Editing MPEP 1400

{{MPEP Chapter|1300|1500}}

'''<big>Chapter 1400 Correction of Patents</big>'''

<div class="noautonum">__TOC__</div>

==1400 [No Text]==

===1400.01Introduction===

A patent may be corrected or amended in four 
ways, namely: 

(A)by reissue, 

(B)by the issuance of a certificate of correction 
which becomes a part of the patent, 

(C)by disclaimer, and 

(D)by reexamination. 

The first three ways are discussed in this chapter 
while the fourth way (reexamination) is discussed in 
MPEP Chapter 2200 for ex parte reexamination and 
MPEP Chapter 2600 for inter partes reexamination.

==1401 Reissue==

{{Statute|35 U.S.C. 251. Reissue of defective patents.}}
Whenever any patent is, through error without any deceptive 
intention, deemed wholly or partly inoperative or invalid, by reason 
of a defective specification or drawing, or by reason of the 
patentee claiming more or less than he had a right to claim in the 
patent, the Director shall, on the surrender of such patent and the 
payment of the fee required by law, reissue the patent for the 
invention disclosed in the original patent, and in accordance with 
a new and amended application, for the unexpired part of the term 
of the original patent. No new matter shall be introduced into the 
application for reissue.

The Director may issue several reissued patents for distinct and 
separate parts of the thing patented, upon demand of the applicant, 
and upon payment of the required fee for a reissue for each of 
such reissued patents.

The provisions of this title relating to applications for patent 
shall be applicable to applications for reissue of a patent, except 
that application for reissue may be made and sworn to by the 
assignee of the entire interest if the application does not seek to 
enlarge the scope of the claims of the original patent.

No reissued patent shall be granted enlarging the scope of the 
claims of the original patent unless applied for within two years 
from the grant of the original patent.
|}


The provisions of 35 U.S.C. 251 permit the reissue 
of a patent to correct an error in the patent made without 
any deceptive intention and provide criteria for 
the reissue. 37 
CFR 1.171 through 1.178 are rules 
directed to reissue. 

==1402 Grounds for Filing==

A reissue application is filed to correct an error in 
the patent which was made without any deceptive 
intention, where, as a result of the error, the patent is 
deemed wholly or partly inoperative or invalid. An 
error in the patent arises out of an error in conduct 
which was made in the preparation and/or prosecution 
of the application which became the patent. 

There must be at least one error in the patent to provide 
grounds for reissue of the patent. If there is no 
error in the patent, the patent will not be reissued. The 
present section provides a discussion of what may be 
considered an error in the patent upon which to base a 
reissue application.

In accordance with 35 U.S.C. 251, the error upon 
which a reissue is based must be one which causes the 
patent to be “deemed wholly or partly inoperative or 
invalid, by reason of a defective specification or 
drawing, or by reason of the patentee claiming more 
or less than he had a right to claim in the patent.” 
Thus, an error under 35 U.S.C. 251 has not been presented 
where the correction to the patent is one of 
spelling, or grammar, or a typographical, editorial or 
clerical error which does not cause the patent to be 
deemed wholly or partly inoperative or invalid for the 
reasons specified in 35 U.S.C. 251. These corrections 
to a patent do not provide a basis for reissue (although 
these corrections may also be included in a reissue 
application, where a 35 U.S.C. 251 error is already 
present).

These corrections may be made via a certificate of 
correction; see MPEP § 1481.

The most common bases for filing a reissue application 
are:

{{Tab1}}(A)the claims are too narrow or too broad; </p>

{{Tab1}}(B)the disclosure contains inaccuracies; </p>

{{Tab1}}(C)applicant failed to or incorrectly claimed foreign priority; and</p>

{{Tab1}}(D)applicant failed to make reference to or incorrectly made reference to prior copending applications.</p>

An attorney’s failure to appreciate the full scope of 
the invention was held to be an error correctable 
through reissue in the decision of In re Wilder, 
736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). The 
correction of misjoinder of inventors in divisional 
reissues has been held to be a ground for reissue. See 
Ex parte Scudder, 169 USPQ 814 (Bd. App. 
1971).The Board of Appeals held in Ex parte Scudder, 
169 USPQ at 815, that 35 U.S.C. 251 authorizes 
reissue application to correct misjoinder of inventors 
where 35 U.S.C. 256 is inadequate.

Reissue may no longer be necessary under the facts 
in Ex parte Scudder, supra, in view of 35 U.S.C. 116which provides, inter alia, that:

“Inventors may apply for a patent jointly even though . . . 
(3) each did not make a contribution to the subject matter 
of every claim in the patent.” 

See also 37 CFR 1.45(b)(3). 

If the only change being made in the patent is correction 
of the inventorship, this can be accomplished 
by filing a request for a certificate of correction under 
the provisions of 35 U.S.C. 256 and 37 CFR 1.324. 
See MPEP § 1412.04 and § 1481. A Certificate of 
Correction will be issued if all parties are in agreement 
and the inventorship issue is not contested.

A reissue was granted in Brenner v. State of Israel, 
400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where 
the only ground urged was failure to file a certified 
copy of the original foreign application to obtain the 
right of foreign priority under 35 U.S.C. 119(a)-(d)
before the patent was granted.

In Brenner, the claim for priority had been made in 
the prosecution of the original patent, and it was only 
necessary to submit a certified copy of the priority 
document in the reissue application to perfect priority. 
Reissue is also available to convert the “error” in failing 
to take any steps to obtain the right of foreign priority 
under 35 U.S.C. 119(a)-(d) before the patent was 
granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 
186 USPQ 97, 106 (CCPA 1975) (“a patent may be 
reissued for the purpose of establishing a claim to priority 
which was not asserted, or which was not perfected 
during the prosecution of the original 
application”) In a situation where it is necessary to 
submit for the first time both the claim for priority and 
the certified copy of the priority document in the reissue 
application, and the patent to be reissued resulted 
from a utility or plant application which became the 
patent to be reissued was filed on or after November 
29, 2000, the reissue applicant must (where it is necessary 
to submit for the first time the claim for priority) 
also file a petition for an unintentionally delayed 
priority claim under 37 CFR 1.55(c) in addition to filing 
a reissue application. See MPEP § 201.14(a).

The courts have not addressed the question of correction 
of the failure to adequately claim benefit 
under 35 U.S.C. 119(e) in the application (which 
became the patent to be reissued) via reissue. If the 
application which became the patent to be reissued 
was filed prior to November 29, 2000, correction as to 
benefit under 35 U.S.C. 119(e) would be permitted in 
a manner somewhat analogous to that of the priority 
correction discussed above. Where the application, 
which became the patent to be reissued, was 
filed on or after November 29, 2000, reissue may be 
employed to correct an applicant’s mistake by adding 
or correcting a benefit claim under 35 U.S.C. 119(e). 
A petition under 37 CFR 1.78(a)(6) for an unintentionally 
delayed claim under 35 U.S.C. 119(e) would 
not be required in addition to filing a reissue application..

Section 4503 of the American Inventors Protection 
Act of 1999 (AIPA) amended 35 U.S.C. 119(e)(1) to 
state that:

No application shall be entitled to the benefit of an earlier 
filed provisional application under this subsection 
unless an amendment containing the specific reference to 
the earlier filed provisional application is submitted at such 
time during the pendency of the application as required by 
the Director. The Director may consider the failure to submit 
such an amendment within that time period as a waiver 
of any benefit under this subsection. The Director may 
establish procedures, including the payment of a surcharge, 
to accept an unintentionally delayed submission of an 
amendment under this section during the pendency of the 
application. (Emphasis added.)

The court in Fontijn held that 35 U.S.C. 251was sufficiently broad to correct a patent where the 
applicant failed to assert or failed to perfect a claim 
for foreign priority during the prosecution of the original 
application even though 35 U.S.C. 119(b) at that 
time required a claim and a certified copy of the foreign 
application to be filed before the patent is 
granted. Similarly, the Office may grant a reissue for 
adding or correcting a benefit claim under 35 
U.S.C.119(e) that requires the benefit claim to a provisional 
application be submitted during the pendency 
of the application..

Correction of failure to adequately claim benefit 
under 35 U.S.C. 120 in an earlier filed copending U.S. 
patent application was held a proper ground for reissue. 
Sampson v. Comm’r Pat., 195 USPQ 136, 137 
(D.D.C. 1976). If the utility or plant application which 
became the patent to be reissued was filed on or after 
November 29, 2000, the reissue applicant must file a 
petition for an unintentionally delayed priority claim 
under 37 CFR 1.78(a)(3) in addition to filing a reissue 
application. See MPEP § 201.11. For treatment of an 
error involving disclaimer of a benefit claim under 35 
U.S.C. 120, see MPEP 1405. If the utility or plant 
application which became the patent to be reissued 
was filed prior to November 29, 2000 and therefore, 
not subject to the eighteen-month publication (e.g., 
one of the categories set forth in 37 CFR 
1.78(a)(2)(ii)(A) – (C)), a petition for an unintentionally 
delayed benefit claim under 37 CFR 1.78(a)(3) 
would not be required to add/correct the benefit claim 
in the reissue application. This is so, even if the reissue 
application was filed on or after November 29, 
2000. On the other hand, if applicant fails to file an 
amendment to add a claim for benefit of a prior-filed 
reissue application in a later-filed reissue application 
within the time period set forth in 37 CFR 1.78(a)(2), 
then a petition for an unintentionally delayed benefit 
claim under 37 CFR 1.78(a)(3) along with the surcharge 
set forth in 37 CFR 1.17(t) would be required 
if the later-filed reissue application is a utility or plant 
application filed on or after November 29, 2000 irrespective 
of whether the original application which 
became the original patent was filed prior to November 
29, 2000. This is because the benefit claim is 
between the later-filed reissue application and the 
prior-filed reissue application and the benefit claim is 
not being added to make a correction as to a benefit of 
the original patent.

A reissue applicant’s failure to timely file a divisional 
application covering the non-elected invention(
s) following a restriction requirement is not 
considered to be error causing a patent granted on 
elected claims to be partially inoperative by reason of 
claiming less than the applicant had a right to claim. 
Thus, such applicant’s error is not correctable by reissue 
of the original patent under 35 U.S.C. 251. See 
MPEP § 1412.01.

A reissue may be based on a drawing correction 
that is substantive in nature, because such a correction 
qualifies as correcting an “error” under 35 U.S.C. 251that may properly be deemed to render the patent 
wholly or partly inoperative. A reissue application 
cannot be based on a non-substantive drawing change, 
such as a reference numeral correction or addition, the 
addition of shading, or even the addition of an additional 
figure merely to “clarify” the disclosure. Non-
substantive drawing changes may, however, be 
included in a reissue application that corrects at least 
one substantive “error ” under 35 U.S.C. 251.

==1403 Diligence in Filing==

When a reissue application is filed within 2 years 
from the date of the original patent, a rejection on the 
grounds of lack of diligence or delay in filing the reissue 
should not normally be made. Ex parte Lafferty, 
190 USPQ 202 (Bd. App. 1975); but see Rohm & 
Haas Co. v. Roberts Chemical Inc., 142 F. Supp. 499, 
110 USPQ 93 (S.W. Va. 1956), rev’d on other 
grounds, 245 F.2d 693, 113 USPQ 423 (4th Cir. 
1957).

The fourth paragraph of 35 U.S.C. 251 states:

“No reissued patent shall be granted enlarging the scope 
of the claims of the original patent unless applied for 
within two years from the grant of the original patent.” 

Where any broadening reissue application is filed 
within two years from the date of the original patent, 
35 U.S.C. 251 presumes diligence, and the examiner 
should not inquire why applicant failed to file the reissue 
application earlier within the two year period.

See MPEP § 1412.03 for broadening reissue practice. 
See also In re Graff, 111 F.3rd 874, 42 USPQ2d 
1471 (Fed. Cir. 1997); In re Bennett, 766 F.2d 524, 
528, 226 USPQ 413, 416 (Fed. Cir. 1985); In re Fotland, 
779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985). 

A reissue application that is filed on the 2-year 
anniversary date of the patent grant is considered as 
being filed within 2 years. See Switzer v. Sockman, 
333 
F.2d 935, 142 USPQ 226 (CCPA 1964) (a similar 
rule in interferences). 

A reissue application can be granted a filing date 
without an oath or declaration, or without the basic
filing fee, search fee, or examination fee being 
present. See 37 CFR 1.53(f). Applicant will be given a 
period of time to provide the missing parts and to pay 
the surcharge under 37 CFR 1.16(f). See MPEP § 
1410.01.

==1404 Submission of Papers Where Reissue Patent Is in Litigation==

Marking of envelope: Applicants and protestors 
(see MPEP § 1901.03) submitting papers for entry in 
reissue applications of patents involved in litigation 
are requested to mark the outside envelope and the top 
right-hand portion of the papers with the words 
“REISSUE LITIGATION” and with the art unit or 
other area of the United States Patent and Trademark 
Office in which the reissue application is located, e.g., 
Commissioner for Patents, Board of Patent Appeals 
and Interferences, Office of Patent Legal Administration, 
Technology Center, Office of Patent Publication, 
etc.  Marking of papers: Any “Reissue Litigation” 
papers mailed to the Office should be so 
marked. The markings preferably should be written 
in 
a bright color with a felt point marker. Papers 
marked “REISSUE LITIGATION” will be given special 
attention and expedited handling. (For IFW processing, 
see IFW Manual.) See MPEP § 1442.01through § 1442.04 for examination of litigation-
related reissue applications. Protestor’s participation, 
including the submission of papers, is limited in 
accordance with 37 CFR 1.291(c).

==1405 Reissue and Patent Term==

35 U.S.C. 251 prescribes the effect of reissue on the 
patent term by stating that “the Director shall… reissue 
the patent… for the unexpired term of the original 
patent.”

The maximum term of the original patent is fixed at 
the time the patent is granted. While the term may be 
subsequently shortened, e.g., through the filing of a 
terminal disclaimer, it cannot be extended through the 
filing of a reissue. Accordingly, a deletion in a reissue 
application of an earlier-obtained benefit claim under 
35 U.S.C. 120 will not operate to lengthen the term of 
the patent to be reissued.

When a reissue application has been filed in an 
attempt to delete an earlier-obtained benefit claim 
under 35 U.S.C. 120, it should be treated as follows:

(A)More than one “error” (as defined by 
35 
U.S.C. 251) is described in a reissue declaration, 
and one of the errors identified is the failure to delete 
a 35 U.S.C. 120 benefit claim in the original patent, or 
the erroneous making of a claim for 35 U.S.C. 120 
benefit.

If one of the errors identified is the presence of 
the claim for 35 U.S.C. 120 benefit in the patent, and 
patentee (1) states a belief that this error renders the 
original patent wholly or partly inoperative or invalid, 
and (2) is seeking to eliminate this error via the reissue 
proceeding, the Office will permit entry of an 
accompanying amendment deleting the benefit claim 
in the continuity data, and will not object to or reject 
the reissue declaration. Assuming the reissue declaration 
appropriately identifies or describes at least one 
other error being corrected, the reissue declaration 
would not be objected to for failure to comply with 
the requirements of 37 CFR 1.175.

Where the reissue declaration states that the patentee 
is making this correction in order to extend the 
term of the original patent, the examiner’s Office 
action will merely refer to the statement in the declaration 
and then point out with respect to such statement 
that 35 U.S.C. 251 only permits reissue “... for 
the unexpired part of the term of the original patent.”

(B)Only one “error” (as defined by 35 U.S.C. 
251) is described in a reissue declaration, and that 
error is the failure to delete a 35 U.S.C. 120 benefit 
claim in the original patent, or the erroneous making 
of a claim for 35 U.S.C. 120 benefit.

(1)If the only error identified in the reissue 
declaration is stated to be the correction or adjustment 
of the patent term by deleting the 35 U.S.C. 120 benefit 
claim, a rejection under 35 U.S.C. 251 should be 
made, based on the lack of an appropriate error for 
reissue and failure to comply with 37 CFR 1.175.

(2)If the only error identified in the reissue 
declaration is the need to delete a 35 U.S.C. 120 benefit 
claim, which the patentee seeks to now delete in 
the reissue application, (and no reference is made as 
to increasing the term of the patent), the examiner 
should not make a rejection under 35 U.S.C. 251based on lack of an appropriate error for reissue and 
failure to comply with 37 CFR 1.175. The examiner 
should examine the reissue application in accordance 
with 37 CFR 1.176 (MPEP § 1440). A statement 
should, however, be made in an Office action pointing 
out the lack of effect (of the change in the patent) on 
the patent term because 35 U.S.C. 251 only permits 
reissue “... for the unexpired part of the term of the 
original patent.”

==1406 Citation and Consideration of References Cited in Original Patent==

In a reissue application, the examiner should consider 
and list on a PTO-892 form all references that 
have been cited during the original prosecution of the 
patent. See MPEP § 1455. An exception to this practice 
might be where the references cited in the original 
patent may no longer be relevant, e.g., in view of a 
narrowing of the claim scope in the reissue application.

Should applicants wish to ensure that all of the references 
which were cited in the original patent are 
considered and cited in the reissue application, an 
information disclosure statement (IDS) in compliance 
with 37 CFR 1.97 and 1.98 should be filed in the reissue 
application. See MPEP § 609. The requirement 
for a copy of each U.S. patent or U.S. patent 
application publication listed in an IDS has been eliminated, 
unless required by the Office. 37 CFR 
1.98(a)(2) requires

(A) a legible copy of each foreign patent,

(B) each publication or that portion which caused 
it to be listed,

(C) each pending unpublished U.S. application 
unless the cited pending U.S. application is stored in 
the Image File Wrapper (IFW) system. The requirement 
in 37 CFR 1.98(a)(2)(iii) for a legible copy of 
the specification, including the claims and drawings 
of each cited pending U.S. patent application (or portion 
of the application which caused it to be listed) is 
sua sponte waived where the cited pending application 
is stored in the Office’ s IFW system. See Waiver 
of the Copy Requirement in 37 CFR 1.98 for Cited 
Pending U.S. Patent Applications, 1287 O.G. 163 
(Oct. 19, 2004),

(D) all other information or that portion which 
caused it to be listed.

See MPEP § 609.04(a). The Office imposes no 
responsibility on a reissue applicant to resubmit, in a 
reissue application, all the “References Cited” in the 
patent for which reissue is sought. Rather, applicant 
has a continuing duty under 37 CFR 1.56 to timely 
apprise the Office of any information which is material 
to the patentability of the claims under consideration 
in the reissue application. See MPEP § 1418. 

Where a copy of a reference other than a U.S. 
patent or U.S. patent application publication is not 
available and cannot be obtained through any source 
other than the reissue applicant (who has not submitted 
the copy), the examiner will not indicate on PTO-
892 or PTO/SB/08 submitted by applicant that a 
reference has been considered.

==1410 Content of Reissue Application==

{{Statute|37 CFR 1.171. Application for reissue.}}
An application for reissue must contain the same parts required 
for an application for an original patent, complying with all the 
rules relating thereto except as otherwise provided, and in addition, 
must comply with the requirements of the rules relating to 
reissue applications.
|}


{{Statute|37 CFR 1.173. Reissue specification, drawings, and amendments.}}
(a) Contents of a reissue application. An application for 
reissue must contain the entire specification, including the claims, 
and the drawings of the patent. No new matter shall be introduced 
into the application. No reissue patent shall be granted enlarging 
the scope of the claims of the original patent unless applied for 
within two years from the grant of the original patent, pursuant to 
35 U.S.C. 251.

<p style="padding-left: +20px;">(1) Specification, including claims. The entire specification, 
including the claims, of the patent for which reissue is 
requested must be furnished in the form of a copy of the printed 
patent, in double column format, each page on only one side of a 
single sheet of paper. If an amendment of the reissue application is 
to be included, it must be made pursuant to paragraph (b) of this 
section. The formal requirements for papers making up the reissue 
application other than those set forth in this section are set out in § 
1.52. Additionally, a copy of any disclaimer (§ 1.321), certificate 
of correction (§§ 1.322 through 1.324), or reexamination certificate 
(§ 1.570) issued in the patent must be included. (See also § 
1.178).</p>

<p style="padding-left: +20px;">(2) Drawings. Applicant must submit a clean copy of 
each drawing sheet of the printed patent at the time the reissue 
application is filed. If such copy complies with § 1.84, no further 
drawings will be required. Where a drawing of the reissue application 
is to include any changes relative to the patent being reissued, 
the changes to the drawing must be made in accordance with 
paragraph (b)(3) of this section. The Office will not transfer the 
drawings from the patent file to the reissue application.</p>
{{Ellipsis}}
|}


The specification (including the claims and any 
drawings) of the reissue application is the copy of the 
printed patent for which reissue is requested that is 
submitted by applicant as part of the initial application 
papers. The copy of the printed patent must be 
submitted in double column format, each page of double 
column format being on only one side of the piece 
of paper. It should be noted that a re-typed specification 
is not acceptable in a reissue application; the full 
copy of the printed patent must be used. In addition, 
an applicant for reissue is required to file a reissue 
oath or declaration which, in addition to complying 
with 37 CFR 1.63, must comply with 37 CFR 1.175. 
Where the patent has been assigned, the reissue applicant 
must also provide a consent of assignee to the 
reissue and evidence of ownership. Where the patent 
has not been assigned, the reissue applicant 
should 
affirmatively state that the patent is not 
assigned.

An amendment may be submitted at the time of filing 
of a reissue application. The amendment may be 
made either by:

(A) physically incorporating the changes within 
the specification by cutting the column of the printed 
patent and inserting the added material and rejoining 
the remainder of the column and then joining the 
resulting modified column to the other column of the 
printed patent. Markings pursuant to 37 CFR 1.173(d) 
must be used to show the changes. The columnar 
structure of the printed patent must be preserved, and 
the physically modified page must comply with 
37 CFR 1.52(a)(1). As to compliance with 37 CFR 
1.52(a)(1)(iv), the “written either by a typewriter or 
machine printer in permanent dark ink or its equivalent” 
requirement is deemed to be satisfied where a 
caret and line are drawn from a position within the 
text to a newly added phrase, clause, sentence, etc. 
typed legibly in the margin; or

(B) providing a separate amendment paper with 
the reissue application.

In either case, the amendment must be made pursuant 
to 37 CFR 1.173(b) and must comply with all the 
provisions of 37 CFR 1.173(b)– (e) and (g). 

If the changes to be made to the patent are 
so 
extensive that reading and understanding the specification 
is extremely difficult and error-prone, a clean, 
typed copy of the specification may be submitted if 
accompanied by a grantable petition under 37 CFR 
1.183 for waiver of 37 CFR 1.125(d) and 37 CFR 
1.173(a)(1).

Pursuant to 37 CFR 1.173(a)(1), applicant is 
required to include a copy of any disclaimer (37 CFR 
1.321), certificate of correction (37 CFR 1.322 – 
1.324), or reexamination certificate (37 CFR 1.520) 
issued in the patent for which reissue is requested. It 
should also be noted that 37 CFR 1.178(b) requires 
reissue applicants to call to the attention of the Office 
any prior or concurrent proceedings in which the 
patent (for which reissue is requested) is or was 
involved, such as interferences, reissues, reexaminations, 
or litigation (litigation covers any papers filed 
in the court or issued by the court, such as, for example, 
motions, pleadings, and court decisions including 
court orders) and the results of such proceedings. This 
duty to submit such information is a continuing duty, 
and runs from the time the reissue application is filed 
until the reissue application is abandoned or issues as 
a reissue patent.

It is no longer required that the reissue applicant 
physically surrender the original patent, see 
MPEP § 1416. 

Where appropriate, the reissue applicant may provide 
a claim for priority benefit under 35 U.S.C. 119or 120, and may also file an Information Disclosure 
Statement. 

The initial contents of a 
reissue application are discussed 
in detail in MPEP § 1410.01 through § 1418.

For expedited processing, new and continuing reissue 
application filings under 37 CFR 1.53(b) may be 
addressed to: Mail Stop REISSUE, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450. 
Mail Stop REISSUE should only be used for the initial 
filing of reissue applications, and should not be 
used for any subsequently filed correspondence in 
reissue applications. All new reissue filings should 
include a copy of a completed Reissue Patent Application 
Transmittal Form (PTO/SB/50) to ensure that 
the filing of the new application will be recognized as 
being for a reissue application.

The oath or declaration, any matters ancillary 
thereto (such as the consent of assignee), and the 
basic filing fee, search fee, and examination fee
may be submitted after the filing date pursuant to 37 
CFR 1.53(f). 

The requirement for the assignee to consent to filing 
a reissue no longer includes a requirement for 
applicant to order a title report with the filing of the 
reissue application. Rather, the assignee entity is 
established by a statement on behalf of all the assignees 
under 37 CFR 1.172(a) and 37 
CFR 3.73(b). See 
MPEP § 1410.01.

===1410.01 Reissue Applicant, Oath or Declaration, and Consent of all Assignees===

{{Statute|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 
(see §§ 1.42, 1.43, 1.47), and must be accompanied by the 
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 
declaration made by the assignee of the entire interest if the application 
does not seek to enlarge the scope of the claims of the original 
patent. All assignees consenting to the reissue must establish 
their ownership interest in the patent by filing in the reissue application 
a submission in accordance with the provisions of § 3.73(b) 
of this chapter.

(b) A reissue will be granted to the original patentee, his 
legal representatives or assigns as the interest may appear.
|}


{{Statute|37 CFR 3.73. Establishing right of assignee to take action.}}
{{Ellipsis}}
(b)

<p style="padding-left: +20px;">(1) In order to request or take action in a patent or trademark 
matter, the assignee must establish its ownership of the 
patent or trademark property of paragraph (a) of this section to the 
satisfaction of the Director. The establishment of ownership by 
the assignee may be combined with the paper that requests or 
takes the action. Ownership is established by submitting to the 
Office a signed statement identifying the assignee, accompanied 
by either:</p>

<p style="padding-left: +40px;">(i) Documentary evidence of a chain of title from the 
original owner to the assignee (e.g., copy of an executed assignment). 
For trademark matters only, the documents submitted to 
establish ownership may be required to be recorded pursuant to § 
3.11 in the assignment records of the Office as a condition to permitting 
the assignee to take action in a matter pending before the 
Office. For patent matters only, the submission of the documentary 
evidence must be accompanied by a statement affirming that 
the documentary evidence of the chain of title from the original 
owner to the assignee was or concurrently is being submitted for 
recordation pursuant to § 3.11; or</p>

<p style="padding-left: +40px;">(ii) A statement specifying where documentary evidence 
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 
frame number).</p>

<p style="padding-left: +20px;">(2) The submission establishing ownership must show 
that the person signing the submission is a person authorized to 
act on behalf of the assignee by:</p>

<p style="padding-left: +40px;">(i) Including a statement that the person signing the 
submission is authorized to act on behalf of the assignee; or</p>

<p style="padding-left: +40px;">(ii) Being signed by a person having apparent authority 
to sign on behalf of the assignee, e.g., an officer of the 
assignee.</p>

(c) For patent matters only:

<p style="padding-left: +20px;">(1) Establishment of ownership by the assignee must be 
submitted prior to, or at the same time as, the paper requesting or 
taking action is submitted.</p>

<p style="padding-left: +20px;">(2) If the submission under this section is by an assignee 
of less than the entire right, title and interest, such assignee must 
indicate the extent (by percentage) of its ownership interest, or the 
Office may refuse to accept the submission as an establishment of 
ownership.</p>
|}


The reissue oath must be signed and sworn to by all 
the inventors, or declaration made by all the inventors, 
except as otherwise provided in 37 CFR 1.42, 
1.43, and 1.47 (see MPEP § 409). Pursuant to 37 CFR 
1.172, where the reissue application does not seek to 
enlarge the scope of any of the claims of the original 
patent, the reissue oath may be made and sworn to, or 
declaration made, by the assignee of the entire interest. 
Depending on the circumstances, either Form 
PTO/SB/51, Reissue Application Declaration by the 
Inventor, or Form PTO/SB/52, Reissue Application 
Declaration by the Assignee, may be used to prepare a 
declaration in a reissue application. These forms are 
reproduced in MPEP § 1414.

If an inventor is to be added in a reissue application, 
a proper reissue oath or declaration including the 
signatures of all of the inventors is required. If one or 
more inventors are being deleted in a reissue application, 
an oath or declaration must be supplied over the 
signatures of the remaining inventors. Note that 
although an inventor being deleted in a reissue application 
need not sign the oath or declaration, if that 
inventor to be deleted has any ownership interest in 
the patent (e.g., that inventor did not assign away his/
her rights to the patent), the signature of that inventor 
must be supplied in the consent to filing the reissue 
application. See MPEP § 1412.04 as to correction of 
inventorship via reissue.

I.CONSENT TO THE REISSUE

Where no assignee exists, applicant should affirmatively 
state that fact. This can be done by simply 
checking the “NO” box of item 7 of Form PTO/SB/50 
(which form may be signed by the inventors, or by a 
registered practitioner). If the file record is silent as to 
the existence of an assignee, it will be presumed that 
an assignee does exist. This presumption should be 
set forth by the examiner in the first Office action 
alerting applicant to the requirement. It should be 
noted that the mere filing of a written assertion of 
small entity status in no way relieves applicant of the 
requirement to affirmatively state that no assignee 
exists.

Where a written assertion of small entity status, or 
other paper in file indicates that the application/patent 
is assigned, and there is no consent by the assignee 
named in the written assertion of small entity, the 
examiner should make inquiry into the matter in an 
Office action, even if the record otherwise indicates 
that the application/patent is not assigned.

The reissue oath or declaration must be accompanied 
by the written consent of all assignees. 35 U.S.C. 
111(a) and 37 CFR 1.53(b) provide, however, for 
according an application a filing date if filed with a 
specification, including claim(s), and any required 
drawings. Thus, where an application is filed without 
an oath or declaration, or without the consent of all 
assignees, if the application otherwise complies with 
37 CFR 1.53(b) and the reissue rules, the Office of 
Initial Patent Examination (OIPE) will accord a filing 
date and send out a notice of missing parts setting a 
period of time for filing the missing part and for payment 
of any surcharge required under 37 CFR 1.53(f)
and 1.16(f). If the reissue oath or declaration is filed 
but the assignee consent is lacking, the surcharge is 
required because, until the consent is filed, the reissue 
oath or declaration is defective, since it is not apparent 
that the signatures thereon are proper absent an indication 
that the assignees have consented to the filing. 

The consent of assignee must be signed by a party 
authorized to act on behalf of the assignee. See MPEP 
§ 324 for a discussion of parties authorized to act on 
behalf of the assignee.

Where the written consent of all the assignees to the 
filing of the reissue application cannot be obtained, 
applicant may under appropriate circumstances petition 
to the Office of Petitions (MPEP § 1002.02(b)) 
for a waiver under 37 CFR 1.183 of the requirement 
of 37 CFR 1.172, to permit the acceptance of the filing 
of the reissue application. The petition fee under 
37 CFR 1.17(f) must be included with the petition.

The reissue application can then be examined, but 
will not be allowed or issued without the consent of 
all the assignees as required by 37 CFR 1.172. See 
Baker Hughes Inc. v. Kirk, 921 F.Supp. 801, 809, 
38 USPQ2d 1885, 1892 (D.D.C. 1995), N. B. Fassett, 
1877 C.D. 32, 11 O.G. 420 (Comm’r Pat. 1877); 
James D. Wright, 1876 C.D. 217, 10 O.G. 587 
(Comm’r Pat. 1876).

Where a continuation reissue application is filed 
with a copy of the assignee consent from the parent 
reissue application, and the parent reissue application 
is not to be abandoned, the copy of the consent should 
not be accepted. Where a divisional reissue application 
is filed with a copy of the assignee consent from 
the parent reissue application, regardless of whether 
or not the parent reissue application is to be abandoned, 
the copy of the consent should not be 
accepted. The copy of the consent from the parent 
does not indicate that the assignee has consented to 
the addition of the new invention of the divisional 
reissue application to the original patent, or to the 
addition of the new error correction of the continuation 
reissue application. (Presumably, a new correction 
has been added via the continuation, since the 
parent is still pending.) As noted above, OIPE will 
accord a filing date and send out a notice of missing 
parts stating that there is no proper consent and setting 
a period of time for filing the missing part and for 
payment of any surcharge required under 37 CFR 
1.53(f) and 1.16(f)

Where a continuation reissue application is filed 
with a copy of the assignee consent from the parent 
reissue application, and the parent reissue application 
is, or will be abandoned, the copy of the consent 
should be accepted by the Office.

II.PROOF OF OWNERSHIP OF ASSIGNEE

The assignee that consents to the filing of the reissue 
application (as discussed above) must also establish 
that it is the assignee, i.e., the owner, of the 
patent. See 37 CFR 1.172. Accordingly, a 37 CFR 
3.73(b) paper establishing the ownership of the 
assignee should be submitted at the time of filing the 
reissue application, in order to support the consent of 
the assignee. The assignee must establish its ownership 
in accordance with 37 CFR 3.73(b) by:

(A) filing in the reissue application documentary 
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.). 

Compliance with 37 
CFR 3.73(b) may be provided 
as part of the same paper in which the consent by 
assignee is provided. 

In connection with option (A) above, the submission 
of the documentary evidence to establish ownership 
must be accompanied by a statement affirming 
that the documentary evidence of the chain of title 
from the original owners to the assignee was, or concurrently 
is, submitted for recordation pursuant to 37 
CFR 3.11. Thus, when filing a 37 CFR 
3.73(b) statement 
to establish ownership, an applicant or patent 
owner must also submit the relied-upon assignment 
document(s) to the Office for recordation, unless such 
a submission has already been previously made. If the 
37 CFR 3.73(b) statement is not accompanied by a 
statement affirming that the documentary evidence 
was, or concurrently is, submitted for recordation pursuant 
to 37 CFR 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 
application or the patent for which the 37 
CFR 3.73(b) statement was submitted. This could 
result, for example, in an incomplete response, where 
a party stated to be the “assignee” signs a consent to 
the reissue to obviate a requirement for submission of 
assignee consent made in an Office action.

Upon initial receipt of a reissue application, the 
examiner should inspect the application to determine 
whether the submission under 37 CFR 1.172 and 
37 CFR 3.73(b) establishing the ownership of the 
assignee is present and sufficient. 

If an assignment document is attached with the 
37 CFR 3.73(b) submission, the assignment should be 
reviewed to ensure that the named assignee is the 
same for the assignment document and the 37 CFR 
3.73(b) statement, and that the assignment document 
is an assignment of the patent to be reissued to the 
assignee. If an assignment document is not attached 
with the 37 CFR 3.73(b) statement, but rather the reel 
and frame number where the assignment document is 
recorded in the USPTO is referenced in the 37 CFR 
3.73(b) statement, it will be presumed that the assignment 
recorded in the USPTO supports the statement 
identifying the assignee. It will not be necessary 
for the examiner to obtain a copy of the recorded 
assignment document.

Just as the consent of assignee must be signed by a 
party authorized to act on behalf of the assignee, the 
submission with respect to 37 CFR 3.73(b) to establish 
ownership must be signed by a party authorized 
to act on behalf of the assignee. The signature of an 
attorney or agent registered to practice before the 
Office is not sufficient, unless that attorney or agent is 
authorized to act on behalf of the assignee. 

Where the submission establishes the assignee’s 
ownership as to the patent, ownership as to the reissue 
application will be presumed. Accordingly, a submission 
as to the ownership of the patent will be construed 
to satisfy the 37 
CFR1.172 (and 37 CFR 
3.73(b)) requirements for establishing ownership of 
the application. Thus, a terminal disclaimer can be 
filed in a reissue application where ownership of the 
patent has been established, without the need for a 
separate submission under 37 CFR 3.73(b) showing 
ownership of the reissue application.

Even if the submission states that it is establishing 
ownership of the reissue application (rather than the 
patent), the submission should be accepted by the 
examiner as also establishing ownership in the patent. 
The documentation in the submission establishing 
ownership of the reissue application must, of necessity, 
include chain of title as to the patent.

III.COMPARISON OF ASSIGNEE THAT 
CONSENTS TO ASSIGNEE SET FORTH 
IN SUBMISSION ESTABLISHING OWNERSHIP 
INTEREST

The examiner must inspect both the consent and 
documentary evidence of ownership to determine 
whether the requirements of 37 CFR 1.172 have been 
met. The assignee identified by the documentary evidence 
must be the same assignee which signed the 
consent. Also, the person who signs the consent for 
the assignee and the person who signs the submission 
of evidence of ownership for the assignee must both 
be persons having authority to do so. See also MPEP 
§ 324.

The reissue patent will be granted to the original 
patentee, his or her legal representatives or assigns as 
the interest may appear. 

==1411 Form of Specification==

{{Statute|37 CFR 1.173. Reissue specification, drawings, and amendments.}}
(a) Contents of a reissue application. An application for 
reissue must contain the entire specification, including the claims, 
and the drawings of the patent. No new matter shall be introduced 
into the application. No reissue patent shall be granted enlarging 
the scope of the claims of the original patent unless applied for 
within two years from the grant of the original patent, pursuant to 
35 U.S.C. 251.

