percentage) of its ownership interest, or the | ||
Office may refuse to accept the submission as an establishment of | Office may refuse to accept the submission as an establishment of | ||
ownership. | ownership. | ||
The reissue oath must be signed and sworn to by all | The reissue oath must be signed and sworn to by all | ||
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registered practitioner). If the file record is silent as to | registered practitioner). If the file record is silent as to | ||
the existence of an assignee, it will be presumed that | the existence of an assignee, it will be presumed that | ||
an assignee does exist. This presumption should be | an assignee does exist. This presumption should be | ||
set forth by the examiner in the first Office action | set forth by the examiner in the first Office action | ||
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authorized to act on behalf of the assignee. See MPEP | authorized to act on behalf of the assignee. See MPEP | ||
§ 324 for a discussion of parties authorized to act on | § 324 for a discussion of parties authorized to act on | ||
behalf of the assignee. | behalf of the assignee. The consent to the reissue | ||
application may use language such as: | |||
The XYZ Corporation, assignee of U.S. Patent No. | |||
9,999,999, consents to the filing of reissue application No. | |||
09/999,999 (or the present application, if filed with the | |||
initial application papers) for the reissue of U.S. Patent | |||
No. 9,999,999. | |||
_______________ | |||
Lilly M. Schor | |||
Vice President, | |||
XYZ Corporation | |||
Where the written consent of all the assignees to the | Where the written consent of all the assignees to the | ||
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all the assignees as required by 37 CFR 1.172. See | all the assignees as required by 37 CFR 1.172. See | ||
Baker Hughes Inc. v. Kirk, 921 F.Supp. 801, 809, | Baker Hughes Inc. v. Kirk, 921 F.Supp. 801, 809, | ||
38 USPQ2d 1885, 1892 (D.D.C. 1995), N. B. Fassett, | 38 | ||
USPQ2d 1885, 1892 (D.D.C. 1995), N. B. Fassett, | |||
1877 C.D. 32, 11 O.G. 420 (Comm’r Pat. 1877); | 1877 C.D. 32, 11 O.G. 420 (Comm’r Pat. 1877); | ||
James D. Wright, 1876 C.D. 217, 10 O.G. 587 | James D. Wright, 1876 C.D. 217, 10 O.G. 587 | ||
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is, or will be abandoned, the copy of the consent | is, or will be abandoned, the copy of the consent | ||
should be accepted by the Office. | should be accepted by the Office. | ||
Form paragraph 14.15 may be used to indicate that | |||
the consent of the assignee is lacking. | |||
¶ 14.15 Consent of Assignee to Reissue Lacking | |||
This application is objected to under 37 CFR 1.172(a) as lacking | |||
the written consent of all assignees owning an undivided interest | |||
in the patent. The consent of the assignee must be in | |||
compliance with 37 CFR 1.172. See MPEP § 1410.01. | |||
A proper assent of the assignee in compliance with 37 CFR | |||
1.172 and 3.73 is required in reply to this Office action. | |||
Examiner Note: | |||
1.This form paragraph may be used in an Office action which | |||
rejects any of the claims on other grounds. | |||
2.If a consent document/statement has been submitted but is | |||
insufficient (e.g., not by all the assignees) or is otherwise ineffective | |||
(e.g., a conditional consent, or a copy of the consent from the | |||
parent reissue application was filed in this continuation reissue | |||
application and the parent reissue application is not being abandoned), | |||
an explanation of such is to be included following this | |||
form paragraph. | |||
3.If the case is otherwise ready for allowance, this form paragraph | |||
should be followed by form paragraph 7.51 (insert the | |||
phrase --See above-- in bracket 1 of form paragraph 7.51). | |||
II.PROOF OF OWNERSHIP OF ASSIGNEE | II.PROOF OF OWNERSHIP OF ASSIGNEE | ||
Line 860: | Line 1,122: | ||
in accordance with 37 CFR 3.73(b) by: | in accordance with 37 CFR 3.73(b) by: | ||
(A) filing in the reissue application documentary | (A)filing in the reissue application documentary | ||
evidence of a chain of title from the original owner to | evidence of a chain of title from the original owner to | ||
the assignee; or | the assignee; or | ||
(B) specifying in the record of the reissue application | (B)specifying in the record of the reissue application | ||
where such evidence is recorded in the Office | where such evidence is recorded in the Office | ||
(e.g., reel and frame number, etc.). | (e.g., reel and frame number, etc.). | ||
Line 879: | Line 1,141: | ||
from the original owners to the assignee was, or concurrently | from the original owners to the assignee was, or concurrently | ||
is, submitted for recordation pursuant to 37 | is, submitted for recordation pursuant to 37 | ||
CFR 3.11. Thus, when filing a 37 CFR | CFR | ||
3.11. Thus, when filing a 37 CFR | |||
3.73(b) statement | 3.73(b) statement | ||
to establish ownership, an applicant or patent | to establish ownership, an applicant or patent | ||
Line 885: | Line 1,148: | ||