<p style="padding-left: +20px;">(1) Specification, including claims. The entire specification, 
including the claims, of the patent for which reissue is 
requested must be furnished in the form of a copy of the printed 
patent, in double column format, each page on only one side of a 
single sheet of paper. If an amendment of the reissue application is 
to be included, it must be made pursuant to paragraph (b) of this 
section. The formal requirements for papers making up the reissue 
application other than those set forth in this section are set out in § 
1.52. Additionally, a copy of any disclaimer (§ 1.321), certificate 
of correction (§§ 1.322 through 1.324), or reexamination certificate 
(§ 1.570) issued in the patent must be included. (See also 
§ 1.178).</p>

<p style="padding-left: +20px;">(2) Drawings. Applicant must submit a clean copy of 
each drawing sheet of the printed patent at the time the reissue 
application is filed. If such copy complies with § 1.84, no further 
drawings will be required. Where a drawing of the reissue application 
is to include any changes relative to the patent being reissued, 
the changes to the drawing must be made in accordance with 
paragraph (b)(3) of this section. The Office will not transfer the 
drawings from the patent file to the reissue application.</p>
|}


The file wrappers of all /08 and earlier series reissue 
applications are stamped “REISSUE” above the 
application number on the front of the file. “Reissue” 
also appears below the application number on the 
printed label on the file wrapper of the application 
with 08/ and earlier series.

Reissue applications filed after July of 1998 (09/ 
series and later) are placed in an orange and white 
striped file wrapper and can be easily identified as 
reissue applications. (For IFW Processing, see IFW 
Manual.)

Reissue applications filed prior to November 7, 
2000 should be furnished in the form of cut-up soft 
copies of the original patent, with only a single column 
of the printed patent securely mounted on a separate 
sheet of paper. 

For reissue applications filed on or after November 
7, 2000, 37 CFR 1.173(a)(1) requires that the application 
specification, including the claims, must be furnished 
in the form of a copy of the printed patent in 
double column format (so that the patent can be simply 
copied without cutting). Applicants are required to 
submit a clean copy of each drawing sheet of the 
printed patent at the time the reissue application is 
filed (37 CFR 1.173(a)(2)). Any changes to the drawings must be made in accordance with 37 CFR 
1.173(b)(3). Thus, a full copy of the printed patent 
(including the front page) is used to provide the 
abstract, drawings, specification, and claims of the 
patent for the reissue application. Each page of the 
patent must appear on only one side of each individual 
page of the specification of the reissue application; 
a two-sided copy of the patent is not proper. It 
should be noted that a re-typed specification is not 
acceptable in a reissue application; the full copy of the 
printed patent must be used. If, however, the changes 
to be made to the patent are so extensive/numerous 
that reading and understanding the specification is 
extremely difficult and error-prone, a clean copy of 
the specification may be submitted if accompanied by 
a grantable petition under 37 CFR 1.183 for waiver of 
37 CFR 1.125(d) and 37 CFR 1.173(a)(1). 

Pursuant to 37 CFR 1.173(b), amendments may be 
made at the time of filing of a reissue application. 
The amendment may be made either by:

(A) physically incorporating the changes within 
the specification by cutting the column of the printed 
patent and inserting the added material and rejoining 
the remainder of the column and then joining the 
resulting modified column to the other column of the 
printed patent. Markings pursuant to 37 CFR 1.173(d) 
must be used to show the changes. The columnar 
structure of the printed patent must be preserved, and 
the physically modified page must comply with 37 
CFR 1.52(a)(1). As to compliance with 37 CFR 
1.52(a)(1)(iv), the “written either by a typewriter or 
machine printer in permanent dark ink or its equivalent” 
requirement is deemed to be satisfied where a 
caret and line are drawn from a position within the 
text to a newly added phrase, clause, sentence, etc. 
typed legibly in the margin; or

(B) providing a preliminary amendment (a separate 
amendment paper) directing that specified 
changes be made to the copy of the printed patent.

The presentation of the insertions or deletions as 
part of the original reissue specification is an amendment 
under 37 CFR 1.173(b). An amendment of the 
reissue application made at the time of filing of the 
reissue application must be made in accordance with 
37 CFR 1.173(b)-(e) and (g); see MPEP § 1453. Thus, 
as required by 37 CFR 1.173(c), an amendment of the 
claims made at the time of filing of a reissue application 
must include a separate paper setting forth the 
status of all claims (i.e., pending or canceled), and an 
explanation of the support in the disclosure of the 
patent for the changes made to the claims.

If a chart, table, or chemical formula is amended 
and it spans two columns of the patent, it should not 
be split. Rather, the chart, table, or chemical formula 
should be provided in its entirety as part of the column 
of the patent to which it pertains, in order to provide 
a continuity of the description. When doing so, 
the chart, table, or chemical formula may extend 
beyond the width of the column. Change in only a part 
of a word or chemical formula is not permitted. Entire 
words or chemical formulas must be shown as being 
changed. Deletion of a chemical formula should be 
shown by brackets which are substantially larger and 
darker than any in the formula.

Where a terminal disclaimer was filed in the application 
for the patent to be reissued, a copy of that terminal 
disclaimer is not needed in the reissue 
application file. For a reissue application that is 
maintained in a paper file, the face of the file wrapper 
should be marked to indicate that a terminal disclaimer 
has been filed for the patent. For a reissue 
application that is maintained in IFW, the “Final 
SPRE Review” form will be filled in.

Twice reissued patent:

Examples of the form for a twice-reissued patent 
are found in Re. 23,558 and Re. 28,488. Double 
underlining and double bracketing are used in the second 
reissue application, while bold-faced type and 
double bracketing appear in the printed patent (the 
second reissue patent) to indicate further insertions 
and deletions, respectively, in the second reissue 
patent.

When a copy of a first reissue patent is used as the 
specification of a second reissue application (filed as 
a reissue of a reissue), additions made by the first reissue 
will already be printed in italics, and should 
remain in such format. Thus, applicants need only 
present additions to the specification/claims in the 
second reissue application as double underlined text. 
Subject matter to be deleted from the first reissue 
patent should be presented in the second reissue application 
within sets of double brackets. 

===1411.01 Certificate of Correction or Disclaimer in Original Patent===

The applicant should include any changes, additions, 
or deletions that were made by a Certificate of 
Correction to the original patent grant in the reissue 
application without underlining or bracketing. The 
examiner should  make certain that all Certificate of 
Correction changes in the patent have been properly 
incorporated into the reissue application.

Certificate of Correction changes and disclaimer of 
claim(s) under 37 CFR 1.321(a) should be made without 
using underlining or brackets. Since these are part 
of the original patent and were made before the reissue 
was filed, they should show up in the printed reissue 
patent document as part of the original patent, 
i.e., not in italics or bracketed. If the changes are 
extensive and/or applicant has submitted them 
improperly with underlining and brackets, a clean 
copy of the specification with the Certificate of Correction 
changes in it may be requested by the examiner. 
In order for the clean copy to be entered as a 
substitute specification, the reissue applicant must file 
a grantable petition under 37 CFR 1.183 for waiver of 
37 CFR 1.125(d) and 37 CFR 1.173(a)(1). The examiner’ 
s request for the clean copy will generally serve 
as sufficient basis for granting the petition.

===1411.02 New Matter===

New matter, that is, matter not present in the patent 
sought to be reissued, is excluded from a reissue 
application in accordance with 35 U.S.C. 251.

The claims in the reissue application must be for 
subject matter which the applicant had the right to 
claim in the original patent. Any change in the patent 
made via the reissue application should be checked to 
ensure that it does not introduce new matter. Note that 
new matter may exist by virtue of the omission of a 
feature or of a step in a method. See United States 
Industrial Chemicals, Inc. v. Carbide & Carbon 
Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942). 

==1412 Content of Claims==

The content of claims in a reissue application is 
somewhat limited, as is indicated in MPEP § 1412.01through MPEP § 1412.03.

1412.01Reissue Claims Must Be for 
Same General Invention [R-2]

The reissue claims must be for the same invention 
as that disclosed as being the invention in the 
original patent, as required by 35 U.S.C. 251. This 
does not mean that the invention claimed in the reissue 
must have been claimed in the original patent, 
although this is evidence that applicants considered it 
their invention. The entire disclosure, not just the 
claim(s), is considered in determining what the patentee 
objectively intended as his or her invention. The 
proper test as to whether reissue claims are for the 
same invention as that disclosed as being the invention 
in the original patent is “an essentially factual 
inquiry confined to the objective intent manifested by 
the original patent.” In re Amos, 953 F.2d 613, 618, 
21 USPQ2d 1271, 1274 (Fed. Cir. 1991) (quoting In 
re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 
(CCPA 1975)) (emphasis added). See also In re Mead, 
581 F.2d 257, 198 USPQ 412 (CCPA 1978). The 
“original patent” requirement of 35 U.S.C. 251 must 
be understood in light of In re Amos, supra, where the 
Court of Appeals for the Federal Circuit stated:

We conclude that, under both Mead and Rowand, a claim 
submitted in reissue may be rejected under the “original 
patent” clause if the original specification demonstrates, 
to one skilled in the art, an absence of disclosure sufficient 
to indicate that a patentee could have claimed the subject 
matter. Merely finding that the subject matter was “not 
originally claimed, not an object of the original patent, 
and not depicted in the drawing,” does not answer the 
essential inquiry under the “original patent” clause of § 
251, which is whether one skilled in the art, reading the 




 

specification, would identify the subject matter of the new 
claims as invented and disclosed by the patentees. In 
short, the absence of an “intent,” even if objectively evident 
from the earlier claims, the drawings, or the original 
objects of the invention is simply not enough to establish 
that the new claims are not drawn to the invention disclosed 
in the original patent.

953 F.2d at 618-19, 21 USPQ2d at 1275. Claims presented 
in a reissue application are considered to satisfy 
the requirement of 35 U.S.C. 251 that the claims 
be “for the invention disclosed in the original patent” 
where:

(A)the claims presented in the reissue application 
are described in the original patent specification and 
enabled by the original patent specification such that 
35 U.S.C. 112 first paragraph is satisfied; and

(B)nothing in the original patent specification 
indicates an intent not to claim the subject matter of 
the claims presented in the reissue application.

The presence of some disclosure (description 
and enablement) in the original patent should evidence 
that applicant intended to claim or that applicant 
considered the material now claimed to be his or 
her invention. 

The original patent specification would indicate an 
intent not to claim the subject matter of the claims 
presented in the reissue application in a situation analogous 
to the following: 

The original patent specification discloses that 
composition X is not suitable (or not satisfactory) for 
molding an item because composition X fails to provide 
quick drying. After the patent issues, it is found 
that composition X would be desirable for the molding 
in spite of the failure to provide quick drying, 
because of some other newly recognized benefit from 
composition X. A claim to composition X or a method 
of use thereof would not be permitted in a reissue 
application, because the original patent specification 
contained an explicit statement of intent not to claim 
composition X or a method of use thereof. 

In most instances, however, the mere failure to 
claim a disclosed embodiment in the original patent 
(absent an explicit statement in the original patent 
specification of unsuitability of the embodiment) 
would not be grounds for prohibiting a claim to that 
embodiment in the reissue.

FAILURE TO TIMELY FILE A DIVISIONAL 
APPLICATION PRIOR TO ISSUANCE OF 
ORIGINAL PATENT

Where a restriction requirement was made in an 
application and applicant permitted the elected invention 
to issue as a patent without the filing of a divisional 
application on the non-elected invention(s), the 
non-elected invention(s) cannot be recovered by filing 
a reissue application. A reissue applicant’ s failure to 
timely file a divisional application covering the non-
elected invention(s) in response to a restriction 
requirement is not considered to be error causing a 
patent granted on the elected claims to be partially 
inoperative by reason of claiming less than the applicant 
had a right to claim. Accordingly, such error is 
not correctable by reissue of the original patent under 
35 U.S.C. 251. In re Watkinson, 900 F.2d 230, 14 
USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 550 F.2d 
1277, 1280, 193 USPQ 145, 148 (CCPA 1977). See 
also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 
1978). In this situation, the reissue claims should be 
rejected under 35 U.S.C. 251 for lack of defect in the 
original patent and lack of error in obtaining the original 
patent. Compare with In re Doyle, 293 F.3d 1355, 
63 USPQ2d 1161 (Fed. Cir. 2002) where the court 
permitted the patentee to file a reissue application to 
present a so-called linking claim, a claim broad 
enough to read on or link the invention elected (and 
patented) together with the invention not elected. The 
non-elected invention(s) were inadvertently not filed 
as a divisional application.

1412.02Recapture of Canceled SubjectMatter [R-5]

A reissue will not be granted to “recapture” claimed 
subject matter which was surrendered in an application 
to obtain the original patent. North American 
Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 
1335, 75 USPQ2d 1545 (Fed. Cir. 2005, Pannu v. 
Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 
1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, 
Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 
1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 
1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 
F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 
1984); In re Wadlinger, 496 F.2d 1200, 181 USPQ 
826 (CCPA 1974); In re Richman, 409 F.2d 269, 276, 




 

161 USPQ 359, 363-364 (CCPA 1969); In re Willingham, 
282 
F.2d 353, 127 USPQ 211 (CCPA 1960).

I.THREE STEP TEST FOR RECAPTURE:

In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 
1164-65, the Court of Appeals for the Federal Circuit 
set forth a three step test for recapture analysis. In 
Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600, the 
court restated this test as follows:

Application of the recapture rule is a three-step process.


The first step is to ‘determine whether and in what aspect 
the reissue claims are broader than the patent claims.’....

‘The second step is to determine whether the broader 
aspects of the reissued claim related to surrendered subject 
matter’ ....

Finally, the court must determine whether the reissued 
claims were materially narrowed in other respects to avoid 
the recapture rule. [Emphasis added]

A.The First Step - Was There Broadening?

In every reissue application, the examiner must first 
review each claim for the presence of broadening, as 
compared with the scope of the claims of the patent to 
be reissued. A reissue claim is broadened where some 
limitation of the patent claims is no longer required in 
the reissue claim; see MPEP § 1412.03 for guidance 
as to the nature of a “broadening claim.” If the reissue 
claim is not broadened in any respect as compared to 
the patent claims, the analysis ends; there is no recapture.


B.The Second Step - Does Any Broadening 
Aspect of the Reissued Claim Relate to 
Surrendered Subject Matter?

Where a claim in a reissue application is broadened 
in some respect as compared to the patent claims, the 
examiner must next determine whether the broadening 
aspect(s) of that reissue claim relate(s) to subject 
matter that applicant previously surrendered during 
the prosecution of the original application (which 
became the patent to be reissued). Each limitation of 
the patent claims, which is omitted or broadened in 
the reissue claim, must be reviewed for this determination. 
This involves two sub-steps:

1.The Two Sub-Steps:

(A)It must first be determined whether there was 
any surrender of subject matter made in the prosecution 
of the original application which became the 
patent to be reissued.

If an original patent claim limitation now being 
omitted or broadened in the present reissue application 
was originally relied upon by applicant in the 
original application to make the claims allowable over 
the art, the omitted limitation relates to subject matter 
previously surrendered by applicant. The reliance by 
applicant to define the original patent claims over the 
art can be by way of presentation of new/amended 
claims to define over the art, or an argument/statement 
by applicant that a limitation of the claim(s) 
defines over the art. To determine whether such reliance 
occurred, the examiner must review the prosecution 
history of the original application file (of the 
patent to be reissued) for recapture. The prosecution 
history includes the rejections and applicant’s arguments 
made therein.

If there was no surrender of subject matter made 
in the prosecution of the original application, again 
the analysis ends and there is no recapture.

(B)If there was a surrender of subject matter in 
the original application prosecution, it must then be 
determined whether any of the broadening of the reissue 
claims is in the area of the surrendered subject 
matter. All of the broadening aspects of reissue claims 
must be analyzed to determine if any of the omitted/
broadened limitation(s) are directed to limitations 
relied upon by applicant in the original application to 
make the claims allowable over the art.

2.Examples of the Pannu Second Step Analysis:


(A)Example (1) - Argument without amendment:

In Hester, supra, the Federal Circuit held that the 
surrender which forms the basis for impermissible 
recapture “can occur through arguments alone”. 
142 
F.3d at 1482, 46 USPQ2d at 1649. For example, 
assume that limitation A of the patent claims is omitted 
in the reissue claims. This omission provides a 
broadening aspect in the reissue claims, as compared 
to the claims of the patent. If the omitted limitation A 
was argued in the original application to make the 
application claims allowable over the art in the appli





 

cation, then the omitted limitation relates to subject 
matter previously surrendered in the original application, 
and recapture will exist. Accordingly, where 
claims are broadened in a reissue application, the 
examiner should review the prosecution history of the 
original patent file for recapture, even where the 
claims were never amended during the prosecution of 
the application which resulted in the patent.

Note: The argument that the claim limitation 
defined over the rejection must have been specific as 
to the limitation relied upon, rather than a general 
statement regarding the claims as a whole. A general 
'boiler plate' sentence in the original application will 
not, by itself, be sufficient to establish surrender and 
recapture.

An example of a general “boiler plate” sentence of 
argument is:

“In closing, it is argued that the limitations of claims 1-7 
distinguish the claims from the teachings of the prior art, 
and claims 1-7 are thus patentable.”

An argument that merely states that all the limitations 
of the claims define over the prior art will also 
not, by itself, be sufficient to establish surrender and 
recapture. An example is:

“Claims 1-5 set forth a power-train apparatus which comprises 
the combination of A+B+C+D+E. The prior art of 
record does not disclose or render obvious a motivation to 
provide for a material-transfer apparatus as defined by the 
limitations of claim 1, including an A member and a B 
member, both connected to a C member, with all three 
being aligned with the D and E members.”

This statement is simply a restatement of the 
entirety of claim 1 as allowed. No measure of surrender 
could be gleaned from such a statement of reasons 
for allowance. See Ex parte Yamaguchi, 61 USPQ2d 
1043 (Bd. Pat. App. & Inter. 2001)(reported but 
unpublished, precedential).

In both of the above examples, the argument does 
not provide an indication of what specific limitations, 
e.g., specific element or step of the claims, cooperative 
effect, or other aspect of the claims, are being 
relied upon for patentability. Thus, applicant has not 
surrendered anything.

(B)Example (2) - Amendment of the claims without 
argument:

The limitation omitted in the reissue claim(s) was 
added in the original application claims for the purpose 
of making the application claims allowable over 
a rejection or objection made in the application. Even 
though applicant made no argument on the record that 
the limitation was added to obviate the rejection, the 
nature of the addition to the claim can show that the 
limitation was added in direct reply to the rejection. 
This too will establish the omitted limitation as relating 
to subject matter previously surrendered. To illustrate 
this, note the following example:

The original application claims recite limitations A+B+C, 
and the Office action rejection combines two references to 
show A+B+C. In the amendment replying to the Office 
action, applicant adds limitation D to A+B+C in the 
claims, but makes no argument as to that addition. The 
examiner then allows the claims. Even though there is no 
argument as to the addition of limitation D, it must be presumed 
that the D limitation was added to obviate the 
rejection. The subsequent deletion of (omission of) limitation 
D in the reissue claims would be presumed to be a 
broadening in an aspect of the reissue claims related to 
surrendered subject matter. Accordingly, the reissued 
claims would be barred by the recapture doctrine.

The above result would be the same whether the 
addition of limitation D in the original application 
was by way of applicant’s amendment or by way of an 
examiner’s amendment with authorization by applicant.


(C)Example (3) - Who can make the surrendering 
argument?

Assume that the limitation A omitted in the reissue 
claims was present in the claims of the original application. 
The examiner’s reasons for allowance in the 
original application stated that it was that limitation A 
which distinguished over a potential combination of 
references X and Y. Applicant did not present on the 
record a counter statement or comment as to the 
examiner’s reasons for allowance, and permitted the 
claims to issue. 

Ex parte Yamaguchi, supra, held that a surrender of 
claimed subject matter cannot be based solely upon an 
applicant’s failure to respond to, or failure to challenge, 
an examiner’s statement made during the prosecution 
of an application. Applicant is bound only by 
applicant’s revision of the application claims or a positive 
argument/statement by applicant. An applicant’s 
failure to present on the record a counter statement or 




 

comment as to an examiner’s reasons for allowance 
does not give rise to any implication that applicant 
agreed with or acquiesced in the examiner’s reasoning 
for allowance. Thus, the failure to present a counter 
statement or comment as to the examiner’s statement 
of reasons for allowance does not give rise to any 
finding of surrender. The examiner’s statement of 
reasons for allowance in the original application 
cannot, by itself, provide the basis for establishing 
surrender and recapture. 

It is only in the situation where applicant does file 
comments on the statement of reasons for allowance, 
that surrender may have occurred. Note the following 
two scenarios in which an applicant files comments:

Scenario 1- There is Surrender: The examiner’s statement 
of reasons for allowance in the original application stated 
that it was limitation C (of the combination of ABC) 
which distinguished over a potential combining of references 
X and Y, in that limitation C provided increased 
speed to the process. Applicant filed comments on the 
examiner’s statement of reasons for allowance essentially 
supporting the examiner’ s reasons. The limitation C is 
thus established as relating to subject matter previously 
surrendered.

Scenario 2- There is No Surrender: On the other hand, if 
applicant’s comments on the examiner’s statement of reasons 
for allowance contain a counter statement that it is limitation 
B (of the combination of ABC), rather than C, which 
distinguishes the claims over the art, then limitation B 
would constitute surrendered subject matter, and limitation 
C has not been surrendered.

C.The Third Step - Were the reissued claims 
materially narrowed in other respects to 
compensate for the broadening in the area of 
surrender, and thus avoid the recapture rule?

As pointed out above, the third prong of the recapture 
determination set forth in Pannu is directed to 
analysis of the broadening and narrowing effected via 
the reissue claims, and of the significance of the claim 
limitations added and deleted, using the prosecution 
history of the patent (to be reissued), to determine 
whether the reissue claims should be barred as recapture.


The following discussion addresses analyzing the 
reissue claims, and which claims are to be compared 
to the reissue claims in determining the issue of surrender 
(for reissue recapture).

When analyzing a reissue claim for the possibility 
of impermissible recapture, there are two different 
types of analysis that must be performed. If the reissue 
claim “fails” either analysis, recapture exists.

First, the reissue claim must be compared to any 
claims canceled or amended during prosecution of the 
original application. It is impermissible recapture for 
a reissue claim to be as broad or broader in scope than 
any claim that was canceled or amended in the original 
prosecution to define over the art. Claim scope 
that was canceled or amended is deemed surrendered 
and therefore barred from reissue. In re Clement, 
supra.

Second, it must be determined whether the reissue 
claim entirely omits any limitation that was added/
argued during the original prosecution to overcome an 
art rejection. Such an omission in a reissue claim, 
even if it includes other limitations making the reissue 
claim narrower than the patent claim in other aspects, 
is impermissible recapture. Pannu v. Storz Instruments 
Inc., supra. However, if the reissue claim 
recites a broader form of the key limitation added/
argued during original prosecution to overcome an art 
rejection (and therefore not entirely removing that key 
limitation), then the reissue claim may not be rejected 
under the recapture doctrine. Ex Parte Eggert, 
67 
USPQ2d 1716 (Bd. Pat. App. & Inter. 2003) (precedential). 
For example, if the key limitation added to 
overcome an art rejection was “an orange peel,” and 
the reissue claim instead recites “a citrus fruit peel”, 
the reissue claim may not be rejected on recapture 
grounds.

The following discussion is provided for analyzing 
the reissue claims.

1.Comparison of Reissue Claims Narrowed/
Broadened Vis-à-vis the Canceled Claims

DEFINITION: “Canceled claims,” in the context of 
recapture case law, are claims canceled from the original 
application to obtain the patent for which reissue 
is now being sought. The claims

(A)can simply be canceled and not replaced by 
others, or

(B)can be canceled and replaced by other claims 
which are more specific than the canceled claims in at 
least one aspect (to thereby define over the art of 
record). The “replacement claims” can be new claims 
which are narrower than the canceled claims, or can 




 

be the same claims amended to be narrower than the 
canceled version of the claims.

(a)Reissue Claims are Same or Broader in 
Scope Than Canceled Claims in All Aspects:

The recapture rule bars the patentee from acquiring, 
through reissue, claims that are in all aspects (A) of 
the same scope as, or (B) broader in scope than, those 
claims canceled from the original application to 
obtain a patent. In re Ball Corp. v. United States, 
729 
F.2d at 1436, 221 USPQ at 295. 

(b)Reissue Claims are Narrower in Scope Than 
Canceled Claims in at Least One Aspect:

If the reissue claims are equal in scope to, or narrower 
than, the claims of the original patent (as 
opposed to the claims “canceled from the application”) 
in all aspects, then there can never be recapture. 
The discussion that follows is not directed to that situation. 
It is rather directed to the situation where the 
reissue claims are narrower than the claims 'canceled' 
from the application in some aspect, but are broader 
than the claims of the original patent in some other 
aspect.

If the reissue claims are narrower in scope than the 
claims canceled from the original application by 
inclusion of the limitation added to define the original 
application claims over the art, there will be no recapture, 
even if the reissue claims are broader than the 
canceled claims in some other aspect (i.e., an aspect 
not related to the surrender made in the original application).


Assume combination AB was originally presented 
in the application, and was amended in response to an 
art rejection to add element C and thus provide ABC 
(after which the patent issued). The reissue claims are 
then directed to combination ABbroadenedC. The 
ABbroadenedC claims are narrower in scope when 
compared with the canceled claim subject matter AB 
in respect to the addition of C (which was added in the 
application to overcome the art), and there is no 
recapture.

As another example, assume combination ABZ was 
originally presented in the application, and was 
amended in response to an art rejection to add element 
C and thus provide ABZC (after which the patent 
issued). The reissue claims are then directed to combination 
ABC (i.e., element Z is deleted from the canceled 
claims, while element C remains present). The 
ABC claims of the reissue are narrower in scope as 
compared to the canceled-from-the-original-application 
claim subject matter ABZ in respect to the addition 
of C (which was added in the application to 
overcome the art), and there is thus no recapture.

2.Comparison of Reissue Claims Narrowed/
Broadened Via-à-vis the Patent Claims

The “patent claims,” in the context of recapture 
case law, are claims which issued in the original 
patent for which reissue is now being sought. As 
pointed out above, where the reissue claims are narrower 
than the claims of the original patent in all 
aspects, then there can never be recapture. If reissue 
claims are equal in scope to the patent claims, there is 
no recapture as to those reissue claims. Where, however, 
reissue claims are both broadened and narrowedas compared with the original patent claims, the 
nature of the broadening and narrowing must be 
examined to determine whether the reissue claims are 
barred as being recapture of surrendered subject matter. 
If the claims are 'broader than they are narrower in 
a manner directly pertinent to the subject matter... surrendered 
during prosecution' (Clement, 131 F.3d at 
1471, 45 USPQ2d at 1166), then recapture will bar the 
claims. This narrowing/broadening vis-à-vis the 
patent is broken down into four possibilities that will 
now be addressed.

The “limitation” presented, argued, or stated to 
make the claims patentable over the art (in the application) 
“generates” the surrender of claimed subject 
matter. For the sake of simplification, this limitation 
will be referred to throughout this section as the surrender-
generating limitation. If a claim is presented in 
a reissue application that omits, in its entirety, the surrender-
generating limitation, that claim impermissibly 
recaptures what was previously surrendered, and that 
claim is barred under 35 U.S.C. 251. This terminology 
will be used in the discussion of the four categories 
of narrowing/broadening vis-à-vis the patent that 
follows.




 

(a)Reissue Claims are Narrower in Scope Than 
Patent Claims, in Area Not Directed to 
Amendment/Argument Made to Overcome 
Art Rejection in Original Prosecution; are 
Broader in Scope by Omitting Limitation(s) 
Added/Argued To Overcome Art Rejection 
in Original Prosecution:

In this case, there is recapture. 

This situation is where the patent claims are 
directed to combination ABC and the reissue claims 
are directed to ABD. Element C was either a limitation 
added to AB to obtain allowance of the original 
patent, or was argued by applicant to define over the 
art (or both). Thus, addition of C (and/or argument as 
to C) has resulted in the surrender of any combination 
of A & B that does not include C; this is the surrendered 
subject matter. Element D, on the other hand, is 
not related to the surrendered subject matter. Thus, the 
reissue claim, which no longer contains C, is broadened 
in an area related to the surrender, and the narrowing 
via the addition of D does not save the claim 
from recapture since D is not related to the surrendered 
subject matter.

Reissue claims that are broader than the original 
patent claims by not including the surrender-generating 
limitation (element C, in the example given) will 
be barred by the recapture rule even though there is 
narrowing of the claims not related to the surrender-
generating limitation. As stated in the decision of In re 
Clement, 131 F.3d at 1470, 45 USPQ2d at 1165, if the 
reissue claim is broader in an aspect germane to a 
prior art rejection, but narrower in another aspect 
completely unrelated to the rejection, the recapture 
rule bars the claim. Pannu v. Storz Instruments Inc., 
supra, then brings home the point by providing an 
actual fact situation in which this scenario was held to 
be recapture.

(b)Reissue Claims are Narrower or Equal in 
Scope, in Area Directed to Amendment/
Argument Made to Overcome Art Rejection 
in Original Prosecution; are Broader in 
Scope in Area Not Directed to Amendment/
Argument:

In this case, there is no recapture.

This situation is where the patent claims are 
directed to combination ABCDE and the reissue 
claims are directed to ABDE (element C is omitted). 
Assume that the combination of ABCD was present in 
the original application as it was filed, and element E 
was later added to define over that art. No argument 
was ever presented as to elements A-C defining over 
the art. 

In this situation, the ABCDE combination of the 
patent can be broadened (in the reissue application) to 
omit element C, and thereby claim the combination of 
ABDE, where element E (the surrender generating 
limitation) is not omitted. There would be no recapture 
in this instance. (If an argument had been presented 
as to element C defining over the art, in 
addition to the addition of element E, then the 
ABCDE combination could not be broadened to omit 
element C and thereby claim combination of ABDE. 
This would be recapture; see the above discussion as 
to surrender and recapture based upon argument.)

Additionally, the reissue claims are certainly permitted 
to recite combination ABDEspecific (where surrender-
generating element E is narrowed). The patent 
claims have been broadened in an area not directed to 
the surrender (by omitting element C) and narrowed 
in the area of surrender (by narrowing element E to 
Especific). This is clearly permitted.

As another example, assume limitation C was 
added to application claims AB to obtain the patent to 
ABC, and now the reissue application presents claims 
to AC or ABbroadC. Such reissue claims avoid the 
effect of the recapture rule because they are broader in 
a way that does not attempt to reclaim what was surrendered 
earlier. Mentor Corp. v. Coloplast, Inc., 998 
F.2d 992, 994, 27 USPQ2d 1521, 1525 (Fed. Cir. 
1993). Such claims are considered to be broader in an 
aspect not 'germane to a prior art rejection,' and thus 
are not barred by recapture. Note In re Clement, 
131 
F.3d at 1470, 45 USPQ2d at 1165.

Reissue claims that are broader than the original 
patent claims by deletion of a limitation or claim 
requirement other than the “surrender-generating limitation” 
will avoid the effect of the recapture rule, 
regardless of the nature of the narrowing in the 
claims, and even if the claims are not narrowed at all 
from the scope of the patent claims.




 

(c)Reissue Claims are Narrower in Scope in 
Area Not Directed to Amendment/Argument 
Made to Overcome Art Rejection in Original 
Prosecution; are Broader in Scope in Area 
Not Directed to the Amendment/Argument:

In this instance, there is clearly no recapture. In the 
reissue application, there has been no change in the 
claims related to the matter surrendered in the original 
application for the patent.

In this instance, element C was added to the AB 
combination to provide ABC and define over the art, 
and the patent was issued. The reissue omits element 
B and adds element Z, to thus claim ACZ. There is no 
recapture since the surrender generating element C 
has not been modified in any way. (Note, however, 
that if, when element C was added to AB, applicant 
argued that the association of newly added C with B 
provides a synergistic (unexpected) result to thus 
define over the art, then neither B nor C could be 
omitted in the reissue application.)

(d)Reissue Claims Broader in Scope in Area 
Directed to Amendment/Argument Made to 
Overcome Art Rejection in Original 
Prosecution; but Reissue Claims Retain, in 
Broadened Form, the Limitation(s) Argued/
Added to Overcome Art Rejection in 
Original Prosecution:

Assume the combination AB was originally 
claimed in the application, and was amended in reply 
to an art rejection to add element C and thus provide 
the combination ABC (after which the patent issued). 
A reissue application is then filed, and the reissue 
application claims are directed to the combination 
ABCbroadened. The ABCbroadened claims are narrowed 
in scope when compared with the canceled claim subject 
matter AB, because of the addition of Cbroadened. 
Thus, the claims retain, in broadened form, the limitation 
argued/added to overcome art rejection in original 
prosecution. There is no recapture, since 
ABCbroadened is narrower than canceled claim subject 
matter AB in an area related to the surrender. This is 
so, because it was element C that was added in the 
application to overcome the art. See Ex Parte Eggert, 
supra.

II.REISSUE TO TAKE ADVANTAGE OF 
35 
U.S.C. 103(b):

A patentee may file a reissue application to permit 
consideration of process claims which qualify for 
35 
U.S.C. 103(b) treatment if a patent is granted on an 
application entitled to the benefit of 35 U.S.C. 103(b), 
without an election having been made as a result of..
error without deceptive intent. See MPEP 
§
 
706.02(n). This is not to be considered a recapture. 
The addition of process claims, however, will 
generally be considered to be a broadening of the 
invention (Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. 
Pat. App. & Inter. 1989)), and such addition must be 
applied for within two years of the grant of the original 
patent. See also MPEP § 1412.03 as to broadened 
claims.

III.REISSUE FOR ARTICLE CLAIMS 
WHICH ARE FUNCTIONAL DESCRIPTIVE 
MATERIAL STORED ON A COMPUTER-
READABLE MEDIUM:

A patentee may file a reissue application to permit 
consideration of article of manufacture claims which 
are functional descriptive material stored on a computer-
readable medium, where these article claims 
correspond to the process or machine claims which 
have been patented. The error in not presenting claims 
to this statutory category of invention (the “article” 
claims) must have been made as a result of error without 
deceptive intent. The addition of these “article” 
claims will generally be considered to be a broadening 
of the invention (Ex parte Wikdahl, 10 USPQ2d 
1546 (Bd. Pat. App. & Inter. 1989)), and such addition 
must be applied for within two years of the grant of 
the original patent. See also MPEP § 1412.03 as to 
broadened claims.

IV.REJECTION BASED UPON RECAPTURE:


Reissue claims which recapture surrendered subject 
matter should be rejected using form paragraph 14.17.

¶ 14.17 Rejection, 35 U.S.C. 251, Recapture

Claim[1] rejected under 35 U.S.C. 251 as being an improper 
recapture of broadened claimed subject matter surrendered in the 
application for the patent upon which the present reissue is based. 
See Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 
1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 
F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 




 

F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. 
United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 
1984). A broadening aspect is present in the reissue which was not 
present in the application for patent. The record of the application 
for the patent shows that the broadening aspect (in the reissue) 
relates to claim subject matter that applicant previously surrendered 
during the prosecution of the application. Accordingly, the 
narrow scope of the claims in the patent was not an error within 
the meaning of 35 U.S.C. 251, and the broader scope of claim subject 
matter surrendered in the application for the patent cannot be 
recaptured by the filing of the present reissue application.

[2]

Examiner Note:

In bracket 2, the examiner should explain the specifics of why 
recapture exists, including an identification of the omitted/broadened 
claim limitations in the reissue which provide the “broadening 
aspect” to the claim(s), and where in the original application 
the narrowed claim scope was presented/argued to obviate a rejection/
objection. See MPEP §
 
1412.02. 

See the recapture-analysis flow chart which follows 
for assistance in determining whether recapture is 
present, consistent with the case law discussed above.




 

Flowchart - Reissue Recapture - Determining its presence or absence





 

1412.03Broadening Reissue Claims 
[R-3]

35 U.S.C. 251 prescribes a 2-year limit for filing 
applications for broadening reissues:

No reissue patent shall be granted enlarging the scope of 
the original patent unless applied for within two years 
from the grant of the original patent. 



I. MEANING OF “BROADENED REISSUE 
CLAIM” 

A broadened reissue claim is a claim which 
enlarges the scope of the claims of the patent, i.e., a 
claim which is greater in scope than each and every 
claim of the original patent. If a disclaimer is filed in 
the patent prior to the filing of a reissue application, 
the disclaimed claims are not part of the “original 
patent” under 35 U.S.C. 251. The Court in Vectra Fitness 
Inc. v. TNWK Corp., 49 USPQ2d 1144, 1147, 
162 F.3d 1379, 1383 (Fed. Cir. 1998) held that a reissue 
application violated the statutory prohibition 
under 35 U.S.C. 251 against broadening the scope of 
the patent more than 2 years after its grant because the 
reissue claims are broader than the claims that remain 
after the disclaimer, even though the reissue claims 
are narrower than the claims that were disclaimed by 
the patentee before reissue. The reissue application 
was bounded by the claims remaining in the patent 
after a disclaimer is filed.A claim of a reissue application 
enlarges the scope of the claims of the patent if it 
is broader in at least one respect, even though it may 
be narrower in other respects. 

A claim in the reissue which includes subject matter 
not covered by the patent claims enlarges the scope 
of the patent claims. For example, if any amended or 
newly added claim in the reissue contains within its 
scope any conceivable product or process which 
would not have infringed the patent, then that reissue 
claim would be broader than the patent claims. Tillotson, 
Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 
4 
USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re 
Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA 
1960); In re Rogoff, 261 F.2d 601, 603, 120 USPQ 
185, 186 (CCPA 1958). A claim which reads on 
something which the original claims do not is a broadened 
claim. A claim would be considered a broadening 
claim if the patent owner would be able to sue any 
party for infringement who previously could not have 
been sued for infringement. Thus, where the original 
patent claims only the process, and the reissue application 
adds (for the first time) product claims, the 
scope of the claims has been broadened since a party 
could not be sued for infringement of the product 
based on the claims of the original patent.

The addition of combination claims in a reissue 
application where only subcombination claims were 
present in the original patent could be a broadening of 
the invention. The question which must be resolved in 
this case is whether the combination claims added in 
the reissue would be for “the invention as claimed” in 
the original patent. See Ex parte Wikdahl, 10 USPQ2d 
at 1549. The newly added combination claims should 
be analyzed to determine whether they contain every 
limitation of the subcombination of any claim of the 
original patent. If the combination claims (added in 
the reissue) contain every limitation of the subcombination 
(which was claimed in the original application), 
then infringement of the combination must also 
result in infringement of the subcombination. Accordingly, 
the patent owner could not, if a reissue patent 
issues with the combination claims, sue any new 
party for infringement who could not have been sued 
for infringement of the original patent. Therefore, 
broadening does not exist, in spite of the addition of 
the combination.



II. SCOPE OF DEPENDENT CLAIM 
ENLARGED-NOT BROADENING

As pointed out above, a claim will be considered a 
broadened reissue claim when it is greater in scope 
than each and every claim of the patent to be reissued. 
A corollary of this is that a claim which has 
been broadened in a reissue as compared to its scope 
in the patent is not a broadened reissue claim if it is 
narrower than, or equal in scope to, any other claim 
which appears in the patent. A common example of 
this is where dependent claim 2 is broadened via the 
reissue (other than the addition of a process step to 
convert an intermediate to a final product as discussed 
in the preceding subsection), but independent claim 1 
on which it is based is not broadened. Since a dependent 
claim is construed to contain all the limitations of 
the claim upon which it depends, claim 2 must be at 




 

least as narrow as claim 1 and is thus not a broadened 
reissue claim.



III. NEW CATEGORY OF INVENTION 
ADDED IN REISSUE - GENERALLY 
IS BROADENING

The addition of process claims as a new category of 
invention to be claimed in the patent (i.e., where there 
were no method claims present in the original patent) 
is generally considered as being a broadening of the 
invention. See Ex parte Wikdahl, 10 USPQ2d 1546 
(Bd. Pat. App. & Inter. 1989). A situation may arise, 
however, where the reissue application adds a limitation 
(or limitations) to process A of making the product 
A claimed in the original patent claims. For 
example:

(1)a process of using the product A (made by the 
process of the original patent) to make a product B, 
disclosed but not claimed in the original patent; or

(2)a process of using the product A to carry out a 
process B disclosed but not claimed in the original 
patent.

Although this amendment of the claims adds a 
method of making product B or adds a method of 
using product A, this is not broadening (i.e., this is not 
an enlargement of the scope of the original patent) 
because the “newly claimed invention” contains all 
the limitations of the original patent claim(s).



IV. WHEN A BROADENED CLAIM CAN BE 
PRESENTED

A broadened claim can be presented within two 
years from the grant of the original patent in a reissue 
application. In addition, a broadened claim can be 
presented after two years from the grant of the original 
patent in a broadening reissue application
which was filed within two years from the grant. 
Where any intent to broaden is indicated in the reissue 
application within the two years from the patent grant, 
a broadened claim can subsequently be presented in 
the reissue after the two year period. Thus, a broadened 
claim may be presented in a reissue application 
after the two years, even though the broadened claim 
presented after the two years is different than the 
broadened claim presented within the two years.
Finally, if intent to broaden is indicated in a parent 
reissue application within the two years, a broadened 
claim can be presented in a continuing (continuation 
or divisional) reissue application after the two year 
period. In any other situation, a broadened claim cannot 
be presented, and the examiner should check carefully 
for the improper presentation of broadened 
claims. 

A reissue application filed on the 2-year anniversary 
date from the patent grant is considered to be 
filed within 2 years of the patent grant. See Switzer v. 
Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) 
for a similar rule in interferences.

See also the following cases which pertain to 
broadened reissues:

In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 
1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing 
reissue application were properly rejected 
under 35 U.S.C. 251 because the proposal for broadened 
claims was not made (in the parent reissue application) 
within two years from the grant of the original 
patent and the public was not notified that broadened 
claims were being sought until after the two-year 
period elapsed.); 

In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. 
Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The 
failure by an applicant to include an oath or declaration 
indicating a desire to seek broadened claimswithin two years of the patent grant will bar a subsequent 
attempt to broaden the claims after the two year 
limit. Under the former version of 37 CFR 1.175 (the 
former 37 CFR 1.175(a)(4)), applicant timely sought 
a “no-defect” reissue, but the Court did not permit an 
attempt made beyond the two year limit to convert the 
reissue into a broadening reissue. In this case, applicant 
did not indicate any intent to broaden within the 
two years.);

In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 
416 (Fed. Cir. 1985) (en banc) (A reissue application 
with broadened claims was filed within two years of 
the patent grant; however, the declaration was executed 
by the assignee rather than the inventor. The 
Federal Circuit permitted correction of the improperly 
executed declaration to be made more than two years 
after the patent grant.);

In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 
(CCPA 1970) (If the reissue application is timely filed 
within two years of the original patent grant and the 




 

applicant indicates in the oath or declaration that the 
claims will be broadened, then applicant may subsequently 
broaden the claims in the pending reissue 
prosecution even if the additional broadening occurs 
beyond the two year limit.). 

Form paragraphs 14.12 and 14.13 may be used in 
rejections based on improper broadened reissue 
claims.

¶ 14.12 Rejection, 35 U.S.C. 251, Broadened Claims After 
Two Years

Claim [1] rejected under 35 U.S.C. 251 as being broadened in 
a reissue application filed outside the two year statutory period. 
[2] A claim is broader in scope than the original claims if it contains 
within its scope any conceivable product or process which 
would not have infringed the original patent. A claim is broadened 
if it is broader in any one respect even though it may be narrower 
in other respects.

Examiner Note:

The claim limitations that broaden the scope should be identified 
and explained in bracket 2. See MPEP §§ 706.03(x) and 
1412.03.

¶ 14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed 
by Assignee

Claim [1] rejected under 35 U.S.C. 251 as being improperly 
broadened in a reissue application made and sworn to by the 
assignee and not the patentee. [2]A claim is broader in scope than 
the original claims if it contains within its scope any conceivable 
product or process which would not have infringed the original 
patent. A claim is broadened if it is broader in any one respecteven though it may be narrower in other respects.

Examiner Note:

The claim limitations that broaden the scope should be identified 
and explained in bracket 2. See MPEP §§ 706.03(x) and 
1412.03.



V. BROADENING REISSUE - OATH/
DECLARATION REQUIREMENTS

A broadening reissue application must be applied 
for by all of the inventors (patentees), that is, the original 
reissue oath or declaration must be signed by all 
of the inventors. See also MPEP § 1414. If a supplemental 
oath or declaration in a broadening reissue 
application is needed in the application in order to fulfill 
the requirements of 37 CFR 1.175, the supplemental 
reissue oath or declaration must be signed by all of 
the inventors. See In re Hayes, 53 USPQ2d 1222 
(Comm’r Pat. 1999) and MPEP § 1414.01. 

1412.04Correction of Inventorship [R-5]

The correction of misjoinder of inventors has been 
held to be a ground for reissue. See Ex parte Scudder, 
169 USPQ 814, 815 (Bd. App. 1971) wherein the 
Board held that 35 U.S.C. 251 authorizes reissue 
applications to correct misjoinder of inventors where35 U.S.C. 256 is inadequate. See also A.F. Stoddard & 
Co. v. Dann, 564 F.2d 556, 567 n.16, 195 USPQ 97, 
106 n.16 (D.C. Cir. 1977) wherein correction of 
inventorship from sole inventor A to sole inventor B 
was permitted in a reissue application. The court 
noted that reissue by itself is a vehicle for correcting 
inventorship in a patent.

I.CERTIFICATE OF CORRECTION AS A 
VEHICLE FOR CORRECTING INVEN-
TORSHIP

While reissue is a vehicle for correcting inventorship 
in a patent, correction of inventorship should be 
effected under the provisions of 35 U.S.C. 256 and 
37 
CFR 1.324 by filing a request for a Certificate of 
Correction if:

(A)the only change being made in the patent is to 
correct the inventorship; and 

(B)all parties are in agreement and the inventorship 
issue is not contested.

 See MPEP § 1481 for the procedure to be followed 
to obtain a Certificate of Correction for correction of 
inventorship.

II.REISSUE AS A VEHICLE FOR CORRECTING 
INVENTORSHIP

 Where the provisions of 35 U.S.C. 256 and 
37 
CFR 1.324 do not apply, a reissue application is 
the appropriate vehicle to correct inventorship. The 
failure to name the correct inventive entity is an error 
in the patent which is correctable under 35 U.S.C. 
251. The reissue oath or declaration pursuant to 
37 
CFR 1.175 must state that the applicant believes 
the original patent to be wholly or partly inoperative 
or invalid through error of a person being incorrectly 
named in an issued patent as the inventor, or through 
error of an inventor incorrectly not named in an 
issued 
patent, and that such error arose without any 
deceptive intention on the part of the applicant. The 




 

reissue oath or declaration must, as stated in 37 CFR 
1.175, also comply with 37CFR 1.63.

 The correction of inventorship does not enlarge the 
scope of the patent claims. Where a reissue application 
does not seek to enlarge the scope of the claims of 
the original patent, the reissue oath may be made and 
sworn to, or the declaration made, by the assignee of 
the entire interest under 37 CFR 1.172. An assignee of 
part interest may not file a reissue application to correct 
inventorship where the other co-owner did not 
join in the reissue application and has not consented 
to the reissue proceeding. See Baker Hughes Inc. v. 
Kirk, 921 F. Supp. 801, 809, 38 USPQ2d 1885, 1892 
(D.D.C. 1995). See 35 U.S.C. 251, third paragraph. 
Thus, the signatures of the inventors are not needed 
on the reissue oath or declaration where the assignee 
of the entire interest signs the reissue oath/declaration. 
Accordingly, an assignee of the entire interest can add 
or delete the name of an inventor by reissue (e.g., correct 
inventorship from inventor A to inventors A and 
B) without the original inventor’s consent. See also 37 
CFR 3.71(a) (“One or more assignees as defined in 
paragraph (b) of this section may, after becoming of 
record pursuant to paragraph (c) of this section, conduct 
prosecution of a national patent application or 
reexamination proceeding to the exclusion of either 
the inventive entity, or the assignee(s) previously 
entitled to conduct prosecution.” Emphasis added). 
Thus, the assignee of the entire interest can file a reissue 
to change the inventorship to one which the 
assignee believes to be correct, even though an inventor 
might disagree. The protection of the assignee’s 
property rights in the application and patent are statutorily 
based in 35 U.S.C. 118.

Where the name of an inventor X is to be deleted in 
a reissue application to correct inventorship in a 
patent, and inventor X has not assigned his/her rights 
to the patent, inventor X has an ownership interest in 
the patent. Inventor X must consent to the reissue 
(37 
CFR 1.172(a)), even though inventor X’s name is 
being deleted as an inventor and need not sign the 
reissue oath or declaration. If inventor X has assigned 
his/her rights to the patent, then inventor X’s assignee 
must consent. In addition to providing the consent, 
even though inventor X does not sign the reissue oath 
or declaration as an inventor (since the correction of 
inventorship does not enlarge the scope of the patent 
claims), the assignee of the entire interest must sign 
the reissue oath or declaration as assignee (37 CFR 
1.172(a)). Thus, if inventor X has not assigned his/her 
patent rights, inventor X’s signature must be included 
in the reissue oath or declaration as the assignee. If 
inventor X has assigned his/her patent rights, inventor 
X’s assignee must sign the reissue oath or declaration 
as the assignee. For example, a patent to inventors X 
and Y has no assignee. A reissue application is filed 
by inventor Y to delete the name of inventor X as an 
inventor. 37 CFR 1.172(a) provides that a reissue oath 
or declaration may be made by the assignee/owners of 
the entire interest, rather than by the inventors, where 
the scope of the claims is not to be enlarged. However, 
since inventor X has not assigned his/her patent 
rights, inventor X must sign the reissue oath or declaration 
as one of the owners, and consent to the filing 
of the reissue application by inventor Y. See MPEP 
§
 
1410.01.

 Where a reissue to correct inventorship also 
changes the claims to enlarge the scope of the patent 
claims, the signature of all the inventors is needed. 
However, if an inventor refuses to sign the reissue 
oath or declaration because he or she believes the 
change in inventorship (to be effected) is not correct, 
the reissue application can still be filed with a petition 
under 37 CFR 1.47 without that inventor’s signature 
provided the written consent of all owners/assignees 
as required by 37 CFR 1.172(a) is also submitted. In 
the situation where a patent to inventors X and Y has 
no assignee and a reissue application is filed by inventor 
Y to delete the name of inventor X as an inventor 
and to broaden the patent. Inventor X refuses to sign 
the reissue oath or declaration and refuses to provide 
the consent as required by 37 CFR 1.172(a). In this 
instance, a 37 CFR 1.47 petition would not be appropriate 
to permit the filing of the reissue application 
since the consent requirement of 37 CFR 1.172(a) for 
each owner/assignee is not met. Resort to the courts 
would be required to delete the name of inventor X as 
an inventor where X will not consent to the filing of a 
reissue application. As stated in the second paragraph 
of 35 U.S.C. 256, “[t]he court before which such matter 
is called in question may order correction of the 
patent on notice and hearing of all parties concerned 
and the Director shall issue a certificate accordingly.”

 The reissue application with its reissue oath or declaration 
under 37 CFR 1.175 provides a complete 
mechanism to correct inventorship. See A.F. Stoddard 




 

& Co. v. Dann, 564 F.2d at 567, 195 USPQ at 106. A 
request under 37 
CFR 1.48 or a petition under 37 CFR 
1.324 cannot be used to correct the inventorship of a 
reissue application. If a request under 37 CFR 1.48 or 
a petition under 37 CFR 1.324 is filed in a reissue 
application, the request or petition should be dismissed 
and the processing or petition fee refunded. 
The material submitted with the request or petition 
should then be considered to determine if it complies 
with 37 CFR 1.175. If the material submitted with the 
request or petition does comply with the requirements 
of 37 CFR 1.175 (and the reissue application is otherwise 
in order), the correction of inventorship will be 
permitted as a correction of an error in the patent 
under 35 U.S.C. 251.

Where a reissue application seeks to correct inventorship 
in the patent and the inventors are required to 
sign the reissue oath or declaration (rather than an 
assignee of the entire interest under 37 CFR 1.172) 
due to a broadening of any claims of the original 
patent, the correct inventive entity must sign the reissue 
oath or declaration. Where an inventor is being 
added in a reissue application to correct inventorship 
in a patent, the inventor being added must sign the 
reissue oath or declaration together with the inventors 
previously designated on the patent. For example, a 
reissue application is filed to correct the inventorship 
from inventors A and B (listed as inventors on the 
patent) to inventors A, B, and C. Inventor C is the 
inventor being added. In such a case, A, B, and C are 
the correct inventors, and accordingly, each of A, B, 
and C must sign the reissue oath or declaration. 
Where an inventor is being deleted in a reissue application 
to correct inventorship in a patent and the 
inventors are required to sign the oath or declaration 
due to a broadening of any claims of the original 
patent, the inventor being deleted need not sign the 
reissue oath or declaration. The reissue oath or declaration 
must be signed by the correct inventive entity. 
For example, a reissue application is filed to correct 
inventorship from inventors A, B, and C (listed as 
inventors on the patent) to inventors A and B. Inventor 
C is being deleted as a named inventor. In such a 
case, A and B are the correct inventors, and accordingly, 
inventors A and B must sign the reissue oath or 
declaration but inventor C need not sign the reissue 
oath or declaration.

==1413 Drawings==

37 CFR 1.173. Reissue specification, drawings, and 
amendments.



(a)(2) Drawings. Applicant must submit a clean copy of each 
drawing sheet of the printed patent at the time the reissue application 
is filed. If such copy complies with § 1.84, no further drawings 
will be required. Where a drawing of the reissue application 
is to include any changes relative to the patent being reissued, the 
changes to the drawing must be made in accordance with paragraph 
(b)(3) of this section. The Office will not transfer the drawings 
from the patent file to the reissue application.



A clean copy (e.g., good quality photocopies free of 
any extraneous markings) of each drawing sheet of 
the printed patent must be supplied by the applicant at 
the time of filing of the reissue application. If the copies 
meet the requirements of 37 CFR 1.84, no further 
formal drawings will be required. New drawing sheets 
are not to be submitted, unless some change is made 
in the original patent drawings. Such changes must be 
made in accordance with 37 CFR 1.173(b)(3).

The prior reissue practice of transferring drawings 
from the patent file has been eliminated, since clean 
photocopies of the printed patent drawings are acceptable 
for use in the printing of the reissue patent.

AMENDMENT OF DRAWINGS

37 CFR 1.173. Reissue specification, drawings, and 
amendments.





(b)(3) Drawings. One or more patent drawings shall be 
amended in the following manner: Any changes to a patent drawing 
must be submitted as a replacement sheet of drawings which 
shall be an attachment to the amendment document. Any replacement 
sheet of drawings must be in compliance with § 1.84 and 
shall include all of the figures appearing on the original version of 
the sheet, even if only one figure is amended. Amended figures 
must be identified as “Amended,” and any added figure must be 
identified as “New.” In the event that a figure is canceled, the figure 
must be surrounded by brackets and identified as “Canceled.” 
All changes to the drawing(s) shall be explained, in detail, beginning 
on a separate sheet accompanying the papers including the 
amendment to the drawings.



The provisions of 37 CFR 
1.173(b)(3) govern the 
manner of making amendments (changes) to the 




 

drawings in a reissue application. The following guidance 
is provided as to the procedure for amending 
drawings: 

(A)Amending the original or printed patent drawing 
sheets by physically changing or altering them is 
not permitted. Any request to do so should be denied. 

(B)Where a change to the drawings is desired, 
applicant must submit a replacement sheet for each 
sheet of drawings containing a Figure to be revised. 
Any replacement sheet must comply with 37 CFR 
1.84 and include all of the figures appearing on the 
original version of the sheet, even if only one figure is 
being amended. Each figure that is amended must be 
identified by placing the word “Amended” at the bottom 
of that figure. Any added figure must be identified 
as “New.” In the event that a figure is canceled, 
the figure must be identified as “Canceled” and also 
surrounded by brackets. All changes to the figure(s) 
must be explained, in detail, beginning on a separate 
sheet which accompanies the papers including the 
amendment to the drawings.

(C)If desired, applicant may include a marked-up 
copy of any amended drawing figure, including annotations 
indicating the changes made. Such a marked-
up copy must be clearly labeled as “Annotated 
Marked-up Drawings”, and it must be presented in the 
amendment or remarks section that explains the 
change to the drawings. 

In addition, the examiner may desire a marked-up 
copy of any amended drawing figure, and so state in 
an Office action. A marked-up copy of any amended 
drawing figure, including annotations indicating the 
changes made, must be provided when required by the 
examiner.

(D)For each proper new drawing sheet being 
added, the new sheet should be inserted after the 
existing drawing sheets. For each proper  drawing 
sheet being added which replaces an existing drawing 
sheet, the existing sheet should be canceled by 
placing the sheet face down in the file and placing a 
large “X” on the back of the sheet. The new sheet 
should be inserted in place of the turned over existing 
sheet. 

(E)If any drawing change  is not  approved,
or if any submitted sheet of formal drawings is not 
entered, the examiner will so inform the reissue applicant 
in the next Office action, and the examiner will 
set forth the reasons for same.

==1414 Content of Reissue Oath/Declaration==

37 CFR 1.175. Reissue oath or declaration.

(a)The reissue oath or declaration in addition to complying 
with the requirements of § 1.63, must also state that:

(1)The applicant believes the original patent to be wholly 
or partly inoperative or invalid by reason of a defective specification 
or drawing, or by reason of the patentee claiming more or less 
than the patentee had the right to claim in the patent, stating at 
least one error being relied upon as the basis for reissue; and

(2)All errors being corrected in the reissue application up 
to the time of filing of the oath or declaration under this paragraph 
arose without any deceptive intention on the part of the applicant.

(b)(1) For any error corrected, which is not covered by the 
oath or declaration submitted under paragraph (a) of this section, 
applicant must submit a supplemental oath or declaration stating 
that every such error arose without any deceptive intention on the 
part of the applicant. Any supplemental oath or declaration 
required by this paragraph must be submitted before allowance 
and may be submitted:

(i) With any amendment prior to allowance; or

(ii) In order to overcome a rejection under 35 
U.S.C. 251 
made by the examiner where it is indicated that the submission of 
a supplemental oath or declaration as required by this paragraph 
will overcome the rejection.

(2)For any error sought to be corrected after allowance, a 
supplemental oath or declaration must accompany the requested 
correction stating that the error(s) to be corrected arose without 
any deceptive intention on the part of the applicant. 

(c)Having once stated an error upon which the reissue is 
based, as set forth in paragraph (a)(1), unless all errors previously 
stated in the oath or declaration are no longer being corrected, a 
subsequent oath or declaration under paragraph (b) of this section 
need not specifically identify any other error or errors being corrected.


(d)The oath or declaration required by paragraph (a) of this 
section may be submitted under the provisions of § 1.53(f).

(e)The filing of any continuing reissue application which 
does not replace its parent reissue application must include an 
oath or declaration which, pursuant to paragraph (a)(1) of this section, 
identifies at least one error in the original patent which has 
not been corrected by the parent reissue application or an earlier 
reissue application. All other requirements relating to oaths or 
declarations must also be met.

The reissue oath/declaration is an essential part of a 
reissue application and must be filed with the application, 
or within the time period set under 37 CFR 
1.53(f) along with the required surcharge as set forth 
in 37 CFR 1.16(f) in order to avoid abandonment. 

The question of the sufficiency of the reissue oath/
declaration filed under 37 CFR 1.175 must in each 
case be reviewed and decided personally by the primary 
examiner.




 

Reissue oaths or declarations must contain the following:


(A)A statement that the applicant believes the 
original patent to be wholly or partly inoperative or 
invalid—

(1)by reason of a defective specification or 
drawing, or

(2)by reason of the patentee claiming more or 
less than patentee had the right to claim in the patent; 

(B)A statement of at least one error which is 
relied upon to support the reissue application, i.e., as 
the basis for the reissue;

(C)A statement that all errors which are being 
corrected in the reissue application up to the time of 
filing of the oath/declaration arose without any deceptive 
intention on the part of the applicant; and 

(D)The information required by 37 CFR 1.63.

These elements will now be discussed:

I.A STATEMENT THAT THE APPLICANT 
BELIEVES THE ORIGINAL PATENT TO 
BE WHOLLY OR PARTLY INOPERATIVE 
OR INVALID BY REASON OF A DEFECTIVE 
SPECIFICATION OR DRAWING, 
OR BY REASON OF THE PATENTEE 
CLAIMING MORE OR LESS THAN PATENTEE 
HAD THE RIGHT TO CLAIM IN 
THE PATENT.

In order to satisfy this requirement, a declaration 
can state as for example:



1. “Applicant believes the original patent to be 
partly inoperative or invalid by reason of a defective 
specification or drawing.”



2. “Applicant believes the original patent to be 
partly inoperative or invalid by reason of the patentee 
claiming more than patentee had a right to claim in 
the patent.”



3. “Applicant believes the original patent to be 
partly inoperative or invalid by reason of the patentee 
claiming less than patentee had a right to claim in the 
patent.”

Where the specification or drawing is defective andpatentee claimed both more and less than patentee had 
the right to claim in the patent, then all three statements 
should be included in the reissue oath/declaration. 
A statement that the original patent is “wholly 
or partly inoperative or invalid” (emphasis added) by 
reason of the patentee “claiming more or less than the 
patentee had the right to claim in the patent” (emphasis 
added) is improper since a claim cannot claim 
“more or less” at the same time. Where, however, a 
given independent claim is considered to be overly 
broad, and another independent claim is considered to 
be overly narrow, patentee has claimed both more andless than he or she had a right to claim. In such an 
instance, both the second and third above-quoted 
statements would be used. See MPEP § 1412.04 for 
an exemplary declaration statement when the error 
being corrected is an error in inventorship.

The above examples will be sufficient to satisfy this 
requirement without any further statement.

It should be noted that the reissue oath/declaration 
must also satisfy the requirement for a statement of at 
least one error being relied upon as the basis for reissue, 
in the manner set forth in subsection II. below.

Form paragraph 14.01 may be used where the reissue 
oath/declaration does not provide the required 
statement as to applicant’s belief that the original 
patent is wholly or partly inoperative or invalid. 

¶ 14.01 Defective Reissue Oath/Declaration, 37 CFR 
1.175(a)(1) - No Statement of Defect in the Patent

The reissue oath/declaration filed with this application is 
defective because it fails to contain the statement required under 
37 CFR 1.175(a)(1) as to applicant’s belief that the original patent 
is wholly or partly inoperative or invalid. See 37 CFR 1.175(a)(1) 
and see MPEP §
 
1414. [1]

Examiner Note:

1.Use this form paragraph when applicant: (a) fails to allege 
that the original patent is inoperative or invalid and/or (b) fails to 
state the reason of a defective specification or drawing, or of patentee 
claiming more or less than patentee had the right to claim in 
the patent . In bracket 1, point out the specific defect to applicant 
by using the language of (a) and/or (b), as it is appropriate.

2.Form paragraph 14.14 must follow this form paragraph.

II.A STATEMENT OF AT LEAST ONE ERROR 
WHICH IS RELIED UPON TO SUPPORT 
THE REISSUE APPLICATION (I.E., 
THE BASIS FOR THE REISSUE).

(A)A reissue applicant must acknowledge the 
existence of an error in the specification, drawings, or 
claims, which error causes the original patent to be 




 

defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369 
(Fed. Cir. 1984). A change or departure from the original 
specification or claims represents an “error” in 
the original patent under 35 U.S.C. 251. See MPEP 
§
 
1402 for a discussion of grounds for filing a reissue 
that may constitute the “error” required by 35 U.S.C. 
251. Not all changes with respect to the patent constitute 
the “error” required by 35 U.S.C. 251.

(B)Applicant need only specify in the reissue 
oath/declaration one of the errors upon which reissue 
is based. Where applicant specifies one such error, 
this requirement of a reissue oath/declaration is satisfied. 
Applicant may specify more than one error.

Where more than one error is specified in the 
oath/declaration and some of the designated “errors” 
are found to not be “errors” under 35 U.S.C. 251, any 
remaining error which is an error under 35 U.S.C. 251will still support the reissue.

The “at least one error” which is relied upon to 
support the reissue application must be set forth in the 
oath/declaration. It is not necessary, however, to point 
out how (or when) the error arose or occurred. Further, 
it is not necessary to point out how (or when) the 
error was discovered. If an applicant chooses to point 
out these matters, the statements directed to these 
matters will not be reviewed by the examiner, and the 
applicant should be so informed in the next Office 
action. All that is needed for the oath/declaration 
statement as to error is the identification of “at least 
one error” relied upon.

In identifying the error, it is sufficient that the 
reissue oath/declaration identify a single word, 
phrase, or expression in the specification or in an original 
claim, and how it renders the original patent 
wholly or partly inoperative or invalid. The corresponding 
corrective action which has been taken to 
correct the original patent need not be identified in the 
oath/declaration. If the initial reissue oath/declaration 
“states at least one error” in the original patent, and, in 
addition, recites the specific corrective action taken in 
the reissue application, the oath/declaration would be 
considered acceptable, even though the corrective 
action statement is not required.

(C)It is not sufficient for an oath/declaration to 
merely state “this application is being filed to correct 
errors in the patent which may be noted from the 
changes made in the disclosure.” Rather, the oath/declaration 
must specifically identify an error. In addition, 
it is not sufficient to merely reproduce the claims 
with brackets and underlining and state that such will 
identify the error. See In re Constant, 827 F.2d 728, 
729, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484 
U.S. 894 (1987). Any error in the claims must be 
identified by reference to the specific claim(s) and the 
specific claim language wherein lies the error.

A statement of “…failure to include a claim 
directed to…” and then presenting a newly added 
claim, would not be considered a sufficient “error”
statement since applicant has not pointed out what the 
other claims lacked that the newly added claim has, or 
vice versa. Such a statement would be no better than 
saying in the reissue oath or declaration that “this 
application is being filed to correct errors in the patent 
which may be noted from the change made by adding 
new claim 10.” In both cases, the error has not been 
identified.

(D)Where a continuation reissue application is 
filed with a copy of the reissue oath/declaration from 
the parent reissue application, and the parent reissue 
application is not to be abandoned, the reissue oath/
declaration should be accepted by the Office of Initial 
Patent Examination without further evaluation, since 
it is an oath/declaration, albeit improper under 
35 
U.S.C. 251. The examiner should, however, reject 
the claims of the continuation reissue application 
under 35 U.S.C. 251 as being based on an oath/declaration 
that does not identify an error being corrected 
by the continuation reissue application, and should 
require a new oath/declaration. 37 CFR 1.175(e) 
states that “the filing of any continuing reissue application 
which does not replace its parent reissue application 
must include an oath or declaration, which 
pursuant to [37 CFR 1.175(a)(1)], identifies at least 
one error in the original patent which has not been 
corrected by the parent reissue application or an earlier 
reissue application.” One of form paragraphs 
14.01.01 through 14.01.03 may be used.

Where a continuation reissue application is filed 
with a copy of the reissue oath/declaration from the 
parent reissue application, and the parent reissue 
application is, or will be abandoned, the copy of the 
reissue oath/declaration should be accepted by OIPE, 
and the examiner should check to ensure that the oath/
declaration identifies an error which is still being corrected 
in the continuation application. If a preliminary 
amendment was filed with the continuation reissue 




 

application, the examiner should check for the need of 
a supplemental reissue oath/declaration. Pursuant to 
37 CFR 1.175 (b)(1), for any error corrected via the 
preliminary amendment which is not covered by the 
oath or declaration submitted in the parent reissue 
application, applicant must submit a supplemental 
oath/declaration stating that such error arose without 
any deceptive intention on the part of the applicant. 
See MPEP § 1414.01.

Where a divisional reissue application is filed 
with a copy of the reissue oath/declaration from 
the 
parent reissue application, the reissue oath/declaration 
should be accepted by OIPE, since it is an oath/
declaration, though it may be improper under 
35 
U.S.C. 251. The examiner should check the copy 
of the oath/declaration to ensure that it identifies an 
error being corrected by the divisional reissue application. 
The copy of the oath/declaration from the parent 
reissue application may or may not cover an error 
being corrected by the divisional reissue application 
since the divisional reissue application is (by definition) 
directed to a new invention. If it does not, the 
examiner should reject the claims of the divisional 
reissue application under 35 U.S.C. 251 as being 
based on an oath/declaration that does not identify an 
error being corrected by the divisional reissue application, 
and require a new oath/declaration. If the copy of 
the reissue oath/declaration from the parent reissue 
application does in fact cover an error being corrected 
in the divisional reissue application, no such rejection 
should be made. However, since a new invention is 
being added by the filing of the divisional reissue 
application, a supplemental reissue oath/declaration 
pursuant to 37 CFR 1.175 (b)(1) will be required. See 
MPEP § 1414.01.

Form paragraph 14.01.01 may be used where the 
reissue oath/declaration does not identify an error.

¶ 14.01.01 Defective Reissue Oath/Declaration, 37 CFR 
1.175(a)(1) - No Statement of a Specific Error

The reissue oath/declaration filed with this application is 
defective because it fails to identify at least one error which is 
relied upon to support the reissue application. See 37 CFR 
1.175(a)(1) and MPEP § 1414.

Examiner Note:

1.Use this form paragraph when the reissue oath or declaration 
does not contain any statement of an error which is relied upon to 
support the reissue application. 

2.This form paragraph can be used where the reissue oath or 
declaration does not even mention error. It can also can be used 
where the reissue oath or declaration contains some discussion of 
the concept of error but never in fact identifies a specific error to 
be relied upon. For example, it is not sufficient for an oath or declaration 
to merely state “this application is being filed to correct 
errors in the patent which may be noted from the changes made in 
the disclosure.” 

3.Form paragraph 14.14 must follow this form paragraph.

Where the reissue oath/declaration does identify an 
error or errors, the oath/declaration must be checked 
carefully to ensure that at least one of the errors identified 
is indeed an “error” which will support the filing 
of a reissue, i.e., an “error” that will provide 
grounds for reissue of the patent. See MPEP § 1402. 
If the error identified in the oath/declaration is not an 
appropriate error upon which a reissue can be based, 
then the oath/declaration must be indicated to be 
defective in the examiner’s Office action. 

Form paragraphs 14.01.02 and 14.01.03 may be 
used where the reissue oath/declaration fails to provide 
at least one error upon which a reissue can be 
based. 

¶ 14.01.02 Defective Reissue Oath/Declaration, 37 CFR 
1.175(a)(1)-The Identified “Error” Is Not Appropriate 
Error

The reissue oath/declaration filed with this application is 
defective because the error which is relied upon to support the 
reissue application is not an error upon which a reissue can be 
based. See 37 CFR 1.175(a)(1) and MPEP § 1414.

Examiner Note:

1.Use this form paragraph when the reissue oath/declaration 
identifies only one error which is relied upon to support the reissue 
application, and that one error is not an appropriate error upon 
which a reissue can be based. 

2.Form paragraph 14.14 must follow this form paragraph. 

¶ 14.01.03 Defective Reissue Oath/Declaration, 37 CFR 
1.175(a)(1) - Multiple Identified “Errors” Not Appropriate 
Errors

The reissue oath/declaration filed with this application is 
defective because none of the errors which are relied upon to support 
the reissue application are errors upon which a reissue can be 
based. See 37 CFR 1.175(a)(1) and MPEP § 1414.

Examiner Note:

1.Use this form paragraph when the reissue oath/declaration 
identifies more than one error relied upon to support the reissue 
application, and none of the errors are appropriate errors upon 
which a reissue can be based.

2.Note that if the reissue oath/declaration identifies more than 
one error relied upon, and at least one of the errors is an error 
upon which reissue can be based, this form paragraph should not 
be used, despite the additional reliance by applicant on “errors” 




 

which do not support the reissue. Only one appropriate error is 
needed to support a reissue.

3.Form paragraph 14.14 must follow this form paragraph. 

III.A STATEMENT THAT ALL ERRORS 
WHICH ARE BEING CORRECTED IN 
THE REISSUE APPLICATION UP TO 
THE TIME OF SIGNING OF THE OATH/
DECLARATION AROSE WITHOUT ANY 
DECEPTIVE INTENTION ON THE PART 
OF THE APPLICANT.

In order to satisfy this requirement, the following 
statement may be included in an oath or declaration: 

“All errors in the present reissue application up to the time 
of signing of this oath/declaration, or errors which are 
being corrected by a paper filed concurrently with this 
oath/declaration which correction of errors I/we have 
reviewed, arose without any deceptive intention on the 
part of the applicant.” 

Nothing more is required. The examiner will determine 
only whether the reissue oath/declaration contains 
the required averment; the examiner will not 
make any comment as to whether it appears that there 
was in fact deceptive intention (see MPEP § 2022.05). 
It is noted that a reissue oath/declaration will not be 
effective for any errors which are corrected by a filing 
made after the execution of the reissue oath/declaration, 
unless it is clear from the record that the parties 
executing the document were aware of the nature of 
the correction when they executed the document. Further, 
a reissue oath/declaration with an early date of 
execution cannot be filed after a correction made later 
in time, to cover the correction made after the execution 
date. This is so, even if the reissue oath/declaration 
states that all errors up to the filing of the oath/
declaration arose without any deceptive intention on 
the part of the applicant. 

Form paragraph 14.01.04 may be used where the 
reissue oath/declaration does not provide the required 
statement as to “without any deceptive intention on 
the part of the applicant.”

¶ 14.01.04 Defective Reissue Oath/Declaration, 37 CFR 
1.175- Lack of Statement of “Without Any Deceptive 
Intention”

The reissue oath/declaration filed with this application is 
defective because it fails to contain a statement that all errors 
which are being corrected in the reissue application up to the time 
of filing of the oath/declaration arose without any deceptive intention 
on the part of the applicant. See 37 CFR 1.175 and MPEP § 
1414.

Examiner Note:

1.Use this form paragraph when the reissue oath/declaration 
does not contain the statement required by 37 CFR 1.175 that all 
errors being corrected in the reissue application arose without any 
deceptive intention on the part of the applicant.

2.This form paragraph is appropriate to use for a failure by 
applicant to comply with the requirement, as to any of 37 CFR 
1.175(a)(2), 37 CFR 1.175(b)(1), or 37 CFR 1.175(b)(2). 

3.Form paragraph 14.14 must follow. 

IV.THE REISSUE OATH/DECLARATION 
MUST COMPLY WITH 37 CFR 1.63.

The reissue oath/declaration must include the averments 
required by 37 CFR 1.63(a) and (b), e.g., that 
applicants for reissue 

(A)have reviewed and understand the contents of 
the specification, including the claims, as amended by 
any amendment specifically referred to in the oath/
declaration; 

(B)believe the named inventor or inventors to be 
the original and the first inventor or inventors of the 
subject matter which is claimed and for which a 
patent is sought; and 

(C)acknowledge the duty to disclose to the 
Office all information known to the person to be 
material to patentability as defined in 37 CFR 1.56. 
See also the discussion regarding the requirements of 
an oath/declaration beginning at MPEP § 602.