document(s) to the Office for recordation, unless such | document(s) to the Office for recordation, unless such | ||
a submission has already been previously made. If the | a submission has already been previously made. If the | ||
37 CFR 3.73(b) statement is not accompanied by a | 37 CFR | ||
3.73(b) statement is not accompanied by a | |||
statement affirming that the documentary evidence | statement affirming that the documentary evidence | ||
was, or concurrently is, submitted for recordation pursuant | was, or concurrently is, submitted for recordation pursuant | ||
to 37 CFR 3.11, then the 37 CFR | to 37 CFR | ||
3.73(b) statement will not be accepted, and the assignee(s) will not | 3.11, then the 37 CFR | ||
3.73(b) statement | |||
will not be accepted, and the assignee(s) will not | |||
have established the right to take action in the patent | have established the right to take action in the patent | ||
application or the patent for which the 37 | application or the patent for which the 37 | ||
CFR 3.73(b) statement was submitted. This could | CFR | ||
3.73(b) statement was submitted. This could | |||
result, for example, in an incomplete response, where | result, for example, in an incomplete response, where | ||
a party stated to be the “assignee” signs a consent to | a party stated to be the “assignee” signs a consent to | ||
Line 901: | Line 1,168: | ||
examiner should inspect the application to determine | examiner should inspect the application to determine | ||
whether the submission under 37 CFR 1.172 and | whether the submission under 37 CFR 1.172 and | ||
37 CFR 3.73(b) establishing the ownership of the | 37 | ||
CFR 3.73(b) establishing the ownership of the | |||
assignee is present and sufficient. | assignee is present and sufficient. | ||
If an assignment document is attached with the | If an assignment document is attached with the | ||
37 CFR 3.73(b) submission, the assignment should be | 37 | ||
CFR 3.73(b) submission, the assignment should be | |||
reviewed to ensure that the named assignee is the | reviewed to ensure that the named assignee is the | ||
same for the assignment document and the 37 CFR | same for the assignment document and the 37 CFR | ||
Line 917: | Line 1,186: | ||
recorded in the USPTO supports the statement | recorded in the USPTO supports the statement | ||
identifying the assignee. It will not be necessary | identifying the assignee. It will not be necessary | ||
for the examiner to obtain a copy of the recorded | for | ||
assignment document. | the examiner to obtain a copy of the recorded | ||
assignment document. If the submission under | |||
37 | |||
CFR 1.172 and 37 CFR 3.73(b) is not present, | |||
form paragraph 14.16 may be used to indicate that the | |||
assignee has not provided evidence of ownership. | |||
¶ 14.16 Failure of Assignee To Establish Ownership | |||
This application is objected to under 37 CFR 1.172(a) as the | |||
assignee has not established its ownership interest in the patent for | |||
which reissue is being requested. An assignee must establish its | |||
ownership interest in order to support the consent to a reissue | |||
application required by 37 CFR 1.172(a). The assignee’s ownership | |||
interest is established by: | |||
(a) filing in the reissue application evidence of a chain of title | |||
from the original owner to the assignee, or | |||
(b) specifying in the record of the reissue application where | |||
such evidence is recorded in the Office (e.g., reel and frame number, | |||
etc.). | |||
The submission with respect to (a) and (b) to establish ownership | |||
must be signed by a party authorized to act on behalf of the | |||
assignee. See MPEP § 1410.01. | |||
An appropriate paper satisfying the requirements of 37 CFR | |||
3.73 must be submitted in reply to this Office action. | |||
Examiner Note: | |||
1.This form paragraph may be used in an Office action which | |||
rejects any of the claims on other grounds. | |||
2.If otherwise ready for allowance, this form paragraph should | |||
be followed by form paragraph 7.51 (insert the phrase --See | |||
above-- in bracket 1 of form paragraph 7.51). | |||
Just as the consent of assignee must be signed by a | Just as the consent of assignee must be signed by a | ||
Line 928: | Line 1,239: | ||
Office is not sufficient, unless that attorney or agent is | Office is not sufficient, unless that attorney or agent is | ||
authorized to act on behalf of the assignee. | authorized to act on behalf of the assignee. | ||
If the submission under 37 CFR 3.73(b) to establish | |||
ownership is not signed by a party authorized to act | |||
on behalf of the assignee, the appropriate paragraphs | |||
of form paragraphs 14.16.01 through 14.16.06 may be | |||
used. | |||
¶ 14.16.01 Establishment of Ownership Not Signed by | |||
Appropriate Party | |||
This application is objected to under 37 CFR 1.172(a) as the | |||
assignee has not established its ownership interest in the patent for | |||
which reissue is being requested. An assignee must establish its | |||
ownership interest in order to support the consent to a reissue | |||
application required by 37 CFR 1.172(a). The submission establishing | |||