The examiner should check carefully to ensure that 
all the requirements of 37 CFR 1.63 are met. Form 
paragraph 14.01.05 should be used in conjunction 
with the content of form paragraphs 6.05 through 
6.05.20 as appropriate, where the reissue oath/declaration 
fails to comply with the requirements of 37 
CFR 1.63.

¶ 14.01.05 Defective Reissue Oath/Declaration, 37 CFR 
1.175 - General

The reissue oath/declaration filed with this application is 
defective (see 37 CFR 1.175 and MPEP § 1414) because of the 
following:

Examiner Note:

1.Use this form paragraph when the reissue oath/declaration 
does not comply with 37 CFR 1.175, and none of form paragraphs 
14.01 - 14.01.04 or 14.05.02 apply.

2.This form paragraph must be followed by an explanation of 
why the reissue oath/declaration is defective. 




 

3.Form paragraph 14.14 must follow the explanation of the 
defect.

See MPEP § 1414.01 for a discussion of the 
requirements for a supplemental reissue oath/declaration. 


 Depending on the circumstances, either form PTO/
SB/51, Reissue Application Declaration By The 
Inventor, or form PTO/SB/52, Reissue Application 
Declaration By The Assignee may be used to prepare 
a declaration in a reissue application.




 



Reissue Application Declaration by the Inventor





 

Reissue Application Declaration by the Inventor (page 2)





 

Privacy Act Statment





 

Reissue Application Declaration by the Assognee





 

Reissue Application Declaration by the Assognee (page 2)





 

Privacy Act Statment







 

1414.01Supplemental Reissue Oath/
Declaration [R-5]

If additional defects or errors are corrected in the 
reissue after the filing of the application and the original 
reissue oath or declaration, a supplemental reissue 
oath/declaration must be filed, unless all additional 
errors corrected are spelling, grammar, typographical, 
editorial or clerical errors which are not errors under 
35 U.S.C. 251 (see MPEP § 1402). In other words, a 
supplemental oath/declaration is required where any 
“error” under 35 U.S.C. 251 has been corrected and 
the error was not identified in the original reissue 
oath/declaration.

 The supplemental reissue oath/declaration must 
state that every error which was corrected in the reissue 
application not covered by the prior oath(s)/declaration(
s) submitted in the application arose without 
any deceptive intention on the part of the applicant. 

An example of acceptable language is as follows:

“Every error in the patent which was corrected in the 
present reissue application, and is not covered by the prior 
declaration submitted in this application, arose without 
any deceptive intention on the part of the applicant.”

A supplemental reissue oath/declaration will not be 
effective for any errors which are corrected by a filing 
made after the execution of the supplemental reissue 
oath/declaration, unless it is clear from the record that 
the parties executing the document were aware of the 
nature of the correction when they executed the document. 
Further, a supplemental reissue oath/declaration 
with an early date of execution cannot be filed after a 
correction made later in time, to cover the correction 
made after the execution date. This is so, even if the 
supplemental reissue oath/declaration states that all 
errors up to the filing of the supplemental reissue 
oath/declaration oath or declaration arose without 
any deceptive intention on the part of the applicant.



Form PTO/SB/51S, “Supplemental Declaration For 
Reissue Patent Application To Correct ‘Errors’ Statement 
(37 CFR 1.175),” may be used to prepare a supplemental 
reissue declaration. Form PTO/SB/51S 
serves to indicate that every error in the patent that 
was corrected in the reissue application, but was not 
covered by a prior reissue oath/declaration submitted 
in the reissue application, arose without any deceptive 
intention on the part of the applicant.

In the event that the applicant for a reissue applicant 
is required to file a supplemental reissue oath/
declaration that also includes a specific statement of 
the error being corrected by reissue in accordance 
with 37 CFR 1.175(c), as discussed in subsection I. 
below, applicant must also include in the supplemental 
declaration language equivalent to the “Every error 
…” language in the example of acceptable language 
set forth above. Therefore, if either form PTO/SB/51, 
“Reissue Application Declaration By The Inventor,” 
or form PTO/SB/52, “Declaration By The Assignee” 
(see MPEP § 1414) is used for the purpose of filing 
such supplemental reissue oath/declaration, the form 
must be completed so that it is clear that the supplemental 
reissue oath/declaration addresses all errors 
corrected subsequent to the date upon which the last 
previously reissue oath/declaration (whether original 
or supplemental) was filed. For example, the form 
could be completed by specifying the date upon 
which the reissue application was originally filed, the 
reissue application number, and the date(s) of every 
amendment filed subsequent to the date upon which 
the last reissue oath/declaration (whether original or 
supplemental) was filed. Any manner of completing 
the form so that affiant/declarant unambiguously 
states that every error corrected subsequent to the filing 
of the last filed reissue oath/declaration (whether 
original or supplemental) arose without deceptive 
intent will be acceptable. It will not be acceptable for 
the new (“catch-up”) oath/declaration to simply refer 
to the reissue application as filed, even though the 
new oath/declaration may be submitted after an 
amendment.

I.WHEN AN ERROR MUST BE STATED IN 
THE SUPPLEMENTAL OATH/
DECLARATION

In the supplemental reissue oath/declaration, there 
is no need to state an error which is relied upon to 
support the reissue application if: 

(A)an error to support a reissue has been previously 
and properly stated in a reissue oath/declaration 
in the application; and

(B)that error is still being corrected in the reissue 
application. 




 

If applicant chooses to state any further error at this 
point (even though such is not needed), the examiner 
should not review the statement of the further error. 

The supplemental reissue oath/declaration muststate an error which is relied upon to support the reissue 
application only where one of the following is 
true: 

(A)the prior reissue oath/declaration failed to 
state an error; 

(B)the prior reissue oath/declaration attempted to 
state an error but did not do so properly; or

(C)all errors under 35 U.S.C. 251 stated in the 
prior reissue oath(s)/declaration(s) are no longer being 
corrected in the reissue application.

II.WHEN A SUPPLEMENTAL OATH/DE-
CLARATION MUST BE SUBMITTED

The supplemental oath/declaration in accordance 
with 37 CFR 1.175(b)(1) must be submitted before 
allowance. See MPEP § 1444 for a discussion of the 
action to be taken by the examiner to obtain the supplemental 
oath/declaration in accordance with 37 
CFR 1.175(b)(1), where such is needed.

Where applicant seeks to correct an error after 
allowance of the reissue application, a supplemental 
reissue oath/declaration must accompany the 
requested correction stating that the error(s) to be corrected 
arose without any deceptive intention on the 
part of the applicant. The supplemental reissue oath/
declaration submitted after allowance will be directed 
to the error applicant seeks to correct after allowance. 
This supplemental oath/declaration need not cover 
any earlier errors, since all earlier errors should have 
been covered by a reissue oath/declaration submitted 
prior to allowance.

III.SUPPLEMENTAL OATH/DECLARA-
TION IN BROADENING REISSUE

A broadening reissue application must be applied 
for by all of the inventors (patentees), that is, the original 
reissue oath/declaration must be signed by all of 
the inventors. See MPEP § 1414. If a supplemental 
oath/declaration in a broadening reissue application is 
subsequently needed in the application in order to fulfill 
the requirements of 37 CFR 1.175, the supplemental 
reissue oath/declaration must be signed by all of 
the inventors. In re Hayes, 53 USPQ2d 1222, 1224 
(Comm’r Pat. 1999) (“37 CFR 1.175(b)(1), taken in 
conjunction with Section 1.172, requires a supplemental 
declaration be signed by all of the inventors. 
This is because all oaths or declarations necessary to 
fulfill the rule requirements in a reissue application 
are taken together collectively as a single oath or declaration. 
Thus, each oath and declaration must bear 
the appropriate signatures of all the inventors.”).

 If a joint inventor refuses or cannot be found or 
reached to sign a supplemental oath/declaration, a 
supplemental oath/declaration listing all the inventors, 
and signed by all the available inventors may be filed 
provided it is accompanied by a petition under 37 
CFR 1.183 along with the petition fee, requesting 
waiver of the signature requirement of the nonsigning 
inventor.

  




 



SUPPLEMENTAL DECLARATION FOR REISSUE PATENT APPLICATION TO CORRECT “ERRORS” STATEMENT (37 CFR 1.175)
PTO/SB/51S (09-04) 
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 contains a valid OMB control number. 
Attorney Docket Number 
First Named Inventor 
COMPLETE if known 
Application Number 
Filing Date 
Art Unit 
SUPPLEMENTAL DECLARATION 
FOR REISSUE 
PATENT APPLICATION 
TO CORRECT “ERRORS” STATEMENT 
(37 CFR 1.175)
Examiner Name 
I/We hereby declare that: 
Every error in the patent which was corrected in the present reissue application, and which is not covered by the 
prior oath(s) and/or declaration(s) submitted in this application, arose without any deceptive intention on the part of 
the applicant. 
I/We hereby declare that all statements made herein of my/our own knowledge are true and that all statements made 
on information and belief are believed to be true; and further that these statements were made with the knowledge 
that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 
1001 and that such willful false statements may jeopardize the validity of the application or any patent issued 
thereon. 
Name of Sole or First Inventor: A petition has been filed for this unsigned inventor 
Given Name (first and middle [if any]) Family Name or Surname 
Inventor’s 
SignatureDate 
Name of Second Inventor: A petition has been filed for this unsigned inventor 
Given Name (first and middle [if any]) Family Name or Surname 
Inventor’s 
SignatureDate 
Name of Third Inventor: A petition has been filed for this unsigned inventor 
Given Name (first and middle [if any]) Family Name or Surname 
Inventor’s 
SignatureDate 
Name of Fourth Inventor: A petition has been filed for this unsigned inventor 
Given Name (first and middle [if any]) Family Name or SurnameInventor’s 
SignatureDate 
Additional inventors or legal representatives(s) are being named on the __________ supplemental sheets PTO/SB/02A or 02LR attached hereto. 
This collection of information is required by 37 CFR 1.175. 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 1.8 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: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: 







 

==1415 Reissue Application and Issue Fees==

I.BASIC REISSUE APPLICATION FILING, 
SEARCH, AND EXAMINATION FEES

The Consolidated Appropriations Act, 2005 (Consolidated 
Appropriations Act), effective December 8, 
2004, provides for a separate reissue application filing 
fee, search fee, and examination fee during fiscal 
years 2005 and 2006. For reissue applications filed on 
or after December 8, 2004, the following fees are 
required: basic filing fee as set forth in 37 CFR 
1.16(e)(1); search fee as set forth in 37 CFR 1.16(n); 
examination fee as set forth in 37 CFR 1.16(r); application 
size fee, if applicable (see subsection II. 
below); and excess claims fees, if applicable (see subsection 
III. below). 

For reissue applications filed prior to December 8, 
2004, the following fees are required: basic filing fee 
as set forth in 37 CFR 1.16(e)(2); and excess claims 
fees, if applicable (see subsection III below). No 
search and examination fees are required for reissue 
applications filed before December 8, 2004.

The basic filing, search and examination fees are 
due on filing of the reissue application. These fees 
may be paid on a date later than the filing date of the 
reissue application provided they are paid within the 
time period set forth in 37 CFR 1.53(f) and include 
the surcharge set forth in 37 CFR 1.16(f). For reissue 
applications filed on or after December 8, 2004 but 
prior to July 1, 2005, which have been accorded a filing 
date under 37 CFR 1.53(b), if the search and/or 
examination fees are paid on a date later than the filing 
date of the reissue application, the surcharge 
under 37 CFR 1.16(f) is not required. For reissue 
applications filed on or after July 1, 2005, which have 
been accorded a filing date under 37 CFR 1.53(b), if 
any of the basic filing fee, the search fee, or the examination 
fee are paid on a date later than the filing date 
of the reissue application, the surcharge under 37 CFR 
1.16(f) is required. 

For reissue applications filed on or after December 
8, 2004, in which a petition under 37 CFR 
1.138(d) to expressly abandon the application was 
filed on or after March 10, 2006, applicant may file a 
request for refund of the search fee and excess claims 
fee paid in the application. See MPEP § 711.01.

II.APPLICATION SIZE FEE

The Consolidated Appropriations Act also provides 
for an application size fee. 37 CFR 1.16(s) sets forth 
the application size fee for reissue applications filed 
on or after December 8, 2004, the specification and 
drawings of which, excluding a sequence listing or 
computer program listing filed in an electronic 
medium in compliance with the rules (see 37 CFR 
1.52(f)), exceed 100 sheets of paper. The application 
size fee does not apply to reissue applications filed 
before December 8, 2004. The application size fee 
applies for each additional 50 sheets or fraction 
thereof over 100 sheets of paper. Any sequence listing 
in an electronic medium in compliance with 37 CFR 
1.52(e) and 37 CFR 1.821(c) or (e), and any computer 
program listing filed in an electronic medium in compliance 
with 37 CFR 1.52(e) and 1.96, will be 
excluded when determining the application size fee 
required by 37 CFR 1.16(s). See also MPEP § 607.

III.EXCESS CLAIMS FEES

37 CFR 1.16(h) sets forth the excess claims fee for 
each independent claim in excess of three. 37 CFR 
1.16(i) sets forth the excess claims fee for each claim 
(whether independent or dependent) in excess of 
twenty. The access claims fees specified in 37 CFR 
1.16(h) and (i) apply to all reissue applications pending 
on or after December 8, 2004. The excess claims 
fees specified in 37 CFR 1.16(h) and (i) apply to any 
excess claims fee paid on or after December 8, 2004, 
regardless of the filing date of the reissue application 
and regardless of the date on which the claim necessitating 
the excess claims fee payment was added to the 
reissue application. 

For reissue applications filed on or after December 
8, 2004, in which a petition under 37 CFR 
1.138(d) to expressly abandon the application was 
filed on or after March 10, 2006, applicant may file a 
request for refund of the search fee and excess claims 
fee paid in the application. See MPEP § 711.01.

Under 35 U.S.C. 41(a)(2) as amended by the Consolidated 
Appropriations Act, the claims in the original 
patent are not taken into account in determining 
the excess claims fee for a reissue application. 

Example 1:

Applicant filed a reissue application before 
December 8, 2004, with the same number of 




 

claims as in the patent. The patent has more than 3 
independent claims and more than 20 total claims. 
If applicant added one more independent claim in 
the reissue application by filing an amendment 
before December 8, 2004, but did not pay for the 
excess claims fees prior to December 8, 2004, on 
or after December 8, 2004, applicant will have to 
pay for one additional independent claim per the 
fee set forth in 37 CFR 1.16(h) and one additional 
total claim per the fee set forth in 37 CFR 1.16(i).

Example 2:

Applicant filed a reissue application on or after 
December 8, 2004, with the same number of 
claims as in the patent. The patent has 4 independent 
claims and 21 total claims. Excess claims fees 
for the 4th independent claim (one additional independent 
claim per the fee set forth in 37 CFR 
1.16(h)) and the 21st claim (one additional total 
claim per the fee set forth in 37 CFR 1.16(i)) are 
required. Under 35 U.S.C. 41(a)(2) as amended by 
the Consolidated Appropriations Act, the claims in 
the original patent are not taken into account in 
determining the excess claims fees for a reissue 
application.

The excess claims fees, if any, due with an amendment 
are required prior to any consideration of the 
amendment by the examiner. Upon submission of an 
amendment (whether entered or not) affecting the 
claims, payment of fees for those claims in excess of 
the number previously paid for is required. The additional 
fees, if any, due with an amendment are calculated 
on the basis of the claims (total and 
independent) which would be present, if the amendment 
were entered. If an amendment is limited to 
revising the existing claims and it does not result in 
the addition of any new claim, there is no excess 
claim fee. Excess claims fees apply only to the addition 
of claims. It is to be noted that where excess 
claims fees have been previously paid, a later amendment 
affecting the claims cannot serve as the basis for 
granting any refund. See 37 CFR 1.26(a). 

Amendments filed before a first Office action, or 
otherwise not filed in reply to an Office action, presenting 
additional claims in excess of the number 
already paid for, not accompanied by the full additional 
claims fee due, will not be entered in whole or 
in part and applicant will be so notified. Such amendments 
filed in reply to an Office action will be 
regarded as being non-responsive to the Office action 
and the practice set forth in MPEP § 714.03 will be 
followed. 

An amendment canceling claims accompanying the 
papers constituting the reissue application will be 
effective to diminish the number of claims to be considered 
in calculating the filing fees to be paid. A preliminary 
amendment filed concurrently with a reply to 
a Notice To File Missing Parts of Application that 
required the filing fees, which preliminary amendment 
cancels or adds claims, will be taken into 
account in determining the appropriate filing fees due 
in response to the Notice To File Missing Parts of 
Application. However, no refund will be made for 
claims being canceled in the reply that have already 
been paid for.

After a requirement for restriction, non-elected 
claims will be included in determining the fees due in 
connection with a subsequent amendment unless such 
claims are canceled.

IV.ISSUE FEE

The issue fee for issuing each reissue patent is set 
forth in 37 CFR 1.18(a).

V.REISSUE APPLICATION FEE TRANS-
MITTAL FORM

The Office has prepared Form PTO/SB/56, Reissue 
Application Fee Transmittal Form which is designed 
to assist in the correct calculation of reissue filing 
fees.




 

Reissue Application Fee Transmittal Form





 

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. 





 

1415.01Maintenance Fees on the Original 
Patent [R-5]

The filing of a reissue application does not alter the 
schedule of payments of maintenance fees on the 
original patent. If maintenance fees have not been 
paid on the original patent as required by 35 U.S.C. 
41(b) and 37 CFR 1.20, and the patent has expired, no 
reissue patent can be granted. 35 U.S.C. 251, first 
paragraph, only authorizes the granting of a reissue 
patent for the unexpired term of the original patent. 
Once a patent has expired, the Director of the USPTO 
no longer has the authority under 35 U.S.C. 251 to 
reissue the patent. See In re Morgan, 990 F.2d 1230, 
26 
USPQ2d 1392 (Fed. Cir. 1993). 

The examiner should determine whether all 
required maintenance fees have been paid prior to 
conducting an examination of a reissue application. In 
addition, during the process of preparing the reissue 
application for issue, the examiner should again determine 
whether all required maintenance fees have been 
paid up to date.

The history of maintenance fees is determined by 
the following, all of which should be used (to provide 
a check on the search made):

(A)Go to the USPTO Intranet (http://ptoweb/ptointranet/
index.htm) and select the PALM screen, then 
the “General Information” screen, type in the patent 
number and then select the “Fees” screen.

(B)Go to the USPTO Intranet and then the “Revenue 
Accounting and Management” screen, then the 
“File History” screen. Then type in the patent number.

(C)Go to the USPTO Internet Site (http://
www.uspto.gov) and select “eBusiness”, then the 
“Patent Electronic Business Center” screen, then the 
“Patent Application Information Retrieval (PAIR)”
screen (http://pair.uspto.gov/cgi-bin/final/home.pl), 
and type in the patent number and select the “view 
Maint. Statement” screen.

If the window for the maintenance fee due has 
closed (maintenance fees are due by the day of the 
4th, 8th and 12th year anniversary of the grant of the 
patent), but the maintenance fee has not been paid, 
the Office of Patent Legal Administration (OPLA) 
should be contacted by the Technology Center 
(TC) Special Program Examiner (SPRE) for instructions 
as to what appropriate action to take.

PAYMENT OF MAINTENANCE FEES WHERE 
THE PATENT HAS BEEN REISSUED

Pursuant to 37 CFR 1.362(b), maintenance fees are 
not required for a reissue patent if the original patent 
that was reissued did not require maintenance fees.

Where the original patent that was reissued did 
require maintenance fees, the schedule of payments of 
maintenance fees on the original patent will continue 
for the reissue patent. 37 CFR 1.362(h). Once an original 
patent reissues, maintenance fees are no longer 
due in the original patent, but rather the maintenance 
fees are due in the reissue patent. This is because upon 
the issuance of the reissue patent, the original patent is 
surrendered and ceases to exist.

In some instances, more than one reissue patents 
will be granted to replace a single original patent. The 
issuance of more than one reissue patent does not alter 
the schedule of payments of maintenance fees on the 
original patent. The existence of multiple reissue patents 
for one original patent can arise where multiple 
divisional reissue applications are filed for the same 
patent, and the multiple applications issue as reissue 
patents (all to replace the same original patent). In 
addition, a divisional application or continuation 
application of an existing reissue application may be 
filed, and both may then issue as reissue patents. In 
such instances, 35 U.S.C. 41 does not provide for the 
charging of more than one maintenance fee for the 
multiple reissues. Thus, no payment of additional 
maintenance fees is required for the second or subsequent 
reissue patents, i.e., continuation or divisional 
reissues, which are derived from a first reissue patent 
which has issued. The maintenance fee must be 
directed to the first reissue patent that has issued. This 
is unlike the instance where there is a reissue of a reissue 
patent, and the maintenance fee must be directed 
to the reissue of the reissue patent.

See MPEP Chapter 2500 for additional information 
pertaining to maintenance fees.

==1416 No Physical Surrender of Original Patent==

37 CFR 1.178. Original patent; continuing duty of 
applicant.

(a)The application for reissue of a patent shall constitute 
an offer to surrender that patent, and the surrender shall take effect 




 

upon reissue of the patent. Until a reissue application is granted, 
the original patent shall remain in effect.



37 CFR 1.178(a) was amended, effective October 
21, 2004, to eliminate the requirement for physical 
surrender of the original letters patent (i.e., the 
“ribbon copy” of the original patent) in a reissue 
application, and to make surrender of the original 
patent automatic upon the grant of the reissue patent.

Amended 37 CFR 1.178(a) applies retroactively to 
all pending applications. For those applications with 
an outstanding requirement for the physical surrender 
of the original letters patent, a reissue applicant must 
timely reply that the requirement is moot in view of 
the implementation of the amended rule. Such a reply 
will be considered a complete reply to any requirement 
directed toward the surrender of the original letters 
patent. It is to be noted that the Office will not 
conduct a search to withdraw Office actions where the 
only outstanding requirement is compliance with the 
physical surrender of the original letters patent.

Example 1:

An Office action issues prior to the effective date 
of the amendment to 37 CFR 1.178 with only a 
requirement for a return of the original letters 
patent to the Office. A two-month period for reply 
is set in the Office action. Applicant fails to timely 
reply to the Office action, relying on the amendment 
to 37 CFR 1.178 as mooting the requirement 
for physical surrender of the original letters patent. 
The six-month full statutory period for reply 
expires. In this instance, the reissue application 
would be abandoned (as of the day after the last 
day of the two-month period set in the Office 
action) for failure to timely reply to the Office 
action, because no reply was timely filed.

Example 2:

An Office action issues prior to the effective date 
of the amendment to 37 CFR 1.178 with the only 
requirement for a return of the original letters 
patent to the Office. Applicant fails to reply to the 
Office action within the two-month period set in 
the Office action, relying on the amendment to 
37 
CFR 1.178 as mooting the requirement for 
physical surrender of the original letters patent. In 
reviewing the reissue application in connection 
with a related application, the examiner notes the 
omission prior to the expiration of the six-month 
full statutory period for reply. In this instance, the 
examiner may telephone the applicant, and remind 
the applicant of the need to file a timely reply.

Example 3:

An Office action issues prior to the effective date 
of the amendment to 37 CFR 1.178 with the only 
requirement being a return of the original letters 
patent to the Office. Applicant timely replies to the 
Office that it should vacate/withdraw the requirement, 
or otherwise indicates that return of the original 
letters patent is now unnecessary. In this 
instance, a complete reply would have been filed, 
and the requirement would be withdrawn and the 
application passed to issue.

Example 4:

An Office action issues prior to the effective date 
of the amendment to 37 CFR 1.178 with both (a) a 
requirement to return the original letters patent to 
the Office, and (b) a rejection of the claims under 
35 U.S.C. 103. Applicant timely replies to the 
Office action addressing only the rejection under 
35 U.S.C. 103 (but not the need for physical surrender 
of the original letters patent). In this 
instance, the reply would be accepted as complete, 
and the Office would withdraw the requirement for 
physical surrender of the original letters patent. 
(The requirement was proper when made, so the 
Office would not vacate the action in regard to 
submission of the original letters patent.).

Where the patentee has submitted the original letters 
patent in a reissue application subject to 
37 
CFR 1.178 as it is now amended, the Office 
may, in response to a timely request, return the 
original letters patent, when it can be readily 
retrieved from where it is stored, namely, the paper 
application file, or the artifact storage area for an 
Image File Wrapper (IFW) file. Any request for 
return of the letters patent which is submitted after 
the issue fee has been paid will require a petition 
pursuant to 37 CFR 1.59(b) to expunge from the 
file and return the original letters patent. Where 
the original letters patent cannot be readily 
retrieved, or in the rare instance that it has been 
subsequently misplaced, the Office will not be able 




 

to return the original letters patent and will not create 
a new one.

Example 5:

In an application filed after the effective date of 
the amendment to 37 CFR 1.178, applicant has 
mistakenly submitted the original letters patent 
and later seeks its return. In this instance, provided 
applicant timely requests the return of the original 
letters patent, the Office would return the patent, 
provided it can be readily retrieved.

Example 6:

A reissue application was pending at the time of 
the effective date of the amendment to 37 CFR 
1.178, and an original letters patent was submitted. 
Applicant requests return of the original letters 
patent, although the application is abandoned at 
the time the request for return is made. In this 
instance, the Office would return the original letters 
patent if it is readily retrievable. Even where 
the reissue application was already abandoned at 
the time of the effective date of the amendment to 
37 CFR 1.178, the Office would also return the 
original letters patent.

Example 7:

A reissue application is pending at the time of the 
effective date of the amendment to 37 CFR 1.178. 
An original letters patent was submitted, and the 
issue fee has been paid for the reissue application 
at the time the request for return of the original letters 
patent is made. In this instance, the Office may 
similarly return the original letters patent, but only 
if the request is accompanied by a grantable petition 
under 37 CFR 1.59(b).

Example 8:

A reissue application was pending at the time of 
the effective date of the amendment to 37 CFR 
1.178. An original letters patent was submitted, 
and the reissue application then issued as a reissue 
patent. After the reissue patent issues, the request 
for return of the original letters patent is made. 
Once again, the Office may return the original letters 
patent, but only if the request is accompanied 
by a grantable petition under 37 CFR 1.59(b).

Example 9:

A reissue application issued as a reissue patent 
prior to the effective date of the amendment to 
37 
CFR 1.178. The reissue applicant, now the patentee, 
requests return of the original letters patent 
that was submitted in the reissue application. In 
this instance, the Office will not return the original 
letters patent. The original letters patent was submitted 
in reply to a requirement that was in effect 
throughout the pendency of the reissue application.




==1417 Claim for Benefit Under 35 U.S.C. 119(a)-(d)==

PRIORITY UNDER 35 U.S.C. 119(a)-(d) WAS 
PERFECTED IN THE ORIGINAL PATENT

A “claim” for the benefit of an earlier filing date in 
a foreign country under 35 U.S.C. 119(a)-(d) must be 
made in a reissue application, even though such a 
claim was previously made in the application for the 
original patent to be reissued. However, no additional 
certified copy of the foreign application is necessary. 
The procedure is similar to that for “Continuing 
Applications” in MPEP § 201.14(b).

In addition, 37 CFR 1.63 requires that in any application 
in which a claim for foreign priority is made 
pursuant to 37 CFR 1.55, the oath or declaration must 
identify the foreign application for patent or inventors’ 
certificate on which priority is claimed unless 
supplied on an application data sheet (37 CFR 1.76), 
and any foreign applications having a filing date 
before that of the application on which priority is 
claimed, by specifying:

(A)the application number of the foreign application;


(B)the foreign country or intellectual property 
authority; and

(C)the day, month, and year of the filing of the 
foreign application.




 

The examiner should note that the heading on 
printed copies of the patent will not be carried forward 
to the reissue from the original patent. Therefore, 
it is important that the bibliographic data sheet 
(or the front face of the reissue file wrapper for series 
08/ and earlier paper applications) be endorsed by the 
examiner under “FOREIGN APPLICATIONS.” For 
an IFW reissue file, a copy of the bibliographic data 
sheet should be printed from the IFW file history. The 
printed copy should be annotated by the examiner and 
then the annotated copy should be scanned into the 
IFW.

PRIORITY UNDER 35 U.S.C. 119(a)-(d) IS 
NEWLY PERFECTED IN THE REISSUE APPLICATION


A reissue was granted in Brenner v. State of Israel, 
400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where 
the only ground urged was failure to file a certified 
copy of the original foreign application to obtain the 
right of foreign priority under 35 U.S.C. 119(a)-(d)
before the patent was granted. In Brenner, the claim 
for priority had been made in the prosecution of the 
original patent, and it was only necessary to submit a 
certified copy of the priority document in the reissue 
application to perfect priority (the claim for priority 
must be repeated in the reissue application). Reissue 
is also available to correct the “error” in failing to take 
any steps to obtain the right of foreign priority under 
35 U.S.C. 119(a)-(d) before the original patent was 
granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 
186 USPQ 97, 106 (CCPA 1975) (“a patent may be 
reissued for the purpose of establishing a claim to priority 
which was not asserted, or which was not perfected 
during the prosecution of the original 
application”) In a situation where it is necessary to 
submit for the first time both the claim for priority and 
the certified copy of the priority document in the reissue 
application and the patent to be reissued resulted 
from a utility or plant application filed on or after 
November 29, 2000, the reissue applicant will have to 
file a petition for an unintentionally delayed priority 
claim under 37 CFR 1.55(c) in addition to filing a 
reissue application. See MPEP §
 
201.14(a).

==1418 Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known to be Material to Patentability==

37 CFR 1.178. Original patent; continuing duty of 
applicant.



(b)In any reissue application before the Office, the applicant 
must call to the attention of the Office any prior or concurrent proceedings 
in which the patent (for which reissue is requested) is or 
was involved, such as interferences, reissues, reexaminations, or 
litigations and the results of such proceedings (see also 
§
 
1.173(a)(1)).

37 CFR 1.178(b) requires reissue applicants to call 
to the attention of the Office any prior or concurrent 
proceeding in which the patent (for which reissue is 
requested) is or was involved and the results of such 
proceedings. These proceedings would include interferences, 
reissues, reexaminations, and litigations. 
Litigation would encompass any papers filed in the 
court or issued by the court, which may include, for 
example, motions, pleadings, and court decisions. 
This duty to submit information is continuing, and 
runs from the time the reissue application is filed until 
the reissue application is abandoned or issues as a 
reissue patent.

In addition, a reissue application is subject to the 
same duty of disclosure requirements as is any other 
nonprovisional application. The provisions of 37 CFR 
1.63 require acknowledgment in the reissue oath or 
declaration of the “duty to disclose to the Office all 
information known to the [applicants] to be material 
to patentability as defined in §
 
1.56.” Note that the 
Office imposes no responsibility on a reissue applicant 
to resubmit, in a reissue application, all the “References 
Cited” in the patent for which reissue is 
sought. Rather, applicant has a continuing duty under 
37 CFR 1.56 to timely apprise the Office of any information 
which is material to the patentability of the 
claims under consideration in the reissue application.

37 CFR 1.97 and 37 CFR 1.98 provide a mechanism 
to submit information known to applicants to be 
material to patentability. Information submitted in 
compliance with 37 CFR 1.97 and 37 CFR 1.98 will 
be considered by the Office. See MPEP § 609. 
Although a reissue applicant may utilize 37 CFR 1.97and 37 CFR 1.98 to comply with the duty of disclo





 

sure required by 37 CFR 1.56, this does not relieve 
applicant of the duties under 37 CFR 1.175 of, for 
example, stating “at least one error being relied 
upon.”

While 37 CFR 1.97(b) provides for the filing of an 
information disclosure statement within 3 months of 
the filing of an application or before the mailing date 
of a first Office action, reissue applicants are encouraged 
to file information disclosure statements at the 
time of filing of the reissue application so that such 
statements will be available to the public during the 2-
month period provided in MPEP § 1441. Form paragraph 
14.11.01 may be used to remind applicant of the 
duties to timely make the Office aware of (A) any 
prior or concurrent proceeding (e.g., litigation or 
Office proceedings) in which the patent to be reissued 
is or was involved, and (B) any information which is 
material to patentability of the claims in the reissue 
application.

¶ 14.11.01 Reminder of Duties Imposed by 37 CFR 
1.178(b) and 37 CFR 1.56 

Applicant is reminded of the continuing obligation under 37 
CFR 1.178(b), to timely apprise the Office of any prior or concurrent 
proceeding in which Patent No. [1] is or was involved. These 
proceedings would include interferences, reissues, reexaminations, 
and litigation. 

Applicant is further reminded of the continuing obligation 
under 37 CFR 1.56, to timely apprise the Office of any information 
which is material to patentability of the claims under consideration 
in this reissue application.

These obligations rest with each individual associated with the 
filing and prosecution of this application for reissue. See also 
MPEP §§ 1404, 1442.01 and 1442.04. 

Examiner Note:

1.This form paragraph is to be used in the first action in a reissue 
application.

2.In bracket [1], insert the patent number of the original patent 
for which reissue is requested.

==1430 Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette==

37 CFR 1.11. Files open to the public.



(b)All reissue applications, all applications in which the 
Office has accepted a request to open the complete application to 
inspection by the public, and related papers in the application file, 
are open to inspection by the public, and copies may be furnished 
upon paying the fee therefor. The filing of reissue applications, 
other than continued prosecution applications under § 1.53(d) of 
reissue applications, will be announced in the Official Gazette. 
The announcement shall include at least the filing date, reissue 
application and original patent numbers, title, class and subclass, 
name of the inventor, name of the owner of record, name of the 
attorney or agent of record, and examining group to which the 
reissue application is assigned.



Under 37 CFR 1.11(b) all reissue applications filed 
after March 1, 1977, are open to inspection by the 
general public, and copies may be furnished upon 
paying the fee therefor. The filing of reissue applications 
(except for continued prosecution applications 
(CPA’s) filed under 37 
CFR 1.53(d)) will be 
announced in the Official Gazette. The announcement 
gives interested members of the public an opportunity 
to submit to the examiner information pertinent to the 
patentability of the reissue application. The announcement 
includes the filing date, reissue application and 
original patent numbers, title, class and subclass, 
name of the inventor, name of the owner of record, 
name of the attorney or agent of record, and the Technology 
Center (TC) to which the reissue application is 
initially assigned. A TC Director or other appropriate 
Office official may, under appropriate circumstances, 
postpone access to or the making of copies of a 
paper reissue application file, such as, for example, 
to avoid interruption of the examination or other 
review of the application by an examiner.  

IFW reissue application files are open to inspection 
by the general public by way of Public PAIR via 
the USPTO Internet site. In viewing the images of the 
files, members of the public will be able to view the 
entire content of the reissue application file history. 
To access Public PAIR, a member of the public would 
(A) go to the USPTO web site at http://
www.uspto.gov, (B) click on “Patents”, (C) under 
“Check Status, View Papers…” click on “Status & 
IFW,” and (D) under “Patent Application Information 
Retrieval” enter the reissue application number.

A notice of a reissue application in the Official 
Gazette should be published prior to any examination 
of the 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 
application may be delayed until two months after the 




 

publication, allowing for any protests to be filed. For 
a discussion of protests, see MPEP Chapter 1900.

The filing of a continued prosecution application 
(CPA) under 37 CFR 1.53(d) of a reissue application 
will not be announced in the Official Gazette.
Although the filing of a CPA of a reissue application 
constitutes the filing of a reissue application, the 
announcement of the filing of such CPA would be 
redundant in view of the announcement of the filing 
of the prior reissue application in the Official Gazetteand the fact that the same application number and file 
will continue to be used for the CPA.

If applicant files a Request for Continued Examination 
(RCE) of the reissue application under 37 CFR 
1.114 (which can be filed on or after May 29, 2000 for 
a reissue application filed on or after June 8, 1995), 
such filing will not be announced in the Official 
Gazette. An RCE continues prosecution of the existing 
reissue application and is not a filing of a new 
application.



The filing of all reissue applications, except for 
CPAs filed under 37 CFR 1.53(d), (note that effective 
July 14, 2003, CPA practice has been eliminated as to 
utility and plant application) will be announced in the 
Official Gazette and will include certain identifying 
data as specified in 37 CFR 1.11(b). Access to a reissue 
application that is maintained in paper must be 
obtained from the area of the Office having jurisdiction 
over the reissue application file. 

For reissue application files that are maintained in 
paper, the following access procedure will be 
observed:

(A) Any member of the general public may 
request access to a particular reissue application filed 
after March 1, 1977.  Since no record of such 
request is intended to be kept, an oral request will suffice. 
Reissue applications already on file prior to 
March 1, 1977 are not automatically open to inspection, 
but a liberal policy is followed by the Office of 
Patent Legal Administration and by the Board of 
Patent Appeals and Interferences (see MPEP 
§
 
1002.02(b)) in granting petitions for access to such 
applications. 

(B)Paper reissue application files will be 
maintained in the TCs and inspection thereof will be 
supervised by TC personnel. Although no general 
limit is placed on the amount of time spent reviewing 
the files, the Office may impose limitations, if necessary, 
e.g., where the application is actively being processed. 


(C)Where the reissue application file has left 
the TC for administrative processing, requests for 
access should be directed to the appropriate supervisory 
personnel where the application is currently 
located. 