the ownership interest of the assignee is informal. There is | |||
no indication of record that the party who signed the submission is | |||
an appropriate party to sign on behalf of the assignee. 37 CFR | |||
3.73(b) | |||
A proper submission establishing ownership interest in the | |||
patent, pursuant to 37 CFR 1.172(a), is required in response to this | |||
action. | |||
Examiner Note: | |||
1.This form paragraph should be followed: by one of form | |||
paragraphs 14.16.02 through 14.16.04, and then optionally by | |||
form paragraph 14.16.06. | |||
2.See MPEP § 1410.01. | |||
¶ 14.16.02 Failure To State Capacity To Sign | |||
The person who signed the submission establishing ownership | |||
interest has failed to state his/her capacity to sign for the corporation | |||
or other business entity, and he/she has not been established | |||
as being authorized to act on behalf of the assignee. See MPEP § | |||
324. | |||
Examiner Note: | |||
1.This form paragraph is to be used when the person signing | |||
the submission establishing ownership interest does not state his/ | |||
her capacity (e.g., as a recognized officer) to sign for the assignee, | |||
and is not established as being authorized to act on behalf of the | |||
assignee. | |||
2.Use form paragraph 14.16.06 to explain how an official, | |||
other than a recognized officer, may properly sign a submission | |||
establishing ownership interest. | |||
¶ 14.16.03 Lack of Capacity To Sign | |||
The person who signed the submission establishing ownership | |||
interest is not recognized as an officer of the assignee, and he/she | |||
has not been established as being authorized to act on behalf of the | |||
assignee. See MPEP § 324. | |||
¶ 14.16.04 Attorney/Agent of Record Signs | |||
The submission establishing ownership interest was signed by | |||
applicant’s [1]. An attorney or agent of record is not authorized to | |||
sign a submission establishing ownership interest, unless he/she | |||
has been established as being authorized to act on behalf of the | |||
assignee. See MPEP § 324. | |||
Examiner Note: | |||
1.This form paragraph is to be used when the person signing | |||
the submission establishing ownership interest is an attorney or | |||
agent of record who is not an authorized officer as defined in | |||
MPEP § 324 and has not been established as being authorized to | |||
act on behalf of the assignee. | |||
2.Use form paragraph 14.16.06 to explain how an official, | |||
other than a recognized officer, may properly sign a submission | |||
establishing ownership interest. | |||
3.In bracket 1, insert either --attorney-- or --agent--. | |||
¶ 14.16.06 Criteria To Accept When Signed by a Non- | |||
Recognized Officer | |||
It would be acceptable for a person, other than a recognized | |||
officer, to sign a submission establishing ownership interest, provided | |||
the record for the application includes a duly signed statement | |||
that the person is empowered to sign a submission | |||
establishing ownership interest and/or act on behalf of the | |||
assignee. | |||
Accordingly, a new submission establishing ownership interest | |||
which includes such a statement above, will be considered to be | |||
signed by an appropriate official of the assignee. A separately | |||
filed paper referencing the previously filed submission establishing | |||
ownership interest and containing a proper empowerment | |||
statement would also be acceptable. | |||
Examiner Note: | |||
1.This form paragraph MUST be preceded by form paragraphs | |||
14.16.02, 14.16.03 or 14.16.04. | |||
2.When one of form paragraphs 14.16.02, 14.16.03 or 14.16.04is used to indicate that a submission establishing ownership interest | |||
is not proper because it was not signed by a recognized officer, | |||
this form paragraph should be used to point out one way to correct | |||
the problem. | |||
3.While an indication of the person’s title is desirable, its inclusion | |||
is not mandatory when this option is employed. | |||
Where the submission establishes the assignee’s | Where the submission establishes the assignee’s | ||
Line 970: | Line 1,400: | ||
the interest may appear. | the interest may appear. | ||
1411Form of Specification [R-3] | |||
37 CFR 1.173. Reissue specification, drawings, and | |||
(a) Contents of a reissue application. An application for | amendments. | ||
(a)Contents of a reissue application. An application for | |||
reissue must contain the entire specification, including the claims, | reissue must contain the entire specification, including the claims, | ||
and the drawings of the patent. No new matter shall be introduced | and the drawings of the patent. No new matter shall be introduced | ||
Line 981: | Line 1,413: | ||
35 U.S.C. 251. | 35 U.S.C. 251. | ||
(1)Specification, including claims. The entire specification, | |||
including the claims, of the patent for which reissue is | including the claims, of the patent for which reissue is | ||
requested must be furnished in the form of a copy of the printed | requested must be furnished in the form of a copy of the printed | ||