(D)Requests for copies of papers in the reissue 
application file must be in writing and addressed to 
the Mail Stop Document Services, Director of the 
United States Patent and Trademark Office, P.O. Box 
1450, Alexandria, VA 22313-1450. Such requests 
may be either mailed or delivered to the Office Customer 
Service Window (See MPEP § 502). The price 
for copies made by the Office is set forth in 37 CFR 
1.19.

==1440 Examination of Reissue Application==

37 CFR 1.176. Examination of reissue.

(a)A reissue application will be examined in the same manner 
as a non-reissue, non-provisional application, and will be subject 
to all the requirements of the rules related to non-reissue 
applications. Applications for reissue will be acted on by the 
examiner in advance of other applications.

(b)Restriction between subject matter of the original patent 
claims and previously unclaimed subject matter may be required 
(restriction involving only subject matter of the original patent 
claims will not be required). If restriction is required, the subject 
matter of the original patent claims will be held to be constructively 
elected unless a disclaimer of all the patent claims is filed in 
the reissue application, which disclaimer cannot be withdrawn by 
applicant.

37 CFR 1.176 provides that an original claim, if re-
presented in a reissue application, will be fully examined 
in the same manner, and subject to the same rules 
as if being presented for the first time in an original 
non-reissue, nonprovisional application, except that 
division will not be required by the examiner. See 
MPEP § 1450 and § 1451. Reissue applications are 
normally examined by the same examiner who issued 
the patent for which reissue is requested. In addition, 
the application will be examined with respect to compliance 
with 37 CFR 1.171-1.178 relating specifically 
to reissue applications, for example, the reissue 
oath or declaration will be carefully reviewed for 
compliance with 37 CFR 1.175. See MPEP § 1444 for 
handling applications in which the oath or declaration 




 

lacks compliance with 37 CFR 1.175. Reissue applications 
with related litigation will be acted on by the 
examiner before any other special applications, and 
will be acted on immediately by the examiner, subject 
only to a 2-month delay after publication for examining 
reissue applications; see MPEP § 1441.

The original patent file wrapper /file history should 
always be obtained and reviewed when examining a 
reissue application thereof.

==1441 Two-Month Delay Period==

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, 
since, 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 prior to 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 prior to the expiration of the 2-month 
delay period. Such petitions are decided by the 
Office of Patent Legal Administration.

1441.01Protest in Reissue Applications[R-3]

A protest pursuant to 37 CFR 1.291 may be 
filed throughout the pendency of a reissue application, 
prior to 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” since 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.

 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. If the protest of a reissue 
application cannot be filed within the 2-month delay 
period, the 
protest can be submitted at a later time. 
Where the protest is submitted after the 2-month 
period, no petition for entry of the protest under 
37 
CFR 1.182 is needed with respect to the protest 
being submitted after the 2 months, unless a final 
rejection has been issued or prosecution on the merits 
has been otherwise closed for the reissue application.


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. Once the 
first 
Office action is mailed (after the 2-month 
period), a member of the public may still submit pertinent 
information in the form of a protest under 
37 
CFR 1.291, and the examiner will consider the 
information submitted in the next Office action, to the 
extent that such consideration is appropriate. 
Where a final rejection has been issued or the 
prosecution on the merits has been otherwise closed, a 
petition under 37 CFR 1.182 along with the required 
petition fee (37 CFR 1.17(f)) for entry of the protest 
are 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.

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 prior to 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 Gazettenotice 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 prior 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.

==1442 Special Status==

All reissue applications are taken up “special,” and 
remain “special” even though applicant does not 
respond promptly.

All reissue applications, except those under suspension 
because of litigation, will be taken up for action 
ahead of other “special” applications; this means that 
all issues not deferred will be treated and responded to 
immediately. Furthermore, reissue applications 
involved in litigation will be taken up for action in 
advance of other reissue applications.

1442.01Litigation-Related Reissues [R-5]

During initial review, the examiner should determine 
whether the patent for which the reissue has 
been filed is involved in litigation, and if so, the status 
of that litigation. If the examiner becomes aware of 
litigation involving the patent sought to be reissued 
during examination of the reissue application, and 
applicant has not made the details regarding that litigation 
of record in the reissue application, the examiner, 
in the next Office action, will inquire regarding 
the specific details of the litigation. 

Form paragraph 14.06 may be used for such an 
inquiry.

¶ 14.06 Litigation-Related Reissue

The patent sought to be reissued by this application [1] 
involved in litigation. Any documents and/or materials which 




 

would be material to patentability of this reissue application are 
required to be made of record in response to this action.

Due to the related litigation status of this application, EXTENSIONS 
OF TIME UNDER THE PROVISIONS OF 37 CFR 
1.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION 
OF THIS APPLICATION.

Examiner Note:

In bracket 1, insert either —is— or —has been—. 

If additional details of the litigation appear to be 
material to examination of the reissue application, the 
examiner may make such additional inquiries as necessary 
and appropriate. 

For reissue application files that are maintained in 
paper, if the existence of litigation has not already 
been noted, the examiner should place a prominent 
notation on the application file to indicate the litigation 
(1) at the bottom of the face of the file in the box 
just to the right of the box for the retention label, and 
(2) on the pink Reissue Notice Card form. For reissue 
application files that are maintained in the Image 
File Wrapper (IFW) system, if the existence of litigation 
has not already been noted, the examiner should 
print out a copy of the bibliographic data sheet from 
the IFW file history and annotate the printed bibliographic 
data sheet such that adequate notice is provided 
of the existence of the litigation. The examiner 
should place the annotation in a prominent place. The 
annotated sheet should be scanned into IFW.

Applicants will normally be given 1 month to reply 
to Office actions in all reissue applications which are 
being examined during litigation, or after litigation 
had been stayed, dismissed, etc., to allow for consideration 
of the reissue by the Office. This 1-month 
period may be extended only upon a showing of clear 
justification pursuant to 37 CFR 1.136(b). The Office 
action will inform applicant that the provisions of 
37 
CFR 1.136(a) are not available. Of course, up to 
3 
months may be set for reply if the examiner determines 
such a period is clearly justified.

===1442.02 Concurrent Litigation===

In order to avoid duplication of effort, action in 
reissue applications in which there is an indication of 
concurrent litigation will be suspended automatically 
unless and until 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 has been terminated; 

(C)there are no significant overlapping issues 
between the application and the litigation; or 

(D)it is applicant’s desire that the application be 
examined at that time. 

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.

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 Special Program Examiner 
prior to suspending action in the reissue. Form paragraph 
14.11 may be used to suspend action, i.e., stay 
action, in a reissue application with concurrent litigation.

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 § 2286. 
As to a stay or suspension where reissue proceedings 
are merged with inter partes reexamination proceedings, 
see 37 CFR 1.937 and MPEP § 2686.

===1442.03 Litigation Stayed===

All reissue applications, except those under suspension 
because of litigation, will be taken up for action 
ahead of other “special” applications; this means that 
all issues not deferred will be treated and responded to 
immediately. Furthermore, reissue applications 
involved in “stayed litigation” will be taken up for 
action in advance of other reissue applications. Great 
emphasis is placed on the expedited processing of 
such reissue applications. The courts are especially 
interested in expedited processing in the Office where 
litigation is stayed.

In reissue applications with “stayed litigation,” the 
Office will entertain petitions under 37 CFR 1.182, 
which are accompanied by the fee under 37 CFR 
1.17(f), to not apply the 2-month delay period 
stated in MPEP § 1441. Such petitions are decided by 
the Office of Patent Legal Administration.

Time-monitoring systems have been put into effect 
which will closely monitor the time used by applicants, 
protestors, and examiners in processing reissue 
applications of patents involved in litigation in which 
the court has stayed further action. Monthly reports on 
the status of reissue applications with related litigation 
are required from each Technology Center (TC). 
Delays in reissue processing are to be followed up. 
The TC Special Program Examiner is responsible for 
oversight of reissue applications with related litigation.

The purpose of these procedures and those deferring 
consideration of certain issues, until all other 
issues are resolved or the application is otherwise 
ready for consideration by the Board of Patent 
Appeals and Interferences (note MPEP § 1448), is to 
reduce the time between filing of the reissue application 
and final action thereon, while still giving all parties 
sufficient time to be heard.

===1442.04 Litigation Involving Patent===

37 CFR 1.178. Original patent; continuing duty of 
applicant.

(b)In any reissue application before the Office, the applicant 
must call to the attention of the Office any prior or concurrent proceedings 
in which the patent (for which reissue is requested) is or 
was involved, such as interferences, reissues, reexaminations, or 
litigations and the results of such proceedings (see also 
§ 1.173(a)(1)).

Where the patent for which reissue is being sought 
is, or has been, involved in litigation, the applicant 
should bring the existence of such litigation to the 
attention of the Office. 37 CFR 1.178(b). This should 
be done at the time of, or shortly after, the applicant 
files 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 also should be 
promptly brought to the attention of the Office. 

Litigation encompasses any papers filed in the 
court or issued by the court. This may include, for 
example, motions, pleadings, and court decisions, as 
well as the results of such proceedings. When applicant 
notifies the Office of the existence of the litigation, 
enough information should be submitted so that 
the Office can reasonably evaluate the need for asking 
for further materials in the litigation. Note that the 
existence of supporting materials which may substantiate 
allegations of invalidity should, at least, be fully 
described, and preferably submitted. The Office is not 
interested in receiving voluminous litigation materials 
which are not relevant to the Office’s consideration of 
the reissue application. The status of the litigation 
should be updated in the reissue application as soon as 
significant events happen in the litigation. 

When a reissue application is filed, the examiner 
should determine whether the original patent has been 
adjudicated by a court. The decision(s) of the court, 
and also other papers in the suit, may provide information 
essential to the examination of the reissue. 
Examiners should inform the applicant of the duty to 
supply information as to litigation involving the 
patent. Form paragraph 14.11.01 may be used for this 
purpose. See MPEP § 1418. 

Additionally, the patented file will contain notices 
of the filing and termination of infringement suits on 
the patent. Such notices are required by law to be filed 
by the clerks of the Federal District Courts. These 
notices do not indicate if there was an opinion by the 
court, nor whether a decision was published. Shepard’s 
Federal Citations and the cumulative digests of 
the United States Patents Quarterly, both of which are 
in the Lutrelle F. Parker, Sr., Memorial Law Library, 
contain tables of patent numbers giving the citation of 
published decisions concerning the patent. 

A litigation computer search by the Scientific and 
Technical Information Center (STIC) should be 
requested by the examiner to determine whether the 
patent has been, or is, involved in litigation. For 
reissue application files that are maintained in paper, 
the “Search Notes” box on the application file wrapper 
is then  completed to indicate that the review 
was conducted. A copy of the STIC search should be 
hole-punched and placed in the reissue file. For 
IFW reissue application files, the “Search Notes” box 
on the OACS “Search Notes” page is annotated to 
indicate that the review was conducted, and the 
OACS “Search Notes” page is then scanned into the 
reissue application file history. 

Additional information or guidance as to making a 
litigation search may be obtained from the library of 
the Office of the Solicitor. Where papers are not otherwise 
conveniently obtainable, the applicant may be 
requested to supply copies of papers and records in 
suits, or the Office of the Solicitor may be requested 
to obtain them from the court. The information thus 
obtained should be carefully considered for its bearing 
on the proposed claims of the reissue, particularly 
when the reissue application was filed in view of the 
holding of a court.

If the examiner becomes aware of litigation involving 
the patent sought to be reissued during examination 
of the reissue application, and applicant has not 
made the details regarding that litigation of record in 
the reissue application, the examiner, in the next 
Office action, should inquire regarding the same. 
Form paragraph 14.06 may be used for such an 
inquiry. See MPEP § 1442.01.

If the additional details of the litigation appear to be 
material to patentability of the reissue application, the 
examiner may make such additional inquiries as necessary 
and appropriate.

===1442.05 Court Ordered Filing of Reissue Application===

In most instances, the reissue-examination procedure 
is instituted by a patent owner who voluntarily 
files a reissue application as a consequence of related 
patent litigation. Some Federal district courts in 
earlier decisions have required a patentee-litigant to 
file a reissue application as a consequence of the 
patent litigation. However, the Court of Appeals for 
the Federal Circuit held in Green v. The Rich Iron Co., 
944 F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir. 
1991) that a Federal district court in an infringement 
case could not compel a patentee to seek reissue 
by the USPTO.

It is to be noted that only a patentee or his or her 
assignee may file a reissue patent application. An 
order by a court for a different party to file a reissue 
will not be binding on the Office.

==1443 Initial Examiner Review==

As part of an examiner’s preparation for the examination 
of a reissue application, the Examiner Reissue 
Guide and Checklist should be consulted for basic 
guidance and suggestions for handling the prosecution. 
The Technology Center (TC) Special Program 
Examiners (SPREs) should make the Guide and 
Checklist available at the time a reissue application is 
docketed to an examiner.

On initial receipt of a reissue application, the examiner 
should inspect the submission under 37 CFR 
1.172 as to documentary evidence of a chain of title 
from the original owner to the assignee to determine 
whether the consent requirement of 37 CFR 1.172 has 
been met. The examiner will compare the consent and 
documentary evidence of ownership; the assignee 
indicated by the documentary evidence must be the 
same assignee which signed the consent. Also, the 
person who signs the consent for the assignee and the 
person who signs the submission of evidence of ownership 
for the assignee must both be persons having 
authority to do so. See also MPEP § 324. 

Where the application is assigned, and there is no 
submission under 37 CFR 1.172 as to documentary 
evidence in the application, the examiner should 
require the submission using form paragraph 14.16. 
Once the submission under 37 CFR 1.172 as to documentary 
evidence is received, it must be compared 
with the consent to determine whether the assignee 
indicated by the documentary evidence is the same 
assignee which signed the consent. See MPEP 
§ 1410.01 for further discussion as to the required 
consent and documentary evidence.

Where there is a statement of record that the application 
is not assigned, there should be no submission 
under 37 
CFR 1.172 as to documentary evidence of 
ownership in the application, and none should be 
required by the examiner.

The filing of all reissue applications, except for 
continued prosecution applications (CPAs) filed under 
37 CFR 1.53(d), must be announced in the Official 
Gazette. Accordingly, for any reissue application 
other than a CPA, the examiner should determine if 
the filing of the reissue application has been 
announced in the Official Gazette as provided in 
37 CFR 1.11(b). The contents entry on the PALM 
Intranet Contents screen should be checked for the 
presence of “NRE” and “NOTICE OF REISSUE 
PUBLISHED IN OFFICIAL GAZETTE” entries in 
the contents, and the date of publication. Where the 
reissue application is maintained in a paper file, the
date of the Official Gazette notice can usually be 
found on the pink “REISSUE” tag which protrudes 
from the top of the application file of 08/ or earlier 
series.  For 09/ and later series reissue applications, 
the Official Gazette publication date appears on the 
face of the file wrapper.  If the filing of the reissue 
application has not been announced in the Official 
Gazette, the reissue application should be returned to 
the Office of Initial Patent Examination (Special Processing) 
to handle the announcement. The examiner 
should not further act on the reissue until 2 months 
after announcement of the filing of the reissue has 
appeared in the Official Gazette. See MPEP § 1440.

The examiner should determine if there is concurrent 
litigation, and if so, the status thereof (MPEP 
§ 1442.01), and whether the reissue file wrapper 
(for reissue application files maintained in paper) or 
file history (for IFW reissue applications) has been 
appropriately marked. Note MPEP § 1404. 

The examiner should determine if a protest has 
been filed, and if so, it should be handled as set forth 
in MPEP § 1901.06. For a discussion of protests 
under 37 CFR 1.291 in reissue applications, see 
MPEP § 1441.01.

The examiner should determine whether the patent 
is involved in an interference, and if so, should refer 
to MPEP § 1449.01 before taking any action on the 
reissue application.

The examiner should verify that all Certificate of 
Correction changes have been properly incorporated 
into the reissue application. See MPEP § 1411.01.

The examiner should verify that the patent on 
which the reissue application is based has not expired, 
either because its term has run or because required 
maintenance fees have not been paid. Once a patent 
has expired, the Director of the USPTO no longer has 
the authority under 35 U.S.C. 251 to 
reissue the patent. See In re Morgan, 990 F.2d 1230, 26 USPQ2d 
1392 (Fed. Cir. 1992). See also MPEP § 1415.01. 

==1444 Review of Reissue Oath/Declaration==

In accordance with 37 CFR 1.175, the following is 
required in the reissue oath/declaration:

(A)A statement that the applicant believes the 
original patent to be wholly or partly inoperative or 
invalid-

(1)by reason of a defective specification or 
drawing, or

(2)by reason of the patentee claiming more or 
less than patentee had the right to claim in the patent;

(B)A statement of at least one error which is 
relied upon to support the reissue application, i.e., 
which provides a basis for the reissue;

(C)A statement that all errors which are being 
corrected in the reissue application up to the time of 
filing of the oath/declaration arose without any deceptive 
intention on the part of the applicant; and

(D)The information required by 37 CFR 1.63.

MPEP § 1414 contains a discussion of each of the 
above elements (i.e., requirements of a reissue oath/
declaration). The examiner should carefully review 
the reissue oath/declaration in conjunction with that 
discussion, in order to ensure that each element is provided 
in the oath/declaration. If the examiner’s review 
of the oath/declaration reveals a lack of compliance 
with any of the requirements of 37 CFR 1.175, a 
rejection of all the claims under 35 
U.S.C. 251 should 
be made on the basis that the reissue oath/declaration 
is insufficient.

In preparing an Office action, the examiner should 
use form paragraphs 14.01 through 14.01.04 to state 
the objection(s) to the oath/declaration, i.e., the 
defects in the oath/declaration. These form paragraphs 
are reproduced in MPEP § 1414. The examiner should 
then use form paragraph 14.14 to reject the claims 
under 35 U.S.C. 251, based upon the improper oath/
declaration. 

A lack of signature on a reissue oath/declaration 
(except as otherwise provided in 37 CFR 1.42, 1.43, 
and 1.47 and in 37 CFR 1.172) would be considered a 
lack of compliance with 37 CFR 1.175(a) and result in 
a rejection, including final rejection, of all the claims 
on the basis that the reissue oath/declaration is insufficient. 
If the unsigned reissue oath/declaration is submitted 
as part of a reply which is otherwise properly 
signed and responsive to the outstanding Office 
action, the reply should be accepted by the examiner 
as proper and responsive, and the oath/declaration 
considered fully in the next Office action. The reply 
should not be treated as an unsigned or improperly 
signed amendment (see MPEP § 714.01(a)), nor do 
the holdings of Ex parte Quayle apply in this situation. 
The lack of signature, along with any other oath/
declaration deficiencies, should be noted in the next 
Office action rejecting the claims as being based upon 
an insufficient reissue oath/declaration.

I.HANDLING OF THE REISSUE OATH/
DECLARATION DURING THE REISSUE 
PROCEEDING

An initial reissue oath/declaration is submitted with 
the reissue application (or within the time period set 
for filing the oath/declaration in a Notice To File 
Missing Parts under 37 CFR 1.53(f)). Where the reissue 
oath/declaration fails to comply with 37 CFR 
1.175(a), the examiner will so notify the applicant in 
an Office action, rejecting the claims under 35 U.S.C. 
251 as discussed above. In reply to the Office action, a 
supplemental reissue oath/declaration should be submitted 
dealing with the noted defects in the reissue 
oath/declaration.

Where the initial reissue oath/declaration (1) failed 
to provide any error statement, or (2) attempted to 
provide an error statement, but failed to identify any 
error under 35 U.S.C. 251 upon which reissue can be 
based (see MPEP § 1402), the examiner should reject 
all the claims as being based upon a defective reissue 
oath/declaration under 35 U.S.C. 251. To support the 
rejection, the examiner should specifically point out 
the failure of the initial oath/declaration to comply 
with 37 CFR 1.175 because an “error” under 
35 U.S.C. 251 upon which reissue can be based was 
not identified therein. In reply to the rejection under 
35 U.S.C. 251, a supplemental reissue oath/declaration 
must be submitted stating an error under 
35 U.S.C. 251 which can be relied upon to support the 
reissue application. Submission of this supplemental 
reissue oath/declaration to obviate the rejection cannot 
be deferred by applicant until the application is 
otherwise in condition for allowance. In this instance, 
a proper statement of error was never provided in the 
initial reissue oath/declaration, thus a supplemental 
oath/declaration is required in reply to the Office 
action in order to properly establish grounds for reissue.

A different situation may arise where the initial 
reissue oath/declaration does properly identify one or 
more errors under 35 U.S.C. 251 as being the basis for 
reissue, however, because of changes or amendments 
made during prosecution, none of the identified errors 
are relied upon any more. A supplemental oath/declaration 
will be needed to identify at least one error nowbeing relied upon as the basis for reissue, even though 
the prior oath/declaration was earlier found proper by 
the examiner. The supplemental oath/declaration need 
not also indicate that the error(s) identified in the prior 
oath(s)/declaration(s) is/are no longer being corrected. 
In this instance, applicant’s submission of the supplemental 
reissue oath/declaration to obviate the rejection 
under 35 U.S.C. 251 can, at applicant’s option, be 
deferred until the application is otherwise in condition 
for allowance. The submission can be deferred 
because a proper statement of error was provided in 
the initial reissue oath/declaration. Applicant need 
only request that submission of the supplemental reissue 
oath/declaration be deferred until allowance, and 
such a request will be considered a complete reply to 
the rejection.

II.SUPPLEMENTAL REISSUE OATH/DECLARATION UNDER 37 CFR 1.175(b)(1):

Once the reissue oath/declaration is found to comply 
with 37 CFR 1.175(a), it is not required, nor is it 
suggested, that a new reissue oath/declaration be submitted 
together with each new amendment and correction 
of error in the patent. During the prosecution of a 
reissue application, amendments are often made 
and additional errors in the patent are corrected. A 
supplemental oath/declaration need not be submitted 
with each amendment and additional correction. 
Rather, it is suggested that the reissue applicant wait 
until the case is in condition for allowance, and then 
submit a cumulative supplemental reissue oath/declaration 
pursuant to 37 CFR 1.175(b)(1).

See MPEP § 1414.01 for a discussion of the 
required content of a supplemental reissue oath/declaration 
under 37 CFR 1.175(b)(1).

A supplemental oath/declaration under 37 CFR 
1.175(b)(1) must be submitted before allowance. It 
may be submitted with any reply prior to allowance. It 
may be submitted to overcome a rejection under 
35 
U.S.C. 251 made by the examiner, where it is indicated 
that the submission of the supplemental oath/
declaration will overcome the rejection.

A supplemental oath/declaration under 37 CFR 
1.175(b)(1) will be required where:

(A)the application is otherwise (other than the 
need for this supplemental oath/declaration) in condition 
for allowance;

(B)amendments or other corrections of errors in 
the patent have been made subsequent to the last oath/
declaration filed in the application; and

(C)at least one of the amendments or other corrections 
corrects an error under 35 U.S.C. 251.

When a supplemental oath/declaration under 
37 CFR 1.175(b)(1) directed to the amendments or 
other corrections of error is required, the examiner is 
encouraged to telephone the applicant and request the 
submission of the supplemental oath/declaration by 
fax. If the circumstances do not permit making a telephone 
call, or if applicant declines or is unable to 
promptly submit the oath/declaration, the examiner 
should issue a final Office action (final rejection) and 
use form paragraph 14.05.02 where the action issued 
is a second or subsequent action on the merits.

As noted above, the examiner will issue a final 
Office action where the application is otherwise in 
condition for allowance, and amendments or other 
corrections of error in the patent have been made subsequent 
to the last oath/declaration filed in the application. 
The examiner will be introducing (via form 
paragraph 14.05.02) a rejection into the case for the 
first time in the prosecution, when the claims have 
been determined to be otherwise allowable. This 
introduction of a new ground of rejection under 
35 
U.S.C. 251 will not prevent the action from being 
made final on a second or subsequent action because 
of the following factors:

(A)The finding of the case in condition for allowance 
is the first opportunity that the examiner has to 
make the rejection; 

(B)The rejection is being made in reply to, i.e., 
was caused by, an amendment of the application (to 
correct errors in the patent);

(C)All applicants are on notice that this rejection 
will be made upon finding of the case otherwise in 
condition for allowance where errors have been corrected 
subsequent to the last oath/declaration filed in 
the case, so that the rejection should have been 
expected by applicant; and 

(D)The rejection will not prevent applicant from 
exercising any rights to cure the rejection, since applicant 
need only submit a supplemental oath/declaration 
with the above-described language, and it will be 
entered to cure the rejection.

Where the application is in condition for allowance 
and no amendments or other corrections of error 
in the patent have been made subsequent to the 
last oath/declaration filed in the application, a supplemental 
reissue oath/declaration under 37 CFR 
1.175(b)(1) should not be required by the examiner. 
Instead, the examiner should issue a Notice of 
Allowability indicating allowance of the claims.

III.AFTER ALLOWANCE

Where applicant seeks to correct an error after 
allowance of the application, any amendment of the 
patent correcting the error must be submitted in accordance 
with 37 CFR 1.312. As set forth in 37 CFR 
1.312, no amendment may be made as a matter of 
right in an application after the mailing of the notice 
of allowance. An amendment filed under 37 CFR 
1.312 must be filed before or with the payment of the 
issue fee and may be entered on the recommendation 
of the primary examiner, and approved by the supervisory 
patent examiner, without withdrawing the case 
from issue. 

Because the amendment seeks to correct an error in 
the patent, the amendment will affect the disclosure, 
the scope of a claim, or add a claim. Thus, in accordance 
with MPEP § 714.16, the remarks accompanying 
the amendment must fully and clearly state:

(A)why the amendment is needed;

(B)why the proposed amended or new claims 
require no additional search or examination;

(C)why the claims are patentable; and

(D)why they were not presented earlier.

A supplemental reissue oath/declaration must 
accompany the amendment. The supplemental reissue 
oath/declaration must state that the error(s) to be corrected 
arose without any deceptive intention on the 
part of the applicant. The supplemental reissue oath/
declaration submitted after allowance must be 
directed to the error(s) applicant seeks to correct after 
allowance. This oath/declaration need not cover any 
earlier errors, since all earlier errors should have been 
covered by a reissue oath/declaration submitted prior 
to allowance.

Occasionally correcting an error after allowance 
does not include an amendment of the specification or 
claims of the patent. For example, the correction of 
the error could be the filing of a certified copy of the 
original foreign application (prior to the payment of 
the issue fee - see 37 CFR 1.55(a)(2)) to obtain the 
right of foreign priority under 35 U.S.C. 119 (see 
Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 
584 (D.C. Cir. 1968)) where the claim for foreign priority 
had been timely made in the application for the 
original patent. In such a case, the requirements of 
37 
CFR 1.312 must still be met. This is so, because 
the correction of the patent is an amendment of the 
patent, even though no amendment is physically 
entered into the case. Thus, for a reissue oath/declaration 
submitted after allowance to correct an additional 
error (or errors), the reissue applicant must comply 
with 37 CFR 1.312 in the manner discussed above.

==1445 Reissue Application Examined in Same Manner as Original Application==

As stated in 37 CFR 1.176, a reissue application, 
including all the claims therein, is subject to “be 
examined in the same manner as a non-reissue, non-
provisional application.” Accordingly, the claims in a 
reissue application are subject to any and all rejections 
which the examiner deems appropriate. It does 
not matter whether the claims are identical to those of 
the patent or changed from those in the patent. It also 
does not matter that a rejection was not made in the 
prosecution of the patent, or could have been made, or 
was in fact made and dropped during prosecution of 
the patent; the prior action in the prosecution of the 
patent does not prevent that rejection from being 
made in the reissue application. Claims in a reissue 
application enjoy no “presumption of validity.” In re 
Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 
(CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 
218 USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise, 
the fact that during prosecution of the patent the 
examiner considered, may have considered, or should 
have considered information such as, for example, a 
specific prior art document, does not have any bearing 
on, or prevent, its use as prior art during prosecution 
of the reissue application.

==1448 Fraud, Inequitable Conduct, or Duty of Disclosure Issues==

The Office no longer investigates and rejects 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 
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. 

ADMISSION OR JUDICIAL DETERMINATION

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, after consulting with 
the Technology Center (TC) Special Program Examiner 
(SPRE), a rejection should be made using the 
appropriate one of form paragraphs 14.21.09 or 14.22as 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 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.

See MPEP § 2012 for additional discussion as to 
fraud, inequitable conduct or violation of duty of disclosure 
in a reissue application.

==1449 Protest Filed in Reissue Where Patent Is in Interference==

If a protest (see MPEP Chapter 1900) is filed in a 
reissue application related to a patent involved in a 
pending interference proceeding, the reissue application 
should be referred to the Office of Patent Legal 
Administration (OPLA) before considering the protest 
and acting on the reissue application. 

The OPLA will check to see that:

(A)all parties to the interference are aware of the 
filing of the reissue; and

(B)the Office does not allow claims in the reissue 
which are unpatentable over the pending interference 
count(s), or found unpatentable in the interference 
proceeding. After the reissue application has been 
reviewed by the OPLA, the reissue application with 
the protest will be returned to the examiner. See 
MPEP § 1441.01 for a discussion as to protests under 
37 CFR 1.291 in reissue applications.

===1449.01 Concurrent Office Proceedings===

I.CONCURRENT REEXAMINATION PROCEEDINGS:

37 CFR 1.565(d) provides that if “a reissue application 
and an ex parte reexamination proceeding on 
which an order pursuant to 37 CFR 1.525 has been 
mailed are pending concurrently on a patent, a decision 
will normally be made to merge the two proceedings 
or to suspend one of the two proceedings.” 
37 CFR 1.991 provides that if “a reissue application 
and an inter partes reexamination proceeding on 
which an order pursuant to 37 CFR 1.931 has been 
mailed are pending concurrently on a patent, a decision 
may be made to merge the two proceedings or to 
suspend one of the two proceedings”. If an examiner 
becomes aware that a reissue application and an ex 
parte or inter partes reexamination proceeding are 
both pending for the same patent, he or she should 
immediately inform the Technology Center (TC) 
or Central Reexamination Unit (CRU) Special Program 
Examiner (SPRE).

Pursuant to 37 CFR 1.177, a patent owner may file 
more than one reissue application for the same patent. 
If an examiner becomes aware that multiple reissue 
applications are pending for the same patent, and an 
ex parte or inter partes reexamination proceeding is 
pending for the same patent, he or she should immediately 
inform the TC SPRE.

Where a reissue application and a reexamination 
proceeding are pending concurrently on a patent, and 
an order granting reexamination has been issued for 
the reexamination proceeding, the Office of Patent 
Legal Administration (OPLA) must be notified that 
the proceedings are ready for a decision as to whether 
to merge the reissue and the reexamination, or stay 
one of the two. See MPEP § 2285 for the 
procedure of 
notifying OPLA and general guidance, if a reissue 
application and an ex parte reexamination proceeding 
are both pending for the same patent, and 
an inter 
partes reexamination proceeding is not involved. See 
MPEP § 2686.03 where a reissue application and an 
inter partes reexamination proceeding are both pending 
for the same patent, regardless of whether an ex 
parte reexamination proceeding is also pending.

Where a reissue application and a reexamination 
proceeding are pending concurrently on a patent, the 
patent owner, i.e., the reissue applicant, has a responsibility 
to notify the Office of the concurrent proceeding. 
37 CFR § 1.178(b), 37 CFR 1.565(a), and 
37 
CFR 1.985(a). The patent owner should file in the 
reissue application, as early as possible, a Notification 
of Concurrent Proceedings pursuant to 37 CFR 
1.178(b) in order to alert the Office of the existence of 
the reexamination proceeding on the same patent. See 
MPEP § 1418. In addition, the patent owner should 
file in the reexamination proceeding, as early as possible, 
a Notification of Concurrent Proceedings pursuant 
to 37 CFR 1.565(a) or 1.985(a) (depending on 
whether the reexamination proceeding is an ex partereexamination proceeding or an inter partes reexamination 
proceeding) to provide a notification to the 
Office in the reexamination proceeding of the existence 
of the two concurrent proceedings.

The patent owner may file a petition under 37 CFR 
1.182 in a reissue application to merge the reissue 
application with the reexamination proceeding, or to 
stay one of the proceedings because of the other. This 
petition must be filed after the issuance of the order to 
reexamine (37 CFR 1.525, 37 CFR 1.931) in the reexamination 
proceeding. If the petition is filed prior to 
the reexamination order, it will not be considered, and 
will be returned to the patent owner by the TC or 
CRU Director. If the petition is filed after the issuance 
of the order to reexamine, the petition and the 
files for the reissue application and the reexamination 
proceeding will be forwarded to OPLA for decision.

II.CONCURRENT INTERFERENCE PROCEEDINGS

If the original patent is involved in an interference, 
the examiner must consult the administrative patent 
judge in charge of the interference before taking any 
action on the reissue application. It is particularly 
important that the reissue application not be granted 
without the administrative patent judge’s approval. 
See MPEP Chapter 2300.

III.CONCURRENT REISSUE PROCEEDINGS

Where more than one reissue applications are pending 
concurrently on the same patent, see MPEP 
§§
 
1450 and 1451.

1449.02Interference in Reissue [R-5]

37 CFR 41.8. Mandatory notices.

(a)In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the 
initiation of a contested case (§ 41.101), and within 20 days of any 
change during the proceeding, a party must identify:

(1)Its real party-in-interest, and

(2)Each judicial or administrative proceeding that could 
affect, or be affected by, the Board proceeding.

(b)For contested cases, a party seeking judicial review of a 
Board proceeding must file a notice with the Board of the judicial 
review within 20 days of the filing of the complaint or the notice 
of appeal. The notice to the Board must include a copy of the 
complaint or notice of appeal. See also §§ 1.301 to 1.304 of this 
title.

37 CFR 41.202. Suggesting an interference.

(a)Applicant. An applicant, including a reissue applicant, 
may suggest an interference with another application or a patent. 
The suggestion must:

(1)Provide sufficient information to identify the application 
or patent with which the applicant seeks an interference,

(2)Identify all claims the applicant believes interfere, 
propose one or more counts, and show how the claims correspond 
to one or more counts,

(3)For each count, provide a claim chart comparing at 
least one claim of each party corresponding to the count and show 
why the claims interfere within the meaning of § 41.203(a),

(4)Explain in detail why the applicant will prevail on priority,

(5)If a claim has been added or amended to provoke an 
interference, provide a claim chart showing the written description 
for each claim in the applicant’s specification, and

(6)For each constructive reduction to practice for which 
the applicant wishes to be accorded benefit, provide a chart showing 
where the disclosure provides a constructive reduction to practice 
within the scope of the interfering subject matter.

(c)Examiner. An examiner may require an applicant to add 
a claim to provoke an interference. Failure to satisfy the requirement 
within a period (not less than one month) the examiner sets 
will operate as a concession of priority for the subject matter of 
the claim. If the interference would be with a patent, the applicant 
must also comply with paragraphs (a)(2) through (a)(6) of this 
section. The claim the examiner proposes to have added must, 
apart from the question of priority under 35 U.S.C. 102 (g):

(1)Be patentable to the applicant, and

(2)Be drawn to patentable subject matter claimed by 
another applicant or patentee.

In appropriate circumstances, a reissue application 
may be placed into interference with a patent or pending 
application. A patentee may provoke an interference 
with a patent or pending application by filing a 
reissue application, if the reissue application includes 
an appropriate reissue error as required by 35 U.S.C. 
251. Reissue error must be based upon applicant 
error; a reissue cannot be based solely on the error of 
the Office for failing to declare an interference or to 
suggest copying claims for the purpose of establishing 
an interference. See In re Keil, 808 F.2d 830, 
1 
USPQ2d 1427 (Fed. Cir. 1987); In re Dien, 680 F.2d 
151, 214 USPQ 10 (CCPA 1982); In re Bostwick, 102 
F.2d 886, 888, 41 USPQ 279, 281 (CCPA 1939); and 
In re Guastavino, 83 F.2d 913, 916, 29 USPQ 532, 
535 (CCPA 1936). See also Slip Track Systems, Inc. v. 
Metal Lite, Inc., 159 F.3d 1337, 48 USPQ2d 1055 
(Fed. Cir. 1998) (Two patents issued claiming the 
same patentable subject matter, and the patentee with 
the earlier filing date requested reexamination of the 
patent with the later filing date (Slip Track’s patent). 
A stay of litigation in a priority of invention suit under 
35 U.S.C. 291, pending the outcome of the reexamination, 
was reversed. The suit under 35 U.S.C. 291was the only option available to Slip Track to determine 
priority of invention. Slip Track could not file a 
reissue application solely to provoke an interference 
proceeding before the Office because it did not assert 
that there was any error as required by 35 U.S.C. 251in the patent.). A reissue application can be employed 
to provoke an interference if the reissue application: 

(A)adds copied claims which are not present in 
the original patent;

(B)amends claims to correspond to those of the 
patent or application with which an interference is 
sought; or

(C)contains at least one error (not directed to 
provoking an interference) appropriate for the reissue.

In the first two situations, the reissue oath/declaration 
must assert that applicant erred in failing to 
include claims of the proper scope to provoke an 
interference in the original patent application. Note 
that in In re Metz, 173 F.3d 433 (Fed. Cir. 1998) 
(table), the Federal Circuit permitted a patentee to file 
a reissue application to copy claims from a patent in 
order to provoke an interference with that patent. Furthermore, 
the subject matter of the copied or amended 
claims in the reissue application must be supported by 
the disclosure of the original patent under 35 U.S.C. 
112, first paragraph. See In re Molins, 368 F.2d 258, 
261, 151 USPQ 570, 572 
(CCPA 1966) and In re 
Spencer, 273 F.2d 181, 124 USPQ 175 (CCPA 1959). 

A reissue applicant cannot present added or 
amended claims to provoke an interference, if the 
claims were deliberately omitted from the patent. If 
there is evidence that the claims were not inadvertently 
omitted from the original patent, e.g., the subject 
matter was described in the original patent as being 
undesirable, the reissue application may lack proper 
basis for the reissue. See In re Bostwick, 102 F.2d at 
889, 41 USPQ at 282 (CCPA 1939)(reissue lacked a 
proper basis because the original patent pointed out 
the disadvantages of the embodiment that provided 
support for the copied claims). 

The issue date of the patent, or the publication date 
of the application publication (whichever is applicable 
under 35 U.S.C. 135(b)), with which an interference 
is sought must be less than 1 year prior to the presentation 
of the copied or amended claims in the reissue 
application. See 35 U.S.C. 135(b) and MPEP § 715.05and MPEP Chapter 2300. If the reissue application 
includes broadened claims, the reissue application 
must be filed within two years from the issue date of 
the original patent. See 35 U.S.C. 251 and MPEP § 
1412.03.

An examiner may, pursuant to 37 CFR 41.202(c), 
require a reissue applicant to add a claim to provoke 
an interference, unless the reissue applicant cannot 
present the added claim to provoke an interference 
based upon the provisions of the reissue statute and 
rules, e.g., if the claim was deliberately omitted from 
the patent, or if the claim enlarges the scope of the 
claims of the original patent and was not “applied for 
within two years from the grant of the original 
patent.” Failure to satisfy the requirement within a 
period (not less than one month) the examiner sets 
will operate as a concession of priority for the subject 
matter of the claim. If the interference would be with 
a patent, the reissue applicant must also comply with 
37 CFR 41.202(a)(2) through (a)(6). The claim the 
examiner proposes to have added must, apart from the 
question of priority under 35 U.S.C. 102(g), be patentable 
to the reissue applicant, and be drawn to patentable 
subject matter claimed by another applicant or 
patentee.

REISSUE APPLICATION FILED WHILE 
PATENT IS IN INTERFERENCE

If a reissue application is filed while the original 
patent is in an interference proceeding, the reissue 
applicant must promptly notify the Board of Patent 
Appeals and Interferences of the filing of the reissue 
application within 20 days from the filing date. See 37 
CFR 41.8 and MPEP Chapter 2300.

==1450 Restriction and Election of Species Made in Reissue Application==

37 CFR 1.176. Examination of reissue.

(a)A reissue application will be examined in the same manner 
as a non-reissue, non-provisional application, and will be subject 
to all the requirements of the rules related to non-reissue 
applications. Applications for reissue will be acted on by the 
examiner in advance of other applications.

(b)Restriction between subject matter of the original patent 
claims and previously unclaimed subject matter may be required 
(restriction involving only subject matter of the original patent 
claims will not be required). If restriction is required, the subject 
matter of the original patent claims will be held to be constructively 
elected unless a disclaimer of all the patent claims is filed in 
the reissue application, which disclaimer cannot be withdrawn by 
applicant.

37 CFR 1.176(b) permits the examiner to require 
restriction in a reissue application between claims 
newly added in a reissue application and the original 
patent claims, where the added claims are directed to 
an invention which is separate and distinct from the 
invention(s) defined by the original patent claims. The 
criteria for making a restriction requirement in a reissue 
application between the newly added claims and 
the original claims are the same as that applied in a 
non-reissue application. See MPEP §§ 806 through 
806.05(i). The authority to make a “restriction” 
requirement under 37 CFR 1.176(b) extends to and 
includes the authority to make an election of species.

Where a restriction requirement is made by the 
examiner, the original patent claims will be held to be 
constructively elected (except for the limited situation 
where a disclaimer is filed as discussed in the next 
paragraph). Thus, the examiner will issue an Office 
action in the reissue application (1) providing notification 
of the restriction requirement, (2) holding the 
added claims to be constructively non-elected and 
withdrawn from consideration,  (3) treating the original 
patent claims on the merits, and (4) informing 
applicant that if the original claims are found allowable, 
and a divisional application has been filed for 
the non-elected claims, further action in the application 
will be suspended, pending resolution of the divisional 
application.. 

If a disclaimer of all the original patent claims is 
filed in the reissue application containing newly 
added claims that are separate and distinct from the 
original patent claims, only the newly added claims 
will be present for examination. In this situation, the 
examiner’s Office action will treat the newly added 
claims in the reissue application on the merits. The 
disclaimer of all the original patent claims must be 
filed in the reissue application prior to the issuance of 
the examiner’s Office action containing the restriction 
requirement, in order for the newly added claims to be 
treated on the merits. Once the examiner has issued 
the Office action providing notification of the restriction 
requirement and treating the patent claims on the 
merits, it is too late to obtain an examination on 
the added claims in the reissue application by filing a 
disclaimer of all the original patent claims. If reissue 
applicant wishes to have the newly added claims be 
treated on the merits, a divisional reissue application 
must be filed to obtain examination of the added 
claims. Reissue applicants should carefully note that 
once a disclaimer of the patent claims is filed, it cannot 
be withdrawn. It does not matter whether the reissue 
application is still pending, or whether the reissue 
application has been abandoned or issued as a reissue 
patent. For all these situations, 37 CFR 1.176(b) states 
that the disclaimer cannot be withdrawn; the disclaimer 
will be given effect.

Claims elected pursuant to a restriction requirement 
will receive a complete examination on the merits, 
while the non-elected claims (to any added invention(s)) will be held in abeyance in a withdrawn status, 
and will only be examined if filed in a divisional 
reissue application. If the reissue application containing 
only original unamended claims becomes allowable 
first (and no “error” under 35 U.S.C. 251exists),
 
further action in that reissue application will 
be suspended to await examination in the divisional 
reissue application(s) containing the added claims. 
Multiple suspensions (usually six-month periods) 
may be necessary. The Office will not  permit
claims to issue in a reissue application which 
application does not correct any error in the original 
patent. Once a divisional reissue application containing 
the added claims is examined and becomes 
allowable,  the examiner will issue a requirement 
under 37 CFR 1.177(c) for applicant to merge the 
claims of the suspended first reissue application with 
the allowable claims of the divisional reissue application 
into a single application, by placing all of the 
claims in one of the applications and expressly abandoning 
the other. The Office action making this 
requirement will set a two-month period for compliance 
with the requirement. If applicant fails to timely 
respond to the Office action, or otherwise refuses to 
comply with the requirement made, then the divisional 
reissue application (claiming the invention 
which was non-elected in the now-suspended first 
reissue application) will be passed to issue alone, 
since the claims of the divisional reissue application, 
by themselves, do correct an error in the original 
patent. Prosecution will be reopened in the suspended 
first reissue application, and a rejection based on a 
lack of error under 35 
U.S.C. 251 will then be made. 
This rejection may be made final, since applicant is on 
notice of the consequences of not complying with the 
merger requirement.

If the divisional reissue application becomes abandoned, 
prosecution will be reopened in the suspended 
first reissue application, and a rejection based on a 
lack of error under 35 U.S.C. 251 will then be made in 
the first reissue application. Since no error in the original 
patent is being corrected in the first reissue application, 
no reissue patent will issue.

As stated in 37 CFR 1.176(b), the examiner is not 
permitted to require restriction among original 
claims of the patent (i.e., among claims that were in 
the patent prior to filing the reissue application). Even 
where the original patent contains claims to different 
inventions which the examiner considers independent 
or distinct, and the reissue application claims the same 
inventions, a restriction requirement would be 
improper. If such a restriction requirement is made, it 
must be withdrawn.

Restriction between multiple inventions recited in 
the newly added claims will be permitted provided 
the added claims are drawn to several separate and 
distinct inventions. In such a situation, the original 
patent claims would be examined in the first reissue 
application, and applicant is permitted to file a divisional 
reissue application for each of the several separate 
and distinct inventions identified in the 
examiner’s restriction requirement.

A situation will sometimes arise where the examiner 
makes an election of species requirement 
between the species claimed in the original patent 
claims and a species of claims added in the reissue 
application. In such a situation, if (1) the non-elected 
claims to the added species depend from (or otherwise 
include all limitations of) a generic claim which 
embraces all species claims, and (2) the generic claim 
is found allowable, then the non-elected claims of the 
added species must be rejoined with the elected 
claims of the original patent. See MPEP § 
821.04(a). 

==1451 Divisional Reissue Applications;Continuation Reissue Applications Where the Parent is Pending==

35 U.S.C. 251. Reissue of defective patents.

The Director may issue several reissued patents for distinct and 
separate parts of the thing patented, upon demand of the applicant, 
and upon payment of the required fee for a reissue for each of 
such reissued patents.

37 CFR 1.177. Issuance of multiple reissue patents.

(a)The Office may reissue a patent as multiple reissue patents. 
If applicant files more than one application for the reissue of 
a single patent, each such application must contain or be amended 
to contain in the first sentence of the specification a notice stating 
that more than one reissue application has been filed and identifying 
each of the reissue applications by relationship, application 
number and filing date. The Office may correct by certificate of 
correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.

(b)If applicant files more than one application for the reissue 
of a single patent, each claim of the patent being reissued must 
be presented in each of the reissue applications as an amended, 
unamended, or canceled (shown in brackets) claim, with each 
such claim bearing the same number as in the patent being reissued. 
The same claim of the patent being reissued may not be presented 
in its original unamended form for examination in more 
than one of such multiple reissue applications. The numbering of 
any added claims in any of the multiple reissue applications must 
follow the number of the highest numbered original patent claim.

(c)If any one of the several reissue applications by itself 
fails to correct an error in the original patent as required by 35 
U.S.C. 251 but is otherwise in condition for allowance, the Office 
may suspend action in 
the allowable application until all issues 
are resolved as to at least one of the remaining reissue applications. 
The Office may also merge two or more of the multiple reissue 
applications into a single reissue application. No reissue 
application containing only unamended patent claims and not correcting 
an error in the original patent will be passed to issue by 
itself.

The court in In re Graff, 111 F.3d 874, 876-77, 
42 USPQ2d 1471, 1473 (Fed. Cir. 1997) stated that 
“[t]he statute does not prohibit divisional or continuation 
reissue applications, and does not place stricter 
limitations on such applications when they are presented 
by reissue, provided of course that the statutory 
requirements specific to reissue applications are met.” 
Following the decision in Graff, the Office has 
adopted a policy of treating continuations and divisionals 
of reissue applications, to the extent possible, 
in the same manner as continuations and divisionals 
of non-reissue applications.

Questions relating to the propriety of divisional 
reissue applications and continuation reissue applications 
should be referred via the Technology Center 
(TC) Special Program Examiner to the Office of 
Patent Legal Administration. 

I. DIVISIONAL REISSUE APPLICATIONS

37 CFR 1.176(b) permits the examiner to require 
restriction in a reissue application between the original 
claims of the patent and any newly added claims 
which are directed to a separate and distinct invention(
s). See also MPEP § 1450. As a result of such a 
restriction requirement, divisional applications may 
be filed for each of the inventions identified in the 
restriction requirement. 

In addition, applicant may initiate a division of the 
claims by filing more than one reissue application in 
accordance with 37 CFR 1.177. The multiple reissue 
applications which are filed may contain different 
groups of claims from among the original patent 
claims, or some of the reissue applications may contain 
newly added groups (not present in the original 
patent). There is no requirement that the claims of the 
multiple reissue applications be independent and distinct 
from one another; if they are not independent 
and distinct from one another, the examiner must 
apply the appropriate double patenting rejections.

There is no requirement that a family of divisional 
reissue applications issue at the same time; however, 
it is required that they contain a cross reference to 
each other in the specification. 37 CFR 1.177(a)
requires that all multiple reissue applications resulting 
from a single patent must include as the first sentence 
of their respective specifications a cross reference to 
the other reissue application(s). Accordingly, the first 
sentence of each reissue specification must provide 
notice stating that more than one reissue application 
has been filed, and it must identify each of the reissue 
applications and their relationship within the family 
of reissue applications, and to the original patent. An 
example of the suggested language to be inserted is as 
follows:

Notice: More than one reissue application has 
been filed for the reissue of Patent No. 9,999,999. The 
reissue applications are application numbers 09/
999,994 (the present application), 09/999,995, and 09/
999,998, all of which are divisional reissues of Patent 
No. 9,999,999. 

The examiner should object to the specification 
and require an appropriate amendment if applicant 
fails to include such a cross reference to the other reissue 
applications in the first sentence of the specification 
of each of the reissue applications.

In addition to the amendment to the first sentence 
of the specification, the reissue application cross references 
will also be reflected in the file. For an 
IFW reissue application file, a copy of the bibliographic 
data sheet from the IFW file history should be 
printed and the examiner should annotate the printed 
sheet such that adequate notice is provided that more 
than one reissue application has been filed for a single 
original patent. The annotated sheet should be 
scanned into IFW. For reissue application files that are 
maintained in paper, the bibliographic data sheet 
should be reprinted (for 09/ and later series), or 
the front face of the reissue file wrapper should be 
marked (for 08/ and earlier series), for all the multiple 
reissue applications, so that adequate notice is provided 
that more than one reissue application has been 
filed for a single original patent. 

Pursuant to 37 CFR 1.177(b) all of the claims of the 
patent to be reissued must be presented in each reissue 
application in some form, i.e., as amended, as 
unamended or as canceled. Further,  any added 
claims must be numbered beginning with the next 
highest number following the last patent claim. It is 
noted that the same claim of the patent cannot be presented 
for examination in more than one of the divisional 
reissue applications, as a pending claim, in 
either its original or amended versions. Once a claim 
in the patent has been reissued, it does not exist in the 
original patent; thus, it cannot be reissued from the 
original patent in another reissue application. If the 
same claim of the patent, e.g., patent claim 1 is presented 
for examination in more than one of the reissue 
applications, in different amended versions, the following 
rejections should be made in the reissue applications 
with that patent claim:

A rejection under 35 U.S.C. 251, in that the reissue 
application is not correcting an error in the original 
patent, because original claim 1 would be superseded 
by the reissuance of claim 1 in the other reissue application.

A rejection under 35 U.S.C. 112, in that claim 1 is 
indefinite because the invention of claim 1 is not particularly 
pointed out and distinctly claimed. Claim 1 
presents one coverage in divisional reissue application 
X and another in the present reissue application. This 
is inconsistent.

The reissue applicant should then be advised to follow 
a procedure similar to the following example:

If there are patent claims 1 – 10 in two divisional 
reissue applications and an applicant wishes to revise 
claim 1, which is directed to AB (for example) to 
ABC in one divisional reissue application, and to 
ABD in a second divisional reissue application, applicant 
should do the following: Claim 1 in the first divisional 
reissue application can be revised to recite 
ABC. Claim 1 in the second divisional reissue application 
would be canceled, and new claim 11 would be 
added to recite ABD. The physical cancellation of 
claim 1 in the second divisional reissue application 
will not prejudice applicant’s rights in the amended 
version of claim 1 since those rights are retained via 
the first reissue application. Claim 1 continues to exist 
in the first reissue application, and both the first and 
second reissue applications taken together make up 
the totality of the correction of the original patent.

If the same or similar claims are presented in more 
than one of the multiple reissue applications, the possibility 
of statutory double patenting (35 U.S.C. 101) 
or non-statutory (judicially created doctrine) double 
patenting should be considered by the examiner during 
examination, and the appropriate rejections made. 
A terminal disclaimer may be filed to overcome an 
obviousness type double patenting rejection. The terminal 
disclaimer is necessary in order to ensure common 
ownership of the reissue patents throughout the 
remainder of the unexpired term of the original patent. 
Whenever a divisional reissue application is filed with 
a copy of the oath/declaration and assignee consent 
from the parent reissue application, the copy of the 
assignee consent from the parent reissue application 
should not be accepted. The copy of the consent from 
the parent reissue application does not indicate that 
the assignee has consented to the addition of the new 
invention of the divisional reissue application to the 
original patent. The Office of Initial Patent Examination 
(OIPE) should accord a filing date and send out a 
notice of missing parts stating that there is no proper 
consent and setting a period of time for filing the 
missing part and for payment of any surcharge 
required under 37 CFR 1.53(f) and 1.16(f). See 
MPEP § 1410.01. The copy of the reissue oath/declaration 
should be accepted by OIPE, since it is an oath/
declaration, even though it may be improper under 
35 U.S.C. 251. The examiner should check the copy 
of the oath/declaration to ensure that it identifies an 
error being corrected by the divisional reissue application. 
The copy of the oath/declaration from the parent 
reissue application may or may not cover the error 
being corrected by the divisional reissue application 
since the divisional reissue application is (by definition) 
directed to a new invention. If it does not, the 
examiner should reject the claims of the divisional 
reissue application under 35 U.S.C. 251 as being 
based on an oath/declaration that does not identify an 
error being corrected by the divisional reissue application, 
and require a new oath/declaration. See MPEP § 
1414. If the copy of the reissue oath/declaration from 
the parent reissue application does in fact cover an 
error being corrected in the divisional reissue application, 
no such rejection should be made. However, 
since a new invention is being added by the filing of 
the divisional reissue application, a supplemental reissue 
oath/declaration pursuant to 37 CFR 1.175 (b)(1) 
will be required. See MPEP § 1414.01.

Situations yielding divisional reissues occur infrequently 
and usually involve only two such files. It 
should be noted, however, that in rare instances in the 
past, there have been more than two (and as many as 
five) divisional reissues of a 
patent. For treatment of a 
plurality of divisional reissue applications resulting 
from a requirement to restrict to distinct inventions or 
a requirement to elect species, see MPEP § 1450.

II. CONTINUATION REISSUE APPLI-
CATIONS

A continuation of a reissue is not ordinarily filed 
“for distinct and separate parts of the thing patented” 
as called for in the second paragraph of 35 U.S.C. 
251. The decision of In re Graff, 111 F.3d 874, 
42 USPQ2d 1471 (Fed. Cir. 1997) interprets 
35 U.S.C. 251 to permit multiple reissue patents to 
issue even where the multiple reissue patents are not 
for “distinct and separate parts of the thing patented.” 
The court stated:

Section 251[2] is plainly intended as enabling, not as limiting. 
Section 251[2] has the effect of assuring that a different 
burden is not placed on divisional or continuation 
reissue applications, compared with divisions and continuations 
of original applications, by codifying the Supreme 
Court decision which recognized that more than one 
patent can result from a reissue proceeding. Thus § 251[2] 
places no greater burden on Mr. Graff’s continuation reissue 
application than upon a continuation of an original 
application; § 251[2] neither overrides, enlarges, nor limits the statement in § 251[3] that the provisions of Title 5 apply to reissues.

111 F.3d at 877, 42 USPQ2d at 1473. Accordingly, 
prosecution of a continuation of a reissue application 
will be permitted (despite the existence of the pending 
parent reissue application) where the continuation 
complies with the rules for reissue.

The parent and the continuation reissue applications 
should be examined together if possible. In 
order that the parent-continuation relationship of the 
reissue applications be specifically identified and 
notice be provided of both reissue applications for 
both the parent and the continuation reissue applications, 
the following is done: 

(A) An appropriate amendment to the continuing 
data entries must be made to the first sentence of 
the specification, (see the discussion above under the 
heading “Divisional Reissue Applications”).

(B)For an IFW reissue application file, a copy of 
the bibliographic data sheet from the IFW file history 
should be printed and the examiner should annotate 
the printed sheet such that adequate notice is provided 
that more than one reissue application has been filed 
for a single original patent. The annotated sheet 
should be scanned into IFW. For reissue application 
files that are maintained in paper, the bibliographic 
data sheet should be reprinted (for 09/ and later 
series), or the front face of the reissue file wrapper 
should be marked (for 08/ and earlier series), for all 
the multiple reissue applications, so that adequate 
notice is provided that more than one reissue application 
has been filed for a single original patent.

As is true for the case of multiple divisional reissue 
applications, all of the claims of the patent to be reissued 
must be presented in both the parent reissue 
application and the continuation reissue application in 
some form, i.e., as amended, as unamended, or as canceled. 
The same claim of the patent cannot, however 
be presented for examination in both the parent reissue 
application and the continuation reissue application, 
as a pending claim, in either its original or 
amended versions. See the discussion in subsection I. 
above for treatment of this situation. Further, any 
added claims must be numbered beginning with the 
next highest number following the past patent 
claims.

Where the parent reissue application issues prior to 
the examination of the continuation, the claims of the 
continuation should be carefully reviewed for double 
patenting over the claims of the parent. Where the 
parent and the continuation reissue applications are 
examined together, a provisional double patenting 
rejection should be made in both cases as to any overlapping 
claims. See MPEP § 804 - §
 
804.04 as to double 
patenting rejections. Any terminal disclaimer filed 
to obviate an obviousness-type double patenting 
rejection ensures common ownership of the reissue 
patents throughout the remainder of the unexpired 
term of the original patent.

If the parent reissue application issues without any 
cross reference to the continuation, amendment of the 
parent 
reissue patent to include a cross-reference to 
the continuation must be effected at the time of allowance 
of the continuation application by Certificate of 
Correction. See the discussion above under the heading 
“Divisional Reissue Applications” as to how the 
Certificate of Correction is to be provided.

Again, the examiner should make reference in the 
pending divisional reissue application to the fact that 
an actual request for a Certificate of Correction has 
been generated in the first reissue patent pursuant to 
37 CFR 1.177(a), e.g., by an entry in the search notes 
or in an examiner’s amendment.

Where a continuation reissue application is filed 
with a copy of the oath/declaration and assignee consent 
from the parent reissue application, and the parent 
reissue application is not to be abandoned, the 
copy of the consent of the parent reissue application 
should not be accepted. The copy of the consent of the 
parent reissue application does not indicate that the 
assignee has consented to the addition of the new 
error correction of the continuation reissue application 
to the original patent. Presumably, a new correction 
has been added, since the parent reissue 
application is still pending. OIPE should accord a filing 
date and send out a notice of missing parts stating 
that there is no proper consent and setting a period of 
time for filing the missing part and for payment of any 
surcharge required under 37 CFR 1.53(f) and 
1.16(f). See MPEP § 1410.01. The copy of the 
reissue oath/declaration should be accepted by OIPE, 
since it is a oath/declaration, albeit improper under 
35 U.S.C. 251. The examiner should reject the claims 
of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration 
that does not identify an error being corrected by the 
continuation reissue application, and should require a 
new oath/declaration. See 37 CFR 1.175(e). One of 
form paragraphs 14.01.01 through 14.01.03 may be 
used. See MPEP § 1414.

Where a continuation reissue application is filed 
with a copy of the oath/declaration and assignee consent 
from the parent reissue application, and the parent 
reissue application is, or will be abandoned, the 
copy of the consent should be accepted by both OIPE 
and the examiner. The reissue oath/declaration should 
be accepted by OIPE, and the examiner should check 
to ensure that the oath/declaration identifies an error 
that is being corrected in the continuation reissue 
application. See MPEP § 1414. If a preliminary 
amendment was filed with the continuation reissue 
application, the examiner should check for the need of 
a supplemental reissue oath/declaration. Pursuant to 
37 CFR 1.175 (b)(1), for any error corrected via the 
preliminary amendment which is not covered by the 
oath or declaration submitted in the parent reissue 
application, applicant must submit a supplemental 
oath/declaration stating that every such error arose 
without any deceptive intention on the part of the 
applicant. See MPEP § 1414 and § 1414.01. 

==1452 Request for Continued Examination of Reissue Application==

A request for continued examination (RCE) under 
37 CFR 1.114 is available for a reissue application. 
Effective May 29, 2000, an applicant in a reissue 
application may file a request for continued examination 
of the reissue application, if the reissue application 
was filed on or after June 8, 1995. This applies 
even where the application, which resulted in the original 
patent, was filed prior to June 8, 1995.

An RCE continues the prosecution of the existing 
reissue application and is not a filing of a new reissue 
application. Thus, the filing of an RCE will not be 
announced in the Official Gazette. Additionally, if a 
reissue application is merged with a reexamination 
proceeding (see MPEP § 1449.01), the filing of an 
RCE will not dissolve the merger, since the reissue 
application does not become abandoned.

==1453 Amendments to Reissue Applications==

37 CFR 1.121. Manner of making amendments in 
application.

(i)Amendments in reissue applications. Any amendment to 
the description and claims in reissue applications must be made in 
accordance with § 1.173.

37 CFR 1.173. Reissue specification, drawings, and 
amendments.

(b)Making amendments in a reissue application. An amendment 
in a reissue application is made either by physically incorporating 
the changes into the specification when the application is 
filed, or by a separate amendment paper. If amendment is made by 
incorporation, markings pursuant to paragraph (d) of this section 
must be used. If amendment is made by an amendment paper, the 
paper must direct that specified changes be made, as follows:

(1)Specification other than the claims. Changes to the 
specification, other than to the claims, must be made by submission 
of the entire text of an added or rewritten paragraph, including 
markings pursuant to paragraph (d) of this section, except that 
an entire paragraph may be deleted by a statement deleting the 
paragraph without presentation of the text of the paragraph. The 
precise point in the specification must be identified where any 
added or rewritten paragraph is located. This paragraph applies 
whether the amendment is submitted on paper or compact disc 
(see §§ 1.52(e)(1) and 1.821(c), but not for discs submitted under 
§ 1.821(e)).

(2)Claims. An amendment paper must include the entire 
text of each claim being changed by such amendment paper and of 
each claim being added by such amendment paper. For any claim 
changed by the amendment paper, a parenthetical expression 
“amended,” “twice amended,” etc., should follow the claim number. 
Each changed patent claim and each added claim must 
include markings pursuant to paragraph (d) of this section, except 
that a patent claim or added claim should be canceled by a statement 
canceling the claim without presentation of the text of the 
claim.

(3)Drawings. One or more patent drawings shall be 
amended in the following manner: Any changes to a patent drawing 
must be submitted as a replacement sheet of drawings which 
shall be an attachment to the amendment document. Any replacement 
sheet of drawings must be in compliance with § 1.84 and 
shall include all of the figures appearing on the original version of 
the sheet, even if only one figure is amended. Amended figures 
must be identified as “Amended,” and any added figure must be 
identified as “New.” In the event that a figure is canceled, the figure 
must be surrounded by brackets and identified as “Canceled.” 
All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the 
amendment to the drawings. 

(i)A marked-up copy of any amended drawing figure, 
including annotations indicating the changes made, may be 
included. The marked-up copy must be clearly labeled as “Annotated 
Marked-up Drawings” and must be presented in the amendment 
or remarks section that explains the change to the drawings. 

(ii)A marked-up copy of any amended drawing figure, 
including annotations indicating the changes made, must be 
provided when required by the examiner.

(c)Status of claims and support for claim changes. Whenever 
there is an amendment to the claims pursuant to paragraph 
(b) of this section, there must also be supplied, on pages separate 
from the pages containing the changes, the status (i.e., pending or 
canceled), as of the date of the amendment, of all patent claims 
and of all added claims, and an explanation of the support in the 
disclosure of the patent for the changes made to the claims.

(d)Changes shown by markings. Any changes relative to the 
patent being reissued which are made to the specification, including 
the claims, upon filing, or by an amendment paper in the reissue 
application, must include the following markings:

(1)The matter to be omitted by reissue must be enclosed 
in brackets; and

(2)The matter to be added by reissue must be underlined, 
except for amendments submitted on compact discs (§§ 1.96 and 
1.821(c)). Matter added by reissue on compact discs must be preceded 
with “U” and end with “/U” to properly identify the 
material being added.

(e)Numbering of patent claims preserved. Patent claims 
may not be renumbered. The numbering of any claim added in the 
reissue application must follow the number of the highest numbered 
patent claim.

(f)Amendment of disclosure may be required. The disclosure 
must be amended, when required by the Office, to correct 
inaccuracies of description and definition, and to secure substantial 
correspondence between the claims, the remainder of the specification, 
and the drawings.

(g)Amendments made relative to the patent. All amendments 
must be made relative to the patent specification, including 
the claims, and drawings, which are in effect as of the date of filing 
of the reissue application.

The provisions of 37 CFR 1.173(b)-(g) and those of 
37 CFR 1.121(i) apply to amendments in reissue 
applications. Any amendments submitted in a reissue 
application must comply with 37 CFR 1.173(b).

Amendments submitted in a reissue application, 
including preliminary amendments (i.e., amendments 
filed as a separate paper to accompany the filing of a 
reissue application), must comply with the practice 
outlined below in this section; however, for examiner’s 
amendments to the specification and claims, 
37 
CFR 1.121(g) provides certain exceptions to that 
practice in the interest of expediting prosecution. The 
exceptions set forth in 37 CFR 1.121(g) also apply in 
reissue applications. 

Pursuant to 37 CFR 1.173(a), no amendment in a 
reissue application may enlarge the scope of the 
claims, unless “applied for within two years from the 
grant of the original patent.” Further, the amendment 
may not introduce new matter. See MPEP § 1412.03for further discussion as to the time limitation on 
enlarging the scope of the patent claims in a reissue 
application. 

All amendment changes must be made relative to 
the patent to be reissued. Pursuant to 37 CFR 
1.173(d), any such changes which are made to the 
specification, including the claims, must be shown by 
employing the following “markings:”

(A)The matter to be omitted by reissue must be 
enclosed in brackets; and

(B)The matter to be added by reissue must be 
underlined, except for amendments submitted on 
compact discs (pursuant to 37 CFR 1.96 for computer 
printouts or programs, and 37 CFR 1.825 for 
sequence listings). Matter added by reissue on compact 
discs must be preceded with “U” and end with 
“/U” to properly identify the material being added.

I.THE SPECIFICATION

37 CFR 1.173(b)(1) relates to the manner of making 
amendments to the specification other than the 
claims. It is not to be used for making amendments to 
the claims or the drawings. 

All amendments which include any deletions or 
additions must be made by submission of the entire 
text of each added or rewritten paragraph with markings 
(as defined above), except that an entire paragraph 
of specification text may be deleted by a 
statement deleting the paragraph without presentation 
of the text of the paragraph. Applicant must indicate 
the precise point where each amendment is made. All 
bracketing and underlining is made in comparison to 
the original patent, not in comparison to any prior 
amendment in the reissue application. Thus, all paragraphs 
which are newly added to the specification of 
the original patent must be submitted as completely 
underlined each time they are re-submitted in the reissue 
application. 

II.THE CLAIMS

37 CFR 1.173(b)(2) relates to the manner of making 
amendments to the claims in reissue applications. 
It is not to be used for making amendments to the 
remainder of the specification or to the drawings. 37 
CFR 1.173(b)(2) requires that:

(A)For each claim that is being amended by the 
amendment being submitted (the current amendment), 
the entire text of the claim must be presented with 
markings as defined above;

(B)For each new claim added to the reissue by 
the amendment being submitted (the current amendment), 
the entire text of the added claim must be presented 
completely underlined;

(C)A patent claim should be canceled by a direction 
to cancel that claim, there is no need to present 
the patent claim surrounded by brackets; and

(D)A new claim (previously added in the reissue) 
should be canceled by a direction to cancel that claim.

Original patent claims are never to be renumbered; 
see 37 CFR 1.173(e). A patent claim retains its number 
even if it is canceled in the reissue proceeding, 
and the numbering of any added claims must begin 
after the last original patent claim. 

Pursuant to 37 CFR 1.173(c), each amendment submitted 
must set forth the status of all patent claims 
and all added claims as of the date of the submission. 
The status to be set forth is whether the claim is pending 
or canceled. The failure to submit the claim status 
will generally result in a notification to applicant that 
the amendment prior to final rejection is not completely 
responsive (see 37 CFR 1.135(c)). Such an 
amendment after final rejection will not be entered.

Also pursuant to 37 CFR 1.173(c), each claim 
amendment must be accompanied by an explanation 
of the support in the disclosure of the patent for the 
amendment (i.e., support for all changes made in the 
claim(s), whether insertions or deletions). The failure 
to submit an explanation will generally result in a 
notification to applicant that the amendment prior to 
final rejection is not completely responsive (see 
37 
CFR 1.135(c)). Such an amendment after final 
rejection will not be entered.

III.THE DRAWINGS

37 CFR 1.173(a)(2) states that amendments to the 
original patent drawings are not permitted, and that 
any change to the drawings must be by way of 
37 
CFR 1.173(b)(3). See MPEP § 1413 for the manner 
of making amendments to the drawings in a reissue 
application.

Form paragraph 14.20.01 may be used to advise 
applicant of the proper manner of making amendments 
in a reissue application.



¶ 14.20.01 Amendments To Reissue-37 CFR 1.173(b)

Applicant is notified that any subsequent amendment to the 
specification and/or claims must comply with 37 CFR 1.173(b). 
In addition, when any substantive amendment is filed in the reissue 
application, which amendment otherwise places the reissue 
application in condition for allowance, a supplemental oath/declaration 
will be required. See MPEP § 1414.01.

Examiner Note:

This form paragraph may be used in the first Office action to 
advise applicant of the proper manner of making amendments, 
and to notify applicant of the need to file a supplemental oath/declaration 
before the application can be allowed.



Form paragraph 14.21.01 may be used to notify 
applicant that proposed amendments filed prior to 
final rejection in the reissue application do not comply 
with 37 CFR 1.173(b).

¶ 14.21.01 Improper Amendment To Reissue - 37 CFR 
1.173(b)

The amendment filed [1] proposes amendments to [2] that do 
not comply with 37 CFR 1.173(b), which sets forth the manner of 
making amendments in reissue applications. A supplemental 
paper correctly amending the reissue application is required. 

A shortened statutory period for reply to this letter is set to 
expire ONE MONTH or THIRTY DAYS, whichever is longer, 
from the mailing date of this letter.

Examiner Note:

1.This form paragraph may be used for any 37 CFR 1.173(b)
informality as to an amendment submitted in a reissue application 
prior to final rejection. After final rejection, applicant should be 
informed that the amendment will not be entered by way of an 
Advisory Office action.

2.In bracket 2, specify the proposed amendments that are not in 
compliance.

Note that if an informal amendment is submitted 
after final rejection, form paragraph 14.21.01 should 
not be used. Rather, an advisory Office action should 
be issued using Form PTO-303 indicating that the 
amendment was not entered because it does not comply 
with 37 CFR 1.173(b), which sets forth the manner 
of making amendments in reissue applications.




 

IV.ALL CHANGES ARE MADE VIS-À-VISTHE PATENT TO BE REISSUED

When a reissue patent is printed, all underlined 
matter is printed in italics and all brackets are printed 
as inserted in the application, in order to show exactly 
which additions and deletions have been made to 
the 
patent being reissued. Therefore, all underlining 
and bracketing in the reissue application should be 
made relative to the text of the patent, as follows. In 
accordance with 37 CFR 1.173(g), all amendments in 
the reissue application must be made relative to (i.e., 
vis-à-vis) the patent specification in effect as of the 
date of the filing of the reissue application. The patent 
specification includes the claims and drawings. If 
there was a prior change to the patent (made via a 
prior concluded reexamination certificate, reissue of 
the patent, certificate of correction, etc.), the first 
amendment of the subject reissue application must be 
made relative to the patent specification as changed 
by the prior proceeding or other mechanism for 
changing the patent. All amendments subsequent to 
the first amendment must also be made relative to the 
patent specification in effect as of the date of the filing 
of the reissue application, and not relative to the prior 
amendment.

The Subject Patent Already Has Underlining or 
Bracketing

If the original (or previously changed) patent 
includes a formula or equation already having underlining 
or bracketing therein as part of the formula or 
equation, any amendment of such formula or equation 
should be made by bracketing the entire formula and 
rewriting and totally underlining the amended formula 
in the re-presented paragraph of the specification or 
rewritten claim in which the changed formula or 
equation appears. Amendments of segments of a formula 
or equation should not be made. If the original 
patent includes bracketing and underlining from an 
earlier reexamination or reissue, double brackets and 
double underlining should be used in the subject reissue 
application to identify and distinguish the present 
changes being made. The subject reissue, when 
printed, would include double brackets (indicating 
deletions made in the subject reissue) and boldface 
type (indicating material added in the subject reissue).

V.EXAMPLES OF PROPER AMENDMENTS

A substantial number of problems arise in the 
Office because of improper submission of amendments 
in reissue applications. The following examples 
are provided to assist in preparation of proper amendments 
to reissue applications.

A.Original Patent Description or Patent Claim 
Amended

Example (1)

If it is desired to change the specification at column 
4 line 23, to replace “is” with --are--, submit a 
copy of the entire paragraph of specification of the 
patent being amended with underlining and bracketing, 
and point out where the paragraph is located, 
e.g.,

Replace the paragraph beginning at column 4, line 23 
with the following: 

Scanning [is] are controlled by clocks which are, in turn, 
controlled from the display tube line synchronization. The 
signals resulting from scanning the scope of the character 
are delivered in parallel, then converted into serial mode 
through a shift register wherein the shift signal frequency is 
controlled by a clock that is, in turn, controlled from the display 
tube line synchronization.

Example (2)

For changes to the claims, one must submit a copy 
of the entire patent claim with the amendments 
shown by underlining and bracketing, e.g.,

Amend claim 6 as follows:

Claim 6 (Amended). The apparatus of claim [5] 1 wherein 
the [first] second piezoelectric element is parallel to the 
[second] third piezoelectric element.