Line 992: | Line 1,424: | ||
of correction (§§ 1.322 through 1.324), or reexamination certificate | of correction (§§ 1.322 through 1.324), or reexamination certificate | ||
(§ 1.570) issued in the patent must be included. (See also | (§ 1.570) issued in the patent must be included. (See also | ||
§ 1.178). | § | ||
1.178). | |||
(2)Drawings. Applicant must submit a clean copy of | |||
each drawing sheet of the printed patent at the time the reissue | each drawing sheet of the printed patent at the time the reissue | ||
application is filed. If such copy complies with § 1.84, no further | application is filed. If such copy complies with § 1.84, no further | ||
Line 1,001: | Line 1,435: | ||
the changes to the drawing must be made in accordance with | the changes to the drawing must be made in accordance with | ||
paragraph (b)(3) of this section. The Office will not transfer the | paragraph (b)(3) of this section. The Office will not transfer the | ||
drawings from the patent file to the reissue application. | drawings from the patent file to the reissue application. | ||
Line 1,032: | Line 1,466: | ||
submit a clean copy of each drawing sheet of the | submit a clean copy of each drawing sheet of the | ||
printed patent at the time the reissue application is | printed patent at the time the reissue application is | ||
filed (37 CFR 1.173(a)(2)). Any changes to the | filed (37 CFR 1.173(a)(2)). Any changes to the draw | ||
ings must be made in accordance with 37 CFR | |||
1.173(b)(3). Thus, a full copy of the printed patent | 1.173(b)(3). Thus, a full copy of the printed patent | ||
(including the front page) is used to provide the | (including the front page) is used to provide the | ||
Line 1,054: | Line 1,496: | ||
The amendment may be made either by: | The amendment may be made either by: | ||
(A) physically incorporating the changes within | (A)physically incorporating the changes within | ||
the specification by cutting the column of the printed | the specification by cutting the column of the printed | ||
patent and inserting the added material and rejoining | patent and inserting the added material and rejoining | ||
Line 1,071: | Line 1,513: | ||
typed legibly in the margin; or | typed legibly in the margin; or | ||
(B) providing a preliminary amendment (a separate | (B)providing a preliminary amendment (a separate | ||
amendment paper) directing that specified | amendment paper) directing that specified | ||
changes be made to the copy of the printed patent. | changes be made to the copy of the printed patent. | ||
The presentation of the insertions or deletions as | The presentation of the insertions or deletions as | ||
part of the original reissue specification is an amendment | part of the original reissue specification is an amendment | ||
under 37 CFR 1.173(b). An amendment of the | under 37 CFR 1.173(b). An amendment of the | ||
Line 1,088: | Line 1,530: | ||
patent for the changes made to the claims. | patent for the changes made to the claims. | ||
If a chart, table, or chemical formula is amended | If a chart, table, or chemical formula is amended | ||
and it spans two columns of the patent, it should not | and it spans two columns of the patent, it should not | ||
be split. Rather, the chart, table, or chemical formula | be split. Rather, the chart, table, or chemical formula | ||
Line 1,134: | Line 1,576: | ||
within sets of double brackets. | within sets of double brackets. | ||
1411.01Certificate of Correction or Disclaimer | |||
in Original Patent [R-2] | |||
The applicant should include any changes, additions, | The applicant should include any changes, additions, | ||
Line 1,162: | Line 1,610: | ||
as sufficient basis for granting the petition. | as sufficient basis for granting the petition. | ||
1411.02New Matter | |||
New matter, that is, matter not present in the patent | New matter, that is, matter not present in the patent | ||
Line 1,178: | Line 1,626: | ||
Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942). | Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942). | ||
Form paragraph 14.22.01 may be used where new | |||
matter has been added anywhere in “the application | |||
for reissue” as prohibited by 35 U.S.C. 251. | |||
¶ 14.22.01 Rejection, 35 U.S.C. 251, New Matter | |||
Claim [1] rejected under 35 U.S.C. 251 as being based upon | |||
new matter added to the patent for which reissue is sought. The | |||
added material which is not supported by the prior patent is as follows: | |||
[2] | |||
Examiner Note: | |||
1.In bracket 2, fill in the applicable page and line numbers and | |||
provide an explanation of your position, as appropriate. | |||
2.A rejection under 35 U.S.C. 112, first paragraph, should also | |||
be made if the new matter is added to the claims or is added to the | |||
specification and affects the claims. If new matter is added to the | |||
specification and does not affect the claims, an objection should | |||
be made based upon 35 | |||
U.S.C. 132 using form paragraph 7.28. | |||
1412Content of Claims | |||
The content of claims in a reissue application is | The content of claims in a reissue application is |