If the dependency of any original patent claim is to 
be changed by amendment, it is proper to make 
that original patent claim dependent upon a later 
filed higher numbered claim.

B.Cancellation of Claim(s)

Example (3)

To cancel an original patent claim, in writing, 
direct cancellation of the patent claim, e.g.,

Cancel claim 6.




 

Example (4)

To cancel a new claim (previously added in the 
reissue), in writing, direct cancellation of the new 
claim, e.g.,

Cancel claim 15.

C.Presentation of New Claims

Example (5) 

Each new claim (i.e., a claim not found in the 
patent, that is newly presented in the reissue application) 
should be presented with underlining 
throughout the claim, e.g.,

Add claim 7 as follows:

Claim 7. The apparatus of claim 5 further comprising 
electrodes attaching to said opposite faces of the first and 
second piezoelectric elements.

Even though original claims may have been canceled, 
the numbering of the original claims does 
not change. Accordingly, any added claims are 
numbered beginning with the number next higher 
than the number of claims in the original patent. If 
new claims have been added to the reissue application 
which are later canceled prior to issuance of 
the reissue patent, the examiner will renumber any 
remaining new claims in numerical order to follow 
the number of claims in the original patent.

D.Amendment of New Claims 

An amendment of a “new claim” (i.e., a claim not 
found in the patent, that was previously presented 
in 
the reissue application) must be done by presenting 
the amended “new claim” containing the amendatory 
material, and completely underlining the claim. The 
presentation cannot contain any bracketing or other 
indication of what was in the previous version of 
the 
claim. This is because all changes in the 
reissue 
are 
made vis-à-vis the original patent, and not 
in comparison to the prior amendment. Although the 
presentation of the amended claim does not contain 
any indication of 
what is changed from the previous 
version of the claim,
 
applicant must point out what is 
changed in the “Remarks” portion of the amendment. 
Also, per 37 CFR 1.173(c), each change made in the 
claim must be accompanied by an explanation of the 
support in the disclosure of the patent for the change.

E.Amendment of Original Patent Claims More 
Than Once

The following illustrates proper claim amendment 
of original patent claims in reissue applications: 

 A. Patent claim. 

Claim 1. A cutting means having a handle portion 
and a blade portion.

 B. Proper first amendment format. 

Claim 1 (Amended). A [cutting means] knife having 
a bone handle portion and a notched blade portion.


 C. Proper second amendment format.

Claim 1 (Twice Amended). A [cutting means] 
knife having a handle portion and a serrated blade 
portion.

Note that the second amendment must include the 
changes previously presented in the first amendment, 
i.e., [cutting means] knife, as well as the new changes 
presented in the second amendment, i.e., serrated. 

The word bone was presented in the first amendment 
and is now to be deleted in the second amendment. 
The word “bone” is NOT to be shown in 
brackets in the second amendment. Rather, the word 
“bone” is simply omitted from the claim, since “bone” 
never appeared in the patent. An explanation of the 
deletion should appear in the remarks.

The word notched which was presented in the first 
amendment is replaced by the word serrated in the 
second amendment. The word notched is being 
deleted in the second amendment and did not appear 
in the patent; accordingly, “notched” is not shown in 
any form in the claim. The word serrated is being 
added in the second amendment, and accordingly 
“serrated” is added to the claim and is underlined.

In the second amendment, the deletions of 
“notched” and “bone” are not changes from the original 
patent claim text and therefore are not shown in 
brackets in the second amendment. In both the first 
and the second amendments, the entire claim is presented 
only with the changes from the original patent 
text. 

VI.ADDITIONAL EXAMPLES

(A)For a reissue application, where the patent 
was previously reissued:

As per MPEP § 1411, double underlining and 
double bracketing are used in the second reissue 




 

application to show amendments made relative to the 
first reissued patent

(B)For a reissue application, where the patent 
was previously reexamined and a reexamination certificate 
has issued for the patent:

An amendment in the reissue application must be 
presented as if the changes made to the original patent 
text via the reexamination certificate are a part of the 
original patent. Thus, all italicized text of the reexamination 
certificate is presented in the amendment 
(made in the reissue application) without italics. Further, 
any text found in brackets in the reexamination 
certificate is omitted in the amendment (made in the 
reissue application).

(C)For a reissue application, where a certificate 
of correction has issued for the patent:

An amendment in the reissue application must be 
presented as if the changes made to the original patent 
text via the certificate of correction are a part of the 
original patent. Thus, all text added by certificate of 
correction is presented in the amendment (made in the 
reissue application) without italics. Further, any text 
deleted by certificate of correction is entirely omitted 
in the amendment (made in the reissue application).

(D)For a reissue application, where a statutory 
disclaimer has issued for the patent:

Any claim statutorily disclaimed is no longer in 
the patent, and such a claim cannot be amended. The 
statutorily disclaimed claim(s) should be lined 
through, and not surrounded by brackets.

==1454 Appeal Brief==

The requirements for an appeal brief are set forth in 
37 CFR 41.37 and MPEP § 1206, and they apply 
to a reissue application in the same manner that they 
apply to a non-reissue application. There is, however, 
a difference in practice as to presentation of the copy 
of the claims in the appeal brief for a reissue application. 
The claims on appeal presented in an appeal 
brief for a reissue application should include all 
underlining and bracketing necessary to reflect the 
changes made to the patent claims during the prosecution 
of the reissue application. In addition, any new 
claims added in the reissue application should be 
completely underlined. 

==1455 Allowance and Issue==

I.ISSUE CLASSIFICATION SHEET

For IFW reissue applications:

The examiner completes the Issue Classification 
sheet in the same manner as for a non-reissue application. 
In addition, a copy of the “Final SPRE Review”
form must also be completed.

For reissue application files that are maintained in 
paper:

In all reissue applications prepared for issue where 
a blue slip is needed (i.e., 08/ and earlier series), the 
patent number of the original patent which is being 
reissued should be placed in the box provided therefor 
below the box for the applicant’s name on the blue 
Issue Classification Slip (form PTO-270) or design 
Issue Classification Slip (form PTO-328). Otherwise, 
the Issue Classification Slip is prepared in the same 
manner as for a non-reissue application. 

II. CHANGES TO THE ORIGINAL 
PATENT

The specifications of reissue patents will be printed 
in such a manner as to show the changes over the 
original patent text by enclosing any material omitted 
by the reissue in heavy brackets [ ] and printing material 
added by the 
reissue in italics. 37 CFR 1.173 (see 
MPEP § 1411) requires the specification of a reissue 
application to be presented in a specified form, specifically 
designed to facilitate this different manner of 
printing, as well as for other reasons. 

The printed reissue patent specification will carry 
the following heading, which will be added by the 
Publishing Division of the Office of Patent Publication:

“Matter enclosed in heavy brackets [ ] appears in the original 
patent but forms no part of this reissue specification; 
matter printed in italics indicates the additions made by 
reissue.”

The examiners should see that the specification is 
in proper form for printing. Examiners should carefully check the entry of all amendments to ensure that 
the changes directed by applicant will be accurately 
printed in any reissue patent that may ultimately issue. 
Matter appearing in the original patent which is omitted 
by reissue should be enclosed in brackets, while 
matter added by reissue should be underlined. 

Any material added by amendment in the reissue 
application (as underlined text) which is later canceled 
should be crossed through, and not bracketed. 
Material cancelled from the original patent should be 
enclosed in brackets, and not lined through.

All the claims of the original patent should appear 
in the reissue patent, with canceled patent claims 
being enclosed in brackets.

III. CLAIM NUMBERING

No renumbering of the original patent claims is permitted, 
even if the dependency of a dependent patent 
claim is changed by reissue so that it is to be dependent 
on a subsequent higher numbered claim.

When a dependent claim in a reissue application 
depends upon a claim which has been canceled, and 
the dependent claim is not thereafter made dependent 
upon a pending claim, such a dependent claim must 
be rewritten in independent form.

New claims added during the prosecution of the 
reissue application should follow the number of the 
highest numbered patent claim and should be completely 
underlined to indicate they are to be printed in 
italics on the printed patent. Often, as a result of the 
prosecution and examination, some new claims are 
canceled while other new claims remain. When the 
reissue application is allowed, any claims remaining 
which are additional to the patent claims (i.e., claims 
added via the reissue application) should be renumbered 
in sequence starting with the number next 
higher than the number of the last claim in the original 
patent (the printed patent). Therefore, the number of 
claims allowed will not necessarily correspond to the 
number of the last claim in the reissue application, as 
allowed. The number of claims appearing in the 
“Total Claims Allowed” box on the Issue Classification 
sheet (or for reissue application files that are 
maintained in paper, the “CLAIMS ALLOWED - 
Total Claims” box on the lower right of the file wrapper 
face) at the time of allowance should be consistent 
with the number of claims indicated as allowable 
on the Notice of Allowability (Form PTOL-37). 

IV. CLAIM DESIGNATED FOR PRINTING

At least one claim of an allowable reissue application 
must be designated for printing in the Official 
Gazette. Whenever at least one claim has been 
amended or added in the reissue, the claim (claims) 
designated for printing must be (or include) a claim 
which has been changed or added by the reissue. A 
canceled claim is not to be designated as the claim for 
the Official Gazette.

If there is no change in the claims of the allowable 
reissue application (i.e., when they are the same as the 
claims of the original patent) or, if the only change in 
the claims is the cancellation of claims, then the most 
representative pending allowed claim is designated 
for printing in the Official Gazette.

V. PROVIDING PROPER FORMAT

Where a reissue application has not been prepared 
in the above-indicated manner, the examiner may 
obtain from the applicant a clean copy of the reissue 
specification prepared in the indicated form, or a 
proper submission of a previously improperly submitted 
amendment. However, if the deletions from the 
original patent are small, the reissue application can 
be prepared for issue by putting the bracketed inserts 
at the appropriate places and suitably numbering the 
added claims. 

When applicant submits a clean copy of the reissue 
specification, or a proper submission of a previous 
improper amendment, a supplemental reissue declaration 
should not be provided to address this submission, 
because the correction of format does not correct 
a 35 U.S.C. 251 error in the patent. 

VI. PARENT APPLICATION DATA

All parent application data on the bibliographic 
data sheet of the original patent file (or front face of 
the original patent file wrapper if the original patent is 
a paper file) should be present on the bibliographic 
data sheet of the reissue application.

It sometimes happens that the reissue is a continuation 
of another reissue application, and there is also 
original-patent parent application data. The examiner 
should ensure that the parent application data on the 
original patent is properly combined with the parent 
application data of the reissue, in the text of the specification 
and on the bibliographic data sheet (or 
on the front face of the reissue file wrapper for 08/ 
and earlier series applications).  The combined 
statement as to parent application data should be 
checked carefully for proper bracketing and underlining.

VII. REFERENCES CITED AND PRINTED

The list of references to be printed in the reissue 
patent includes all the references cited during the 
prosecution of the reissue application. It is noted that 
the Office will not print in the reissue patent “References 
Cited” section any reference cited in the patent 
but not again cited in the reissue application. A patent 
cannot be reissued solely for the purpose of adding 
citations of additional prior art.

VIII. EXAMINER'S AMENDMENT AND SUP-
PLEMENTAL DECLARATION

When it is necessary to amend the reissue application 
in order to place the application in condition for 
allowance, the examiner may:

(A)request that applicant provide the amendments 
(e.g., by facsimile transmission or by hand-
carry); or 

(B)make the amendments, with the applicant’s 
approval, by a formal examiner’s amendment.

If the changes are made by a formal examiner’s 
amendment, the entire paragraph(s) or claim(s) being 
amended need not be presented in rewritten form for 
any deletions or additions. Changes to the specification 
including the claims of an application made by 
the Office in an examiner’s amendment may be made 
by specific instructions to insert or delete subject matter 
set forth in the examiner’s amendment by identifying 
the precise point in the specification or the 
claim(s) where the insertion or deletion is to be made. 
37 CFR 1.121(g).

If it is necessary to amend a claim or the specification 
in order to correct an “error” under 35 U.S.C. 251and thereby place the application in condition for 
allowance, then a supplemental oath or declaration 
will be required. See MPEP § 1444. The examiner 
should telephone applicant and request the supplemental 
oath or declaration, which must be filed before 
the application can be counted as an allowance.

IX. FINAL REVIEW OF THE REISSUE 
APPLICATION BY THE EXAMINER

Prior to forwarding a reissue application to the 
Technology Center (TC) Special Program Examiner 
(SPRE) for final review, the examiner should complete 
and initial an Examiner Reissue Checklist. A 
copy of the checklist should be available from the 
SPRE or from the Paralegal Specialist of the TC.

==1456 Reissue Review==

All reissue applications are monitored and 
reviewed in the Technology Centers (TCs) by the 
Office of TC Special Program Examiners (which 
includes TC SPREs, paralegals or other technical support 
who might be assigned as backup) at several 
stages during the prosecution. The review by the 
Office of the TC SPREs is made to check that practice 
and procedure unique to reissue has been carried out 
for the reissue application. In addition to the SPRE 
review of the reissue applications, a patentability 
review is made in a sample of reissue applications by 
the TC Quality Assurance Specialist (QAS) in the 
manner previously carried out by the former Office of 
Patent Quality Review. In order to ensure that SPREs 
are aware of the reissue applications in their TCs, a 
pair of terminal-specific PALM flags have been created 
which must be set by the SPRE before certain 
PALM transactions can be completed. First, when a 
new reissue application enters the TC, a SPRE must 
set a PALM “flag” by entering the reissue application 
number in an Office-wide computer grouping before a 
docketing transaction will be accepted. By having to 
set this first flag, the SPRE is made aware of the 
assignment of the reissue application to the TC and 
can take steps, as may be appropriate, to instruct the 
examiner on reissue-specific procedures before the 
examination process begins, as well as throughout the 
period that the examiner is handling the reissue application. 
Second, the SPRE must remove the above-
described PALM “flag” before a Notice of Allowance 
can be generated or the PALM transaction for an issue 
revision can be entered, thereby ensuring that the 
SPRE is made aware of when the reissue application 
is being allowed so that the SPRE may be able to conduct 
a final review of the reissue application, if appropriate.

When the reissue application has been reviewed 
and is ready to be released to issue, the TC SPRE 
should do the following:

== 1457 Design Reissue Applications and Patents==

A reissue application can be filed for a design 
patent in the same manner that a reissue application is 
filed for a utility patent. There are, however, a few 
aspects of a design reissue application that are 
addressed as follows:

I.EXPEDITED EXAMINATION PROCE-
DURE

Design reissue applications requesting expedited 
examination and complying with the requirements of 
37 CFR 1.155 are examined with priority and undergo 
expedited processing throughout the entire course of 
prosecution in the Office, including appeal, if any, to 
the Board of Patent Appeals and Interferences. All 
processing is expedited from the date the request is 
granted.

Design reissue applicants seeking expedited examination 
may file a design reissue application in the 
Office together with a corresponding request under 37 
CFR 1.155 pursuant to the guidelines set forth in 
MPEP § 1504.30.

The design reissue application and the request are 
processed by the Office of Initial Patent Examination 
(OIPE). OIPE enters the appropriate information 
into PALM specifying when notice of the design 
reissue application will be published in the Official 
Gazette (see MPEP § 1441).  After processing in 
OIPE, the design reissue application and the request 
are forwarded to the Design TC Director’s Office. 
Upon a decision by the Design TC Director to grant 
the request for expedited examination, fees are immediately 
processed, and the application papers are 
promptly assigned an application number. The design 
reissue application file is then forwarded to the Office 
of Patent Legal Administration (OPLA) for a decision 
under 37 CFR 1.182 to sua sponte waive the requirement 
for delaying action in the application until 2 
months after announcement of the design reissue 
application filing is published in the Official Gazette(see MPEP § 1441). Once the decision under 37 CFR 
1.182 is mailed, the design reissue application file 
will be returned to the Design TC Director’s Office. In 
accordance with the waiver, the Design Group will 
begin expedited examination of the application under 
37 CFR 1.155 promptly after the return of the design 
reissue application file from OPLA, rather than delay 
examination until after 2 months from the date the 
announcement is published in the Official Gazette and 
the applicant will be notified that examination is 
being expedited. The decision under 37 CFR 1.182will require that no Notice of Allowance be mailed in 
the design reissue application until after 2 months 
from the date the announcement is published in the 
Official Gazette. For example, if the design reissue 




 

application is allowed on the first Office action, then 
jurisdiction over the reissue application will be 
retained in the TC, and the Notice of Allowance 
will not be mailed until the expiration of 2 months 
after publication of the filing of the design reissue 
application in the Official Gazette (plus time for 
matching any protest filed with the application). (For 
IFW processing, see IFW Manual.) The examiner will 
check  the PALM contents to ascertain when publication 
actually occurred. The delay in the mailing of 
the Notice of Allowance is to ensure that any potential 
protests complying with 37 CFR 1.291 submitted 
within the 2-month delay period will be considered by 
the Office. (see MPEP § 1441.01).

The expedited examination procedure under 
37 
CFR 1.155 occurs through initial examination processing 
and throughout the entire prosecution in the 
Office. Once a request for expedited examination is 
granted, prosecution of the design reissue application 
will proceed according to the procedure under 
37 
CFR 1.155, and there is no provision for “withdrawal” 
from expedited examination procedure.

II.DESIGN REISSUE FEE

The design reissue application fee is set forth for in 
37 CFR 1.16(e). For design reissue applications 
filed on or after December 8, 2004, a search fee 
(37 
CFR 1.16(n)) and an examination fee (37 CFR 
1.16(r)) are also required. The additional fees in 
37 
CFR 1.16(h) and 37 CFR 1.16(i) do not 
apply for a design reissue application since more than 
one claim in not permitted in a design application pursuant 
to the last sentence of 37 CFR 1.153(a).

The fee for issuing a design reissue patent is set 
forth in 37 CFR 1.18(a).

III.MULTIPLE DESIGN REISSUE APPLICATIONS


The design reissue application can be filed based on 
the “error” of failing to include a design for a patentably 
distinct segregable part of the design claimed in 
the original patent or a patentably distinct subcombination 
of the claimed design. A reissue design application 
claiming both the entire article and the 
patentably distinct subcombination or segregable part 
would be proper under 35 U.S.C. 251, if such a reissue 
application is filed within two years of the issuance 
of the design patent, since it is considered a 
broadening of the scope of the patent claim. Restriction 
will be required under 37 CFR 1.176(b) in such a 
reissue design application, and the added design to the 
segregable part or subcombination will be held to be 
constructively non-elected and withdrawn from consideration. 
See MPEP § 1450. In the Office action 
containing the restriction requirement, the examiner 
should suggest to the applicant that a divisional 
design reissue application directed to the constructively 
non-elected segregable part or subcombination 
subject matter may be filed. The claim to the patented 
design for the entire article will then be examined and, 
if found allowable without change from the patent, a 
rejection will be made under 35 U.S.C. 251 based on 
the fact that there is no “error” in the non-amended 
original patent claim. In the Office action making this 
rejection, applicant should be advised that a proper 
response to the rejection must include (A) a request to 
suspend action in this original reissue application 
pending completion of examination of a divisional 
reissue application directed to the constructively non-
elected segregable part or subcombination subject 
matter, (B) the filing of the divisional reissue application, 
or a statement that one has already been filed 
(identifying it at least by application number), and (C) 
an argument that a complete response to the rejection 
has been made based upon the filing of the divisional 
reissue application and the request for suspension. 
Action in the original design reissue application will 
then be suspended, and the divisional will be examined.


If, after examination, the divisional design reissue 
application is also determined to be allowable, a 
requirement must be made in the divisional design 
reissue application to submit a petition under 37 CFR 
1.183 requesting waiver of 37 CFR 1.153 in order to 
permit the rejoining of the designs to the entire article 
(of the original application) and the segregable part or 
subcombination (of the divisional) under a single 
claim into a single design reissue application for issuance, 
the single application being the first design reissue 
application.

It should be noted that the filing of a design reissue 
application would not be proper if applicant did in 
fact include the design for a segregable part or subcombination 
thereof in the original design patent 
application, a restriction was thus made, and then 
applicant failed to file a divisional reissue application 
for a non-elected invention that was canceled in view 
of a restriction requirement (prior to issue of the original 
application. See In re Watkinson, 900 F.2d 230, 
14 
USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 
550 
F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 
1977).

IV.CONVERSION TO UTILITY PATENT

A design patent cannot be converted to a utility 
patent via reissue.

Converting a design patent to a utility patent will, 
in most instances, involve the introduction of new 
matter into the patent. The disclosure of a design 
patent is not directed to how the invention is made 
and used, and the introduction of new matter is 
required to bridge this gap and provide support for the 
utility patent. Accordingly, the examiner should consider 
rejections based on the introduction of new matter 
under 35 U.S.C. 251, first paragraph, and lack of 
enablement and/or description under 35 U.S.C. 112, 
first paragraph, when a reissue application is filed to 
convert a design patent to a utility patent. 

Further, the term of a design patent may not be 
extended by reissue. Ex parte Lawrence, 70 USPQ 
326 (Comm’r Pat. 1946). Thus, any reissue application 
filed to convert a design patent to a utility patent, 
which conversion would thereby extend the term of 
the patent, should be rejected as failing to comply 
with 35 U.S.C. 251, first paragraph, which permits 
reissue only “for the unexpired part of the term of the 
original patent.” The statute requires that the reissued 
patent shall not extend the term of the original patent.

==1460 Effect of Reissue==

35 U.S.C. 252. Effect of reissue.

The surrender of the original patent shall take effect upon the 
issue of the reissued patent, and every reissued patent shall have 
the same effect and operation in law, on the trial of actions for 
causes thereafter arising, as if the same had been originally 
granted in such amended form, but in so far as the claims of the 
original and reissued patents are substantially identical, such surrender 
shall not affect any action then pending nor abate any cause 
of action then existing, and the reissued patent, to the extent that 
its claims are substantially identical with the original patent, shall 
constitute a continuation thereof and have effect continuously 
from the date of the original patent.

A reissued patent shall not abridge or affect the right of any 
person or that person’s successors in business who, prior to the 
grant of a reissue, made, purchased, offered to sell, or used within 
the United States, or imported into the United States, anything patented 
by the reissued patent, to continue the use of, to offer to sell, 
or to sell to others to be used, offered for sale, or sold, the specific 
thing so made, purchased, offered for sale, used, or imported 
unless the making, using, offering for sale, or selling of such thing 
infringes a valid claim of the reissued patent which was in the 
original patent. The court before which such matter is in question 
may provide for the continued manufacture, use, offer for sale, or 
sale of the thing made, purchased, offered for sale, used, or 
imported as specified, or for the manufacture, use, offer for sale, 
or sale in the United States of which substantial preparation was 
made before the grant of the reissue, and the court may also provide 
for the continued practice of any process patented by the reissue 
that is practiced, or for the practice of which substantial 
preparation was made, before the grant of the reissue, to the extent 
and under such terms as the court deems equitable for the protection 
of investments made or business commenced before the grant 
of the reissue.

The effect of the reissue of a patent is stated in 
35 
U.S.C. 252. With respect to the Office treatment of 
the reissued patent, the reissued patent will be viewed 
as if the original patent had been originally granted in 
the amended form provided by the reissue. With 
respect to intervening rights resulting from the reissue 
of an original patent, the second paragraph of 35 
U.S.C. 252 provides for two separate and distinct 
defenses to patent infringement under the doctrine of 
intervening rights:

“Absolute” intervening rights are available for a 
party that “prior to the grant of a reissue, made, purchased, 
offered to sell, or used within the United 
States, or imported into the United States, anything 
patented by the reissued patent,” and “equitable”
intervening rights may be provided where “substantial 
preparation was made before the grant of the reissue.”
See BIC Leisure Prods., Inc., v. Windsurfing Int’l, 
Inc., 1 F.3d 1214, 1220, 27 USPQ2d 1671, 1676 (Fed. 
Cir. 1993).

==1470 Public Access of Reissue Applications==

37 CFR 1.11(b) opens all reissue applications filed 
after March 1, 1977, to inspection by the general public. 
37 CFR 1.11(b) also provides for announcement 
of the filings of reissue applications in the Official 
Gazette (except for continued prosecution applications 
filed under 37 CFR 1.53(d)). This announcement 
will give interested members of the public an 
opportunity to submit to the examiner information 
pertinent to patentability of the reissue application.

The filing of a continued prosecution application 
under 37 CFR 1.53(d) of a reissue application will notbe announced in the Official Gazette. Although the 
filing of a continued prosecution application of a reissue 
application constitutes the filing of a reissue 
application, the announcement of the filing of such 
continued prosecution application would be redundant 
in view of the announcement of the filing of the prior 
reissue application in the Official Gazette.

37 CFR 1.11(b) is applicable to all reissue 
applications filed on or after March 1, 1977. Those 
reissue applications previously on file will not be 
automatically open to inspection but a liberal policy 
will be followed in granting petitions for access to 
such applications. 

IFW reissue application files are open to 
inspection by the general public by way of Public 
PAIR via the USPTO Internet site. In viewing the 
images of the files, members of the public will be able 
to view the entire content of the reissue application 
file history. To access Public PAIR, a member of the 
public would (A) go to the USPTO web site at http://
www.uspto.gov, (B) click on “Patents,” (C) under 
“Check Status, View Papers…” click on “Status & 
IFW,” and (D) under “Patent Application Information 
Retrieval” enter the reissue application number.

Access to a reissue application that is maintained in 
paper must be obtained from the area of the Office 
having jurisdiction over the file. The following access 
procedure will be observed for reissue application 
files that are maintained in paper:

(A)Any member of the general public may 
request access to a particular reissue application filed 
after March 1, 1977. Since no record of such request 
is intended to be kept, an oral request will suffice. 
(Reissue applications already on file prior to March 1, 
1977 are not automatically open to inspection, but a 
liberal policy is followed by the Office of Patent 
Legal Administration (OPLA) and by the Board of 
Patent Appeals and Interferences in granting petitions 
for access to such applications.); 

(B)Paper reissue application files will be maintained 
in the TCs and inspection thereof will be supervised 
by TC personnel. A TC Director or other 
appropriate Office official may, under appropriate circumstances, 
postpone access to or the making of copies 
of a paper reissue application file, in order, for 
example, to avoid interruption of the examination or 
other review of the application by an examiner. In 
addition, though no general limit is placed on the 
amount of time spent reviewing the files, the Office 
may impose limitations, if necessary, e.g., where the 
application is actively being processed;

(C)In any instance where the reissue application 
file has left the TC for administrative processing, 
requests for access should be directed to the appropriate 
supervisory personnel where the application is 
currently located;

(D)A paper reissue application file is not 
available to the public once the reissue application file 
has been released and forwarded by the TC for publication 
of the reissue patent. This would include any 
reissue application files which have been selected for 
a post-allowance screening at OPLA. Unless 
prosecution is reopened pursuant to the screening, the 
reissue application files are not available to the public 
until the reissue patent issues. This is because the reissue 
application file has been put into a special format 
for printing purposes and public access at this stage 
would disrupt the publication process;

(E)Requests for copies of papers in the reissue 
application file must be in writing addressed to Mail 
Stop Document Services, Director of the U.S. Patent 
and Trademark Office, P.O. Box 1450, Alexandria, 
VA 22313-1450. Such requests may be either mailed 
or delivered to the Customer Service Window. The 
price for a copy of an application as filed is set forth 
in 37 CFR 1.19(b)(1). Since no useful purpose is seen 
for retaining such written requests for copies of 
papers in reissue applications, the request(s) should be 
destroyed after the order has been completed.

See also MPEP § 103.

==1480 Certificates of Correction — Office Mistake==

35 U.S.C. 254. Certificate of correction of Patent and 
Trademark Office mistake.

Whenever a mistake in a patent, incurred through the fault of 
the Patent and Trademark Office, is clearly disclosed by the 
records of the Office, the Director may issue a certificate of correction 
stating the fact and nature of such mistake, under seal, 
without charge, to be recorded in the records of patents. A printed 
copy thereof shall be attached to each printed copy of the patent, 
and such certificate shall be considered as part of the original 
patent. Every such patent, together with such certificate, shall 
have the same effect and operation in law on the trial of actions 
for causes thereafter arising as if the same had been originally 
issued in such corrected form. The Director may issue a corrected 
patent without charge in lieu of and with like effect as a certificate 
of correction.

37 CFR 1.322. Certificate of correction of Office mistake.

(a)(1) The Director may issue a certificate of correction pursuant 
to 35 U.S.C. 254 to correct a mistake in a patent, incurred 
through the fault of the Office, which mistake is clearly disclosed 
in the records of the Office:

(i)At the request of the patentee or the patentee’s 
assignee;

(ii)Acting sua sponte for mistakes that the Office discovers; 
or

(iii)Acting on information about a mistake supplied by a 
third party.

(2)(i) There is no obligation on the Office to act on or 
respond to a submission of information or request to issue a certificate 
of correction by a third party under paragraph (a)(1)(iii) of 
this section.

(ii)Papers submitted by a third party under this section 
will not be made of record in the file that they relate to nor be 
retained by the Office.

(3)If the request relates to a patent involved in an 
interference, the request must comply with the requirements of 
this section and be accompanied by a motion under § 41.121(a)(2) 
or § 41.121(a)(3) of this title.

(4)The Office will not issue a certificate of correction 
under this section without first notifying the patentee (including 
any assignee of record) at the correspondence address of record as 
specified in § 1.33(a) and affording the patentee or an assignee an 
opportunity to be heard.

(b)If the nature of the mistake on the part of the Office is 
such that a certificate of correction is deemed inappropriate in 
form, the Director may issue a corrected patent in lieu thereof as a 
more appropriate form for certificate of correction, without 
expense to the patentee.

Mistakes incurred through the fault of the Office 
may be the subject of Certificates of Correction under 
37 CFR 1.322. The Office, however, has discretion 
under 35 U.S.C. 254 to decline to issue a Certificate 
of Correction even though an Office mistake exists. If 
Office mistakes are of such a nature that the meaning 
intended is obvious from the context, the Office may 
decline to issue a certificate and merely place the correspondence 
in the patented file, where it serves to 
call attention to the matter in case any question as to it 
subsequently arises. Such is the case, even where a 
correction is requested by the patentee or patentee’s 
assignee.

In order to expedite all proper requests, a Certificate 
of Correction should be requested only for errors 
of consequence. Instead of a request for a Certificate 
of Correction, letters making errors of record should 
be utilized whenever possible. Thus, where errors are 
of a minor typographical nature, or are readily apparent 
to one skilled in the art, a letter making the error(s) 
of record can be submitted in lieu of a request for a 
Certificate of Correction. There is no fee for the submission 
of such a letter.

It is strongly advised that the text of the correction 
requested be submitted on a Certificate of Correction 
form, PTO/SB/44 (also referred to as PTO 1050). Submission 
of this form in duplicate is not necessary. The 
location of the error in the printed patent should be 
identified on form PTO/SB/44 by column and line 
number or claim and line number. See MPEP § 1485for a discussion of the preparation and submission of 
a request for a Certificate of Correction.

I. THIRD PARTY INFORMATION ON 
MISTAKES IN PATENT

Third parties do not have standing to demand that 
the Office issue, or refuse to issue, a Certificate of 
Correction. See Hallmark Cards, Inc. v. Lehman, 959 
F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C. 
1997). 37 CFR 1.322(a)(2) makes it clear that third 
parties do not have standing to demand that the Office 
act on, respond to, issue, or refuse to issue a Certificate 
of Correction. The Office is, however, cognizant 
of the need for the public to have correct information 
about published patents and may therefore accept 
information about mistakes in patents from third parties. 
37 CFR 1.322(a)(1)(iii). Where appropriate, the 
Office may issue certificates of correction based on 
information supplied by third parties, whether or not 
such information is accompanied by a specific request 
for issuance of a Certificate of Correction. 

While third parties are permitted to submit information 
about mistakes in patents which information 
will be reviewed, the Office need not act on that information 
nor deny any accompanying request for issuance 
of a Certificate of Correction. Accordingly, a fee 
for submission of the information by a third party has 
not been imposed. The Office may, however, choose 
to issue a Certificate of Correction on its own initiative 
based on the information supplied by a third 
party, if it desires to do so. Regardless of whether the 
third party information is acted upon, the information 
will not be made of record in the file that it relates to, 
nor be retained by the Office. 37 CFR 1.322(a)(2)(ii).

When such third party information (about mistakes 
in patents) is received by the Office, the Office will 
not correspond with third parties about the information 
they submitted either (1) to inform the third parties 
of whether it intends to issue a Certificate of 
Correction, or (2) to issue a denial of any request for 
issuance of a Certificate of Correction that may 
accompany the information. The Office will confirm 
to the party submitting such information that the 
Office has in fact received the information if a 
stamped, self-addressed post card has been submitted. 
See MPEP § 503.

II. PUBLICATION IN THE OFFICIAL 
GAZETTE

Each issue of the Official Gazette (patents section) 
numerically lists all United States patents having Certificates 
of Correction. The list appears under the 
heading “Certificates of Correction for the week of 
(date).” 

===1480.01 Expedited Issuance of Certificates of Correction - Error Attributable to Office===

In an effort to reduce the overall time required in 
processing and granting Certificate of Correction 
requests, the Office will expedite processing and 
granting of patentee requests where such requests are 
accompanied by evidence to show that the error is 
attributable solely to the Office (i.e., requests filed 
pursuant to 37 CFR 1.322 only).

The following requirements must be met for consideration 
of expedited issuance of Certificates of 
Correction:

The text of the correction requested should be submitted 
on a Certificate of Correction form, PTO/SB/
44 (also referred to as PTO 1050). Submission of this 
form in duplicate is not necessary. The location of the 
error in the printed patent should be identified on 
form PTO/SB/44 by column and line number or claim 
and line number. See also MPEP § 1485.

Where the correction requested was incurred 
through the fault of the Office, and the matter is 
clearly disclosed in the records of the Office, and is 
accompanied by documentation that unequivocally 
supports the patentee’s assertion(s), a Certificate of 
Correction will be expeditiously issued. Such supporting 
documentation can consist of relevant photocopied 
receipts, manuscript pages, correspondence dated 
and received by the Office, photocopies of Examiners’ 
responses regarding entry of amendments, or any 
other validation that supports the patentee’s request so 
that the request can be processed without the patent 
file.

Where only part of a request can be approved, the 
appropriate modifications will be made on the form 
PTO/SB/44 and the patentee then notified by mail. 
Further consideration will be given to initially 
rejected requests upon a request for reconsideration. 
In this instance, however, or in the case where it is 
determined that the Office was not responsible for the 
error(s) cited by the patentee, accelerated issuance of 
Certificates of Correction cannot be anticipated 
(although the Office will make every effort to process 
the request expeditiously).

==1481 Certificates of Correction - Applicant’s Mistake==

35 U.S.C. 255. Certificate of correction of applicant’s 
mistake.

Whenever a mistake of a clerical or typographical nature, or of 
minor character, which was not the fault of the Patent and Trademark 
Office, appears in a patent and a showing has been made that 
such mistake occurred in good faith, the Director may, upon payment 
of the required fee, issue a certificate of correction, if the 
correction does not involve such changes in the patent as would 
constitute new matter or would require reexamination. Such 
patent, together with the certificate, shall have the same effect and 
operation in law on the trial of actions for causes thereafter 
arising as if the same had been originally issued in such corrected 
form.

37 CFR 1.323. Certificate of correction of applicant’s 
mistake.

The Office may issue a certificate of correction under the 
conditions specified in 35 U.S.C. 255 at the request of the patentee 
or the patentee’s assignee, upon payment of the fee set forth in 
§ 1.20(a). If the request relates to a patent involved in an interference, 
the request must comply with the requirements of this section 
and be accompanied by a motion under § 41.121(a)(2) or 
§ 41.121(a)(3) of this title.

37 CFR 1.323 relates to the issuance of Certificates 
of Correction for the correction of errors which were 
not the fault of the Office. Mistakes in a patent which 
are not correctable by Certificate of Correction may 
be correctable via filing a reissue application (see 
MPEP § 1401 - § 1460). See Novo Industries, L.P. v. 
Micro Molds Corporation, 350 F.3d 1348, 
69 USPQ2d 1128 (Fed. Cir. 2003) (The Federal Circuit 
stated that when Congress in 1952 defined 
USPTO authority to make corrections with prospective 
effect, it did not deny correction authority to the 
district courts. A court, however, can correct only if 
“(1) the correction is not subject to reasonable debate 
based on consideration of the claim language and the 
specification and (2) the prosecution history does not 
suggest a different interpretation...”).

In re Arnott, 19 USPQ2d 1049, 1052 (Comm’r Pat. 
1991) specifies the criteria of 35 U.S.C. 255 (for a 
Certificate of Correction) as follows:

Two separate statutory requirements must be met 
before a Certificate of Correction for an applicant’s mistake 
may issue. The first statutory requirement concerns 
the nature, i.e., type, of the mistake for which a correction 
is sought. The mistake must be:

(1) of a clerical nature,

(2) of a typographical nature, or

(3) a mistake of minor character.

The second statutory requirement concerns the nature 
of the proposed correction. The correction must not 
involve changes which would:

(1) constitute new matter or

(2) require reexamination.

If the above criteria are not satisfied, then a Certificate 
of Correction for an applicant’s mistake will not issue, 
and reissue must be employed as the vehicle to “correct” 
the patent. Usually, any mistake affecting claim 
scope must be corrected by reissue.

A mistake is not considered to be of the “minor” 
character required for the issuance of a Certificate of 
Correction if the requested change would materially 
affect the scope or meaning of the patent. See also 
MPEP § 1412.04 as to correction of inventorship via 
certificate of correction or reissue.

The fee for providing a correction of applicant’s 
mistake, other than inventorship, is set forth in 
37 CFR 1.20(a). The fee for correction of inventorship 
in a patent is set forth in 37 CFR 1.20(b).

===1481.01 Correction of Assignees’ Names===

The Fee(s) Transmittal Form portion (PTOL-
85B) of the Notice of Allowance provides a space 
(item 3) for assignment data which should be completed 
in order to comply with 37 CFR 3.81. Unless 
an assignee’s name and 
address are identified in the 
appropriate space for 
specifying the assignee, (i.e., 
item 3 of the Fee(s) Transmittal Form PTOL-
85B), the patent will issue to the applicant. Assignment 
data printed on the patent will be based solely on 
the information so supplied.

Any request for the issuance of an application 
in the name of the assignee submitted after the date of 
payment of the issue fee, and any request for a patent 
to be corrected to state the name of the assignee must: 

(A)state that the assignment was submitted for 
recordation as set forth in 37 CFR 3.11 before issuance 
of the patent; 

(B)include a request for a certificate of correction 
under 37 CFR 1.323 along with the fee set forth in 
37 CFR 1.20(a); and

(C)include the processing fee set forth in 37 CFR 
1.17(i).

See 37 CFR 3.81(b).

===1481.02 Correction of Inventors’ Names===

35 U.S.C. 256. Correction of named inventor.

Whenever through error a person is named in an issued patent 
as the inventor, or through error an inventor is not named in an 
issued patent and such error arose without any deceptive intention 
on his part, the Director may, on application of all the parties and 
assignees, with proof of the facts and such other requirements as 
may be imposed, issue a certificate correcting such error.

The error of omitting inventors or naming persons who are not 
inventors shall not invalidate the patent in which such error 
occurred if it can be corrected as provided in this section. The 
court before which such matter is called in question may order 
correction of the patent on notice and hearing of all parties concerned 
and the Director shall issue a certificate accordingly.

In requesting the Office to effectuate a court order 
correcting inventorship in a patent pursuant to 
35 U.S.C. 256, a copy of the court order and a Certificate 
of Correction under 37 CFR 1.323 should be submitted 
to the Certificates of Corrections Branch.

37 CFR 1.324. Correction of inventorship in patent, 
pursuant to 35 U.S.C. 256.

(a)Whenever through error a person is named in an 
issued patent as the inventor, or through error an inventor is not 
named in an issued patent and such error arose without any deceptive 
intention on his or her part, the Director, pursuant to 35 
U.S.C. 256, may, on application of all the parties and assignees, or 
on order of a court before which such matter is called in question, 
issue a certificate naming only the actual inventor or inventors. A 
petition to correct inventorship of a patent involved in an interference 
must comply with the requirements of this section and must 
be accompanied by a motion under § 41.121(a)(2) or § 
41.121(a)(3) of this title.

(b)Any request to correct inventorship of a patent pursuant 
to paragraph (a) of this section must be accompanied by:

(1)Where one or more persons are being added, a statement 
from each person who is being added as an inventor that the 
inventorship error occurred without any deceptive intention on his 
or her part;

(2)A statement from the current named inventors who 
have not submitted a statement under paragraph (b)(1) of this section 
either agreeing to the change of inventorship or stating that 
they have no disagreement in regard to the requested change;

(3)A statement from all assignees of the parties submitting 
a statement under paragraphs (b)(1) and (b)(2) of this section 
agreeing to the change of inventorship in the patent, which statement 
must comply with the requirements of § 3.73(b) of this chapter; 
and

(4)The fee set forth in § 1.20(b).

(c)For correction of inventorship in an application, see 
§§ 1.48 and 1.497.

(d)In a contested case before the Board of Patent Appeals 
and Interferences under part 41, subpart D, of this title, a request 
for correction of a patent must be in the form of a motion under 
§ 41.121(a)(2) or § 41.121(a)(3) of this title.

The petition to correct inventorship under 37 CFR 
1.324 must include the statements and fee required by 
37 CFR 1.324(b).

Under 37 CFR 1.324(b)(1), a statement is required 
from each person who is being added as an inventor 
that the inventorship error occurred without any 
deceptive intention on their part. In order to satisfy 
this, a statement such as the following is sufficient:

“The inventorship error of failing to include John Smith 
as an inventor of the patent occurred without any deceptive 
intention on the part of John Smith.”

Nothing more is required. The examiner will determine 
only whether the statement contains the required 
language; the examiner will not make any commentas to whether or not it appears that there was in fact 
deceptive intention (see MPEP § 2022.05).

Under 37 CFR 1.324(b)(2), all current inventors 
who did not submit a statement under 37 CFR 
1.324(b)(1) must submit a statement either agreeing to 
the change of inventorship, or stating that they have 
no disagreement with regard to the requested change. 
“Current inventors” include the inventor(s) being 
retained as such and the inventor(s) to be deleted. 
These current inventors need not make a statement as 
to whether the inventorship error occurred without 
deceptive intention.

If an inventor is not available, or refuses, to submit 
a statement, the assignee of the patent may wish to 
consider filing a reissue application to correct inventorship, 
since the inventor’s statement is not required 
for a non-broadening reissue application to correct 
inventorship. See MPEP § 1412.04.

Under 37 CFR 1.324(b)(3), a statement is required 
from the assignee(s) of the patent agreeing to the 
change of inventorship in the patent. The assignee 
statement agreeing to the change of inventorship must 
be accompanied by a proper statement under 37 CFR 
3.73(b) establishing ownership, unless a proper 37 
CFR 3.73(b) statement is already in the file. See 
MPEP § 324 as to the requirements of a statement 
under 37 CFR 3.73(b).

While a request under 37 CFR 1.48 is appropriate 
to correct inventorship in a nonprovisional application, 
a petition under 37 CFR 1.324 is the appropriate 
vehicle to correct inventorship in a patent. If a request 
under 37 CFR 1.48(a), (b), or (c) is inadvertently filed 
in a patent, the request may be treated as a petition 
under 37 CFR 1.324, and if it is grantable, form paragraph 
10.14 set forth below should be used.

Similarly, if a request under 37 CFR 1.48(a), (b), or 
(c) is filed in a pending application but not acted upon 
until after the application becomes a patent, the 
request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set 
forth below should be used.

The statutory basis for correction of inventorship 
in a patent under 37 CFR 1.324 is 35 U.S.C. 256. It is 
important to recognize that 35 U.S.C. 256 is stricter 
than 35 U.S.C. 116, the statutory basis for corrections 
of inventorship in applications under 37 CFR 1.48. 
35 U.S.C. 256 requires “on application of all the parties 
and assignees,” while 35 U.S.C. 116 does not 
have the same requirement. Under 35 U.S.C. 116 and 
37 CFR 1.48, waiver requests under 37 CFR 1.183may be submitted (see, e.g., MPEP § 201.03, under 
the heading “Statement of Lack of Deceptive Intention”). 
This is not possible under 35 U.S.C. 256 and 
37 CFR 1.324. In correction of inventorship in a nonprovisional 
application under 37 CFR 1.48(a), the 
requirement for a statement by each originally named 
inventor may be waived pursuant to 37 CFR 1.183; 
however, correction of inventorship in a patent under 
37 CFR 1.324 requires petition of all the parties, i.e., 
originally named inventors and assignees, in accordance 
with statute (35 U.S.C. 256) and thus the 
requirement cannot be waived.

===1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits===

I.CORRECTION TO PERFECT CLAIM 
FOR 35 U.S.C. 119 (a)-(d) AND (f) BENEFITS

See MPEP § 201.16 for a discussion of when 
35 U.S.C. 119 (a)-(d) and (f) benefits can be perfected 
by certificate of correction.

II.CORRECTION AS TO 35 U.S.C. 120 AND 
35 U.S.C. 119(e) BENEFITS

A.For Applications Filed Prior to November 29, 2000

For applications filed prior to November 29, 2000, 
it is the version of 37 CFR 1.78, which was in effect 
as of November 29, 2000, that applies. The pre-
November 29, 2000 version reads as follows:

37 CFR 1.78. Claiming benefit of earlier filing date andcross-references to other applications. 

(a)(1) A nonprovisional application may claim an invention 
disclosed in one or more prior filed copending nonprovisional 
applications or copending international applications designating 
the United States of America. In order for a nonprovisional application 
to claim the benefit of a prior filed copending nonprovisional 
application or copending international application 
designating the United States of America, each prior application 
must name as an inventor at least one inventor named in the later 
filed nonprovisional application and disclose the named inventor’s 
invention claimed in at least one claim of the later filed nonprovisional 
application in the manner provided by the first 
paragraph of 35 U.S.C. 112. In addition, each prior application 
must be:

(i)An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States 
of America; or

(ii)Complete as set forth in § 1.51(b); or

(iii)Entitled to a filing date as set forth in § 1.53(b) or 
§ 1.53(d) and include the basic filing fee set forth in § 1.16; or

(iv)Entitled to a filing date as set forth in § 1.53(b) and 
have paid therein the processing and retention fee set forth in 
§ 1.21(l) within the time period set forth in § 1.53(f).

(2)Except for a continued prosecution application filed 
under §
 
1.53(d), any nonprovisional application claiming the benefit 
of one or more prior filed copending nonprovisional applications 
or international applications designating the United States of 
America must contain a reference to each such prior application, 
identifying it by application number (consisting of the series code 
and serial number) or international application number and international 
filing date and indicating the relationship of the applications. 
Unless the reference required by this paragraph is included 
in an application data sheet (§ 1.76), the specification must contain 
or be amended to contain such reference in the first sentence 
following any title. The request for a continued prosecution application 
under § 1.53(d) is the specific reference required by 
35 
U.S.C. 120 to the prior application. The identification of an 
application by application number under this section is the specific 
reference required by 35 U.S.C. 120 to every application 
assigned that application number. Cross-references to other 
related applications may be made when appropriate (see 
§ 1.14(a)).

(3)A nonprovisional application other than for a design 
patent may claim an invention disclosed in one or more prior filed 
copending provisional applications. In order for a nonprovisional 
application to claim the benefit of one or more prior filed copending 
provisional applications, each prior provisional application 
must name as an inventor at least one inventor named in the later 
filed nonprovisional application and disclose the named inventor's 
invention claimed in at least one claim of the later filed nonprovisional 
application in the manner provided by the first paragraph of 
35 U.S.C. 112. In addition, each prior provisional application 
must be entitled to a filing date as set forth in § 1.53(c), have any 
required English-language translation filed therein within the time 
period set forth in § 1.52(d), and have paid therein the basic filing 
fee set forth in § 1.16(k) within the time period set forth in 
§ 1.53(g).

(4)Any nonprovisional application claiming the benefit 
of one or more prior filed copending provisional applications must 
contain a reference to each such prior provisional application, 
identifying it as a provisional application, and including the provisional 
application number (consisting of series code and serial 
number). Unless the reference required by this paragraph is 
included in an application data sheet (§ 1.76), the specification 
must contain or be amended to contain such reference in the first 
sentence following any title.

Under certain conditions specified below, a Certificate 
of Correction can be used, with respect to 
35 
U.S.C. 120 and 119(e) priority, to correct:

(A)the failure to make reference to a prior 
copending application pursuant to 37 CFR 1.78(a)(2) 
and (a)(4); or

(B)an incorrect reference to a prior copending 
application pursuant to 37 CFR 1.78(a)(2) and (a)(4).

For all situations other than where priority is based 
upon 35 U.S.C. 365(c), the conditions are as follows:

(A)for 35 U.S.C. 120 priority, all requirements 
set forth in 37 CFR 1.78(a)(1) must have been met in 
the application which became the patent to be corrected;

(B)for 35 U.S.C. 119(e) priority, all requirements 
set forth in 37 CFR 1.78(a)(3) must have been met in 
the application which became the patent to be corrected; 
and

(C)it must be clear from the record of the patent 
and the parent application(s) that priority is appropriate. 
See MPEP § 201.1l for requirements under 
35 U.S.C. 119(e) and 120.

Where 35 U.S.C. 120 and 365(c) priority based on 
an international application is to be asserted or corrected 
in a patent via a Certificate of Correction, the 
following conditions must be satisfied:

(A)all requirements set forth in 37 CFR 
1.78(a)(1) must have been met in the application 
which became the patent to be corrected;

(B)it must be clear from the record of the patent 
and the parent application(s) that priority is appropriate 
(see MPEP § 201.11); and

(C)the patentee must submit with the request for 
the certificate copies of documentation showing designation 
of states and any other information needed to 
make it clear from the record that the 35 U.S.C. 120priority is appropriate. See MPEP § 201.13(b) as to 
the requirements for 35 
U.S.C. 120 priority based on 
an international application.

If all the above-stated conditions are satisfied, a 
Certificate of Correction can be used to amend the 
patent to make reference to a prior copending application, 
or to correct an incorrect reference to the prior 
copending application. Note In re Schuurs, 218 USPQ 
443 (Comm’r Pat. 1983) which suggests that a Certificate 
of Correction is an appropriate remedy for correcting, 
in a patent, reference to a prior copending 
application. Also, note In re Lambrech, 202 USPQ 
620 (Comm’r Pat. 1976), citing In re Van Esdonk,
187 
USPQ 671 (Comm’r Pat. 1975). 

If any of the above-stated conditions is not satisfied, 
the filing of a reissue application (see MPEP 
§ 1401 - § 1460) would be appropriate to pursue the 
desired correction of the patent.

B.For Applications Filed on or After November 
29, 2000

For applications filed on or after November 29, 
2000, the version of 37 CFR 1.78 reproduced below 
applies (note that amendments to 37 CFR 1.78 took 
effect on November 29, 2000, December 28, 2001, 
May 1, 2003, January 21, 2004, September 21, 2004, 
December 8, 2004,  July 1, 2005, and November 
25, 2005).

37 CFR 1.78. Claiming benefit of earlier filing date and 
cross-references to other applications.

(a)(1)A nonprovisional application or international application 
designating the United States of America may claim an 
invention disclosed in one or more prior-filed copending nonprovisional 
applications or international applications designating the 
United States of America. In order for an application to claim the 
benefit of a prior-filed copending nonprovisional application or 
international application designating the United States of America, 
each prior-filed application must name as an inventor at least 
one inventor named in the later-filed application and disclose the 
named inventor’s invention claimed in at least one claim of the 
later-filed application in the manner provided by the first paragraph 
of 35 U.S.C. 112. In addition, each prior-filed application 
must be: 

(i) An international application entitled to a filing date 
in accordance with PCT Article 11 and designating the United 
States of America; or

(ii) Entitled to a filing date as set forth in § 1.53(b) or § 
1.53(d) and have paid therein the basic filing fee set forth in § 1.16within the pendency of the application.

(2)(i)Except for a continued prosecution application 
filed under § 1.53(d), any nonprovisional application or international 
application designating the United States of America claiming 
the benefit of one or more prior-filed copending 
nonprovisional applications or international applications designating 
the United States of America must contain or be amended to 
contain a reference to each such prior-filed application, identifying 
it by application number (consisting of the series code and 
serial number) or international application number and international 
filing date and indicating the relationship of the applications. 
Cross references to other related applications may be made 
when appropriate (see § 1.14). 

(ii)This reference must be submitted during the pendency 
of the later-filed application. If the later-filed application is 
an application filed under 35 
U.S.C. 111(a), this reference must 
also be submitted within the later of four months from the actual 
filing date of the later-filed application or sixteen months from the 
filing date of the prior-filed application. If the later-filed application 
is a nonprovisional application which entered the national 
stage from an international application after compliance with 
35 
U.S.C. 371, this reference must also be submitted within the 
later of four months from the date on which the national stage 
commenced under 35 U.S.C. 371 (b) or (f) in the later-filed international 
application or sixteen months from the filing date of the 
prior-filed application. These time periods are not extendable. 
Except as provided in paragraph (a)(3) of this section, the failure 
to timely submit the reference required by 35 U.S.C. 120 and 
paragraph (a)(2)(i) of this section is considered a waiver of any 
benefit under 35 
U.S.C. 120, 121, or 365(c) to such prior-filed 
application. The time periods in this paragraph do not apply if the 
later-filed application is:

(A)An application for a design patent;

(B)An application filed under 35 U.S.C. 111 (a) 
before November 29, 2000; or

(C)A nonprovisional application which entered the 
national stage after compliance with 35 U.S.C. 371 from an international 
application filed under 35 U.S.C. 363 before November 
29, 2000.

(iii)If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be 
included in an application data sheet (§ 1.76), or the specification 
must contain or be amended to contain such reference in the first 
sentence(s) following the title.

(iv)The request for a continued prosecution application 
under § 1.53(d) is the specific reference required by 
35 U.S.C. 120 to the prior-filed application. The identification of 
an application by application number under this section is the 
identification of every application assigned that application number 
necessary for a specific reference required by 35 U.S.C. 120 to 
every such application assigned that application number.

(3)If the reference required by 35 U.S.C. 120 and paragraph 
(a)(2) of this section is presented after the time period provided 
by paragraph (a)(2)(ii) of this section, the claim under 
35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed 
copending nonprovisional application or international application 
designating the United States of America may be accepted if the 
reference identifying the prior-filed application by application 
number or international application number and international filing 
date was unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 U.S.C. 120, 121, or 365(c) for 
the benefit of a prior-filed application must be accompanied by:

(i)The reference required by 35 U.S.C. 120 and paragraph 
(a)(2) of this section to the prior-filed application, unless 
previously submitted;

(ii)The surcharge set forth in § 1.17(t); and

(iii)A statement that the entire delay between the date 
the claim was due under paragraph (a)(2)(ii) of this section and 
the date the claim was filed was unintentional. The Director may 
require additional information where there is a question whether 
the delay was unintentional.

(4)A nonprovisional application, other than for a design 
patent, or an international application designating the United 
States of America may claim an invention disclosed in one or 
more prior-filed provisional applications. In order for an application 
to claim the benefit of one or more prior-filed provisional 
applications, each prior-filed provisional application must name 
as an inventor at least one inventor named in the later-filed application 
and disclose the named inventor’s invention claimed in at 
least one claim of the later-filed application in the manner provided 
by the first paragraph of 35 
U.S.C. 112. In addition, each 
prior-filed provisional application must be entitled to a filing date 
as set forth in § 1.53(c), and the basic filing fee set forth in 
§ 1.16(d) must be paid within the time period set forth in 
§ 1.53(g).

(5)(i) Any nonprovisional application or international 
application designating the United States of America claiming the 
benefit of one or more prior-filed provisional applications must 
contain or be amended to contain a reference to each such prior-
filed provisional application, identifying it by the provisional 
application number (consisting of series code and serial number). 

(ii)This reference must be submitted during the pendency 
of the later-filed application. If the later-filed application is 
an application filed under 35 
U.S.C. 111(a), this reference must 
also be submitted within the later of four months from the actual 
filing date of the later-filed application or sixteen months from the 
filing date of the prior-filed provisional application. If the later-
filed application is a nonprovisional application which entered the 
national stage from an international application after compliance 
with 35 U.S.C. 371, this reference must also be submitted within 
the later of four months from the date on which the national stage 
commenced under 35 
U.S.C. 371(b) or (f) in the later-filed international 
application or sixteen months from the filing date of the 
prior-filed provisional application. These time periods are not 
extendable. Except as provided in paragraph(a)(6) of this section, 
the failure to timely submit the reference is considered a waiver of 
any benefit under 35 U.S.C. 119(e) to such prior-filed provisional 
application. The time periods in this paragraph do not apply if the 
later-filed application is:

(A)An application filed under 35 U.S.C. 111(a) 
before November 29, 2000; or

(B)A nonprovisional application which entered the 
national stage after compliance with 35 U.S.C. 371 from an international 
application filed under 35 U.S.C. 363 before November 
29, 2000.

(iii)If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be 
included in an application data sheet (§ 1.76), or the specification 
must contain or be amended to contain such reference in the first 
sentence(s) following the title.

(iv)If the prior-filed provisional application was filed 
in a language other than English and both an English-language 
translation of the prior-filed provisional application and a statement 
that the translation is accurate were not previously filed in 
the prior-filed provisional application, applicant will be notified 
and given a period of time within which to file, in the prior-filed 
provisional application, the translation and the statement. If the 
notice is mailed in a pending nonprovisional application, a timely 
reply to such a notice must include the filing in the nonprovisional 
application of either a confirmation that the translation and statement 
were filed in the provisional application, or an amendment 
or Supplemental Application Data Sheet withdrawing the benefit 
claim, or the nonprovisional application will be abandoned. The 
translation and statement may be filed in the provisional application, 
even if the provisional application has become abandoned.

(6)If the reference required by 35 U.S.C. 119(e) and 
paragraph (a)(5) of this section is presented in a nonprovisional 
application after the time period provided by paragraph (a)(5)(ii) 
of this section, the claim under 35 
U.S.C. 119(e) for the benefit of 
a prior filed provisional application may be accepted during the 
pendency of the later-filed application if the reference identifying 
the prior-filed application by provisional application number was 
unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 
U.S.C. 119(e) for the benefit of a prior 
filed provisional application must be accompanied by:

(i)The reference required by 35 U.S.C. 119(e) and 
paragraph (a)(5) of this section to the prior-filed provisional application, 
unless previously submitted;

(ii)The surcharge set forth in § 1.17(t); and

(iii)A statement that the entire delay between the date 
the claim was due under paragraph (a)(5)(ii) of this section and 
the date the claim was filed was unintentional. The Director may 
require additional information where there is a question whether 
the delay was unintentional.

(b)Where two or more applications filed by the same applicant 
contain conflicting claims, elimination of such claims from 
all but one application may be required in the absence of good and 
sufficient reason for their retention during pendency in more than 
one application.

(c)If an application or a patent under reexamination and at 
least one other application naming different inventors are owned 
by the same person and contain conflicting claims, and there is no 
statement of record indicating that the claimed inventions were 
commonly owned or subject to an obligation of assignment to the 
same person at the time the later invention was made, the Office 
may require the assignee to state whether the claimed inventions 
were commonly owned or subject to an obligation of assignment 
to the same person at the time the later invention was made, and if 
not, indicate which named inventor is the prior inventor. Even if 
the claimed inventions were commonly owned, or subject to an 
obligation of assignment to the same person, at the time the later 
invention was made, the conflicting claims may be rejected under 
the doctrine of double patenting in view of such commonly owned 
or assigned applications or patents under reexamination.

Under no circumstances can a Certificate of Correction 
be employed to correct an applicant’s mistake 
by adding or correcting a priority claim under 
35 
U.S.C. 119(e) for an application filed on or after 
November 29, 2000. 

Section 4503 of the American Inventors Protection 
Act of 1999 (AIPA) amended 35 U.S.C. 119(e)(1) to 
state that:

No application shall be entitled to the benefit of an earlier 
filed provisional application under this subsection 
unless an amendment containing the specific reference to 
the earlier filed provisional application is submitted at such 
time during the pendency of the application as required by 
the Director. The Director may consider the failure to submit 
such an amendment within that time period as a waiver 
of any benefit under this subsection. The Director may 
establish procedures, including the payment of a surcharge, 
to accept an unintentionally delayed submission of an 
amendment under this section during the pendency of the 
application. (emphasis added)

A Certificate of Correction is NOT a 
valid mechanism for adding or correcting a priority 
claim under 35 
U.S.C. 119(e) after a patent has been 
granted on an application filed on or after November 
29, 2000.

Under certain conditions as specified below, however, 
a Certificate of Correction can still be used, with 
respect to 35 U.S.C. 120 priority, to correct:

(A)the failure to make reference to a prior 
copending application pursuant to 37 CFR 1.78(a)(2); 
or

(B)an incorrect reference to a prior copending 
application pursuant to 37 CFR 1.78(a)(2).

Where priority is based upon 35 U.S.C. 120 to a 
national application, the following conditions must 
be satisfied:

(A)all requirements set forth in 37 CFR 
1.78(a)(1) must have been met in the application 
which became the patent to be corrected;

(B) it must be clear from the record of the patent 
and the parent application(s) that priority is appropriate 
(see MPEP § 201.11); and

(C)a grantable petition to accept an unintentionally 
delayed claim for the benefit of a prior application 
must be filed, including a surcharge as set forth in 
37 CFR 1.17(t), as required by 37 CFR 1.78(a)(3).

Where 35 U.S.C. 120 and 365(c) priority based on 
an international application is to be asserted or corrected 
in a patent via a Certificate of Correction, the 
following conditions must be satisfied:

(A)all requirements set forth in 37 CFR 
1.78(a)(1) must have been met in the application 
which became the patent to be corrected;

(B)it must be clear from the record of the patent 
and the parent application(s) that priority is appropriate 
(see MPEP § 201.11);

(C)the patentee must submit together with the 
request for the certificate, copies of documentation 
showing designation of states and any other information 
needed to make it clear from the record that the 
35 U.S.C. 120 priority is appropriate (see MPEP 
§ 201.13(b) as to the requirements for 35 U.S.C. 120priority based on an international application; and

(D)a grantable petition to accept an unintentionally 
delayed claim for the benefit of a prior application 
must be filed, including a surcharge as set forth in 
37 CFR 1.17(t), as required by 37 CFR 1.78(a)(3).

If all the above-stated conditions are satisfied, a 
Certificate of Correction can be used to amend the 
patent to make reference to a prior copending application, 
or to correct an incorrect reference to the prior 
copending application, for benefit claims under 
35 U.S.C. 120 and 365(c).

If any of the above-stated conditions is not satisfied, 
the filing of a reissue application (see MPEP 
§ 1401 - § 1460) may be appropriate to pursue the 
desired correction of the patent for benefit claims 
under 35 U.S.C. 120 and 365(c). 

==1485 Handling of Request for Certificates of Correction==

A request for a Certificate of Correction should be 
addressed to: 

Commissioner for Patents

Office of Patent Publication

ATTN: Certificate of Correction Branch

P.O. Box 1450

Alexandria, VA 22313-1450

Requests for Certificates of Correction will be forwarded 
to the Certificate of Correction Branch of the 
Office of Patent Publication, where they will be listed 
in a permanent record book.

If the patent is involved in an interference, a Certificate 
of Correction under 37 CFR 1.324 will not be 
issued unless a corresponding motion under 37 CFR 
41.121(a)(2) or 41.121(a)(3) has been granted by the 
administrative patent judge. Otherwise, determination 
as to whether an error has been made, the responsibility 
for the error, if any, and whether the error is of 
such a nature as to justify the issuance of a Certificate 
of Correction will be made by the Certificate of Correction 
Branch. If a report is necessary in making such 
determination, the case will be forwarded to the 
appropriate group with a request that the report be furnished. 
If no certificate is to issue, the party making 
the request is so notified and the request, report, if 
any, and copy of the communication to the person 
making the request are placed in the file wrapper (for 
a paper file) or entered into the file history (for an 
IFW file), and entered into the “Contents” for the file 
by the Certificate of Correction Branch. The case is 
then returned to the patented files. If a certificate is to 
issue, it will be prepared and forwarded to the person 
making the request by the Office of Patent Publication. 
In that case, the request, the report, if any, and a 
copy of the letter transmitting the Certificate of Correction 
to the person making the request will be 
placed in the file wrapper (for a paper file) or entered 
into the file history (for an IFW file), and entered into 
the “Contents” for the file.

Applicants, or their attorneys or agents, are urged to 
submit the text of the correction on a special Certificate 
of Correction form, PTO/SB/44 (also referred to 
as Form PTO-1050), which can serve as the camera 
copy for use in direct offset printing of the Certificate 
of Correction. 

Where only a part of a request can be approved, or 
where the Office discovers and includes additional 
corrections, the appropriate alterations are made on 
the form PTO/SB/44 by the Office. The patentee is 
notified of the changes on the Notification of 
Approval-in-part form PTOL-404. The certificate is 
issued approximately 6 weeks thereafter.

Form PTO/SB/44 should be used exclusively 
regardless of the length or complexity of the subject 
matter. Intricate chemical formulas or page of specification 
or drawings may be reproduced and mounted 
on a blank copy of PTO/SB/44. Failure to use the 
form has frequently delayed issuance since the 
text 
must be retyped by the Office onto a PTO/SB/44.

The exact page and line number where the errors 
occur in the application file should be identified on 
the request. However, on form PTO/SB/44, only the 
column and line number in the printed patent should 
be used.

The patent grant should be retained by the patentee. 
The Office does not attach the Certificate of Correction 
to patentee’s copy of the patent. The patent grant 
will be returned to the patentee if submitted.

Below is a sample form illustrating a variety of corrections 
and the suggested manner of setting out the 
format. Particular attention is directed to:

(A)Identification of the exact point of error by 
reference to column and line number of the printed 
patent for changes in the specification or to claim 
number and line where a claim is involved.

(B)Conservation of space on the form by typing 
single space, beginning two lines down from the 
printed message.

(C)Starting the correction to each separate column 
as a sentence, and using semicolons to separate 
corrections within the same column, where possible.

(D)Leaving a two-inch space blank at bottom of 
the last sheet for the signature of the attesting officer.

(E)Using quotation marks to enclose the exact 
subject matter to be deleted or corrected; using double 
hyphens (-- --) to enclose subject matter to be added, 
except for formulas.

(F)Where a formula is involved, setting out 
only 
that portion thereof which is to be corrected or, 
if 
necessary, pasting a photocopy onto form PTO/SB/
44.

ELECTRONIC PUBLICATION OF CERTIFICATES 
OF CORRECTION WITH LATER LISTING 
IN THE OFFICIAL GAZETTE

Effective August 2001, the U.S. Patent and Trademark 
Office (USPTO) publishes on the USPTO web 
site at http://www.uspto.gov/web/patents/certofcorrect 
a listing by patent number of the patents for 
which certificates of correction are being issued.

The USPTO is now automating the publication 
process for certificates of correction. This new process 
will result in certificates of correction being published 
quicker electronically on the USPTO’s web site 
as compared to their paper publication and the listing 
of the certificates of correction in the Official Gazette. 
Under the newly automated process, each issue of certificates 
of correction will be electronically published 
on the USPTO web site at http://www.uspto.gov/web/
patents/certofcorrect, and will also subsequently be 
listed in the Official Gazette (and in the Official 
Gazette Notices posted at http://www.uspto.gov/web/
offices/com/sol/og) approximately three weeks thereafter. 
The listing of certificates of correction in the 
Official Gazette will include the certificate’s date of 
issuance. 

On the date on which the listing of certificates of 
correction is electronically published on the USPTO 
web site: (A) the certificate of correction will be 
entered into the file wrapper of a paper-file patent, or 
entered into the file history of an IFW-file patent and 
will be available to the public; (B) a printed copy of 
the certificate of correction will be mailed to the patentee 
or the patent’s assignee; and (C) an image of the 
printed certificate of correction will be added to the 
image of the patent on the patent database at http://
www.uspto.gov.patft. Dissemination of all other paper 
copies of the certificate of correction will occur 
shortly thereafter.

The date on which the USPTO makes the certificate 
of correction available to the public (e.g., by adding 
the certificate of correction to the file wrapper/file 
history) will be regarded as the date of issuance of the 
certificate of correction, not the date of the certificate 
of correction appearing in the Official Gazette. (For 
IFW processing, see IFW Manual.) Certificates of 
correction published in the above-described manner 
will provide the public with prompt notice and access, 
and this is consistent with the legislative intent behind 
the American Inventors Protection Act of 1999. See 

35 U.S.C. 10(a) (authorizing the USPTO to publish in electronic form).

The listing of certificates of correction can be electronically 
accessed on the day of issuance at http://
www.uspto.gov/web/patents/certofcorrect. The electronic 
image of the printed certificate of correction 
can be accessed on the patent database at http://
www.uspto.gov/patft and the listing of the certificates 
of correction, as published in the Official Gazettethree weeks later, will be electronically accessible at 
http://www.uspto.gov/web/offices/com/sol/og.

==1490 Disclaimers==

35 U.S.C. 253. Disclaimer.

Whenever, without any deceptive intention, a claim of a patent 
is invalid the remaining claims shall not thereby be rendered 
invalid. A patentee, whether of the whole or any sectional interest 
therein, may, on payment of the fee required by law, make disclaimer 
of any complete claim, stating therein the extent of his 
interest in such patent. Such disclaimer shall be in writing, and 
recorded in the Patent and Trademark Office; and it shall thereafter 
be considered as part of the original patent to the extent of the 
interest possessed by the disclaimant and by those claiming under 
him.

In like manner any patentee or applicant may disclaim or dedicate 
to the public the entire term, or any terminal part of the term, 
of the patent granted or to be granted.

37 CFR 1.321. Statutory disclaimers, including terminal 
disclaimers.

(a)A patentee owning the whole or any sectional interest in 
a patent may disclaim any complete claim or claims in a patent. In 
like manner any patentee may disclaim or dedicate to the public 
the entire term, or any terminal part of the term, of the patent 
granted. Such disclaimer is binding upon the grantee and its successors 
or assigns. A notice of the disclaimer is published in the 
Official Gazette and attached to the printed copies of the specification. 
The disclaimer, to be recorded in the Patent and Trademark 
Office, must:

(1)be signed by the patentee, or an attorney or agent of 
record;

(2)identify the patent and complete claim or claims, or 
term being disclaimed. A disclaimer which is not a disclaimer of a 
complete claim or claims, or term, will be refused recordation;

(3)state the present extent of patentee’s ownership interest 
in the patent; and 

(4)be accompanied by the fee set forth in § 1.20(d).

(b)An applicant or assignee may disclaim or dedicate to the 
public the entire term, or any terminal part of the term, of a patent 
to be granted. Such terminal disclaimer is binding upon the 
grantee and its successors or assigns. The terminal disclaimer, to 
be recorded in the Patent and Trademark Office, must:

(1)be signed:

(i)by the applicant, or

(ii)if there is an assignee of record of an undivided 
part interest, by the applicant and such assignee, or 

(iii)if there is an assignee of record of the entire interest, 
by such assignee, or 

(iv)by an attorney or agent of record;

(2)specify the portion of the term of the patent being disclaimed;


(3)state the present extent of applicant’s or assignee’s 
ownership interest in the patent to be granted; and 

(4)be accompanied by the fee set forth in § 1.20(d).

(c)A terminal disclaimer, when filed to obviate judicially 
created double patenting in a patent application or in a reexamination 
proceeding except as provided for in paragraph (d) of this 
section, must:

(1)Comply with the provisions of paragraphs (b)(2) 
through (b)(4) of this section;

(2)Be signed in accordance with paragraph (b)(1) of this 
section if filed in a patent application or in accordance with paragraph 
(a)(1) of this section if filed in a reexamination proceeding; 
and

(3)Include a provision that any patent granted on that 
application or any patent subject to the reexamination proceeding 
shall be enforceable only for and during such period that said 
patent is commonly owned with the application or patent which 
formed the basis for the judicially created double patenting.

(d)A terminal disclaimer, when filed in a patent application 
or in a reexamination proceeding to obviate double patenting 
based upon a patent or application that is not commonly owned 
but was disqualified under 35 U.S.C. 103(c) as resulting from 
activities undertaken within the scope of a joint research agreement, 
must:

(1)Comply with the provisions of paragraphs (b)(2) 
through (b)(4) of this section;

(2)Be signed in accordance with paragraph (b)(1) of this 
section if filed in a patent application or be signed in accordance 
with paragraph (a)(1) of this section if filed in a reexamination 
proceeding; 

(3)Include a provision waiving the right to separately 
enforce any patent granted on that application or any patent subject 
to the reexamination proceeding and the patent or any patent 
granted on the application which formed the basis for the double 
patenting, and that any patent granted on that application or any 
patent subject to the reexamination proceeding shall be enforceable 
only for and during such period that said patent and the 
patent, or any patent granted on the application, which formed the 
basis for the double patenting are not separately enforced.

A disclaimer is a statement filed by an owner (in 
part or in entirety) of a patent or of a patent to be 
granted (i.e., an application), in which said owner 
relinquishes certain legal rights to the patent. There 
are two types of disclaimers: a statutory disclaimer 
and a terminal disclaimer. The owner of a patent or an 
application is the original inventor(s) or the assignee 
of the original inventor(s). The patent or application is 
assigned by one assignment or by multiple assignments 
which establish a chain of title from the inventor(
s) to the assignee(s). The owner of the patent or 
application can sign a disclaimer, and a person 
empowered by the owner to sign the disclaimer can 
also sign it. Per 37 CFR 1.321(b)(1)(iv), an attorney 
or agent of record is permitted to sign the disclaimer. 
A registered practitioner acting in a representative 
capacity under 37 CFR 1.34 is not permitted to sign 
the disclaimer. For a disclaimer to be accepted, it must 
be signed by the proper party as follows:

(A)A disclaimer filed in an application must be 
signed by

(1)the applicant where the application has not 
been assigned, 

(2)the applicant and the assignee where each 
owns a part interest in the application, 

(3)the assignee where assignee owns the 
entire interest in the application, or

(4)an attorney or agent of record.

(B)A disclaimer filed in a patent or a reexamination 
proceeding must be signed by either

(1)the patentee (the assignee, the inventor(s) if 
the patent is not assigned, or the assignee and the 
inventors if the patent is assigned-in-part), or

(2)an attorney or agent of record.

(C)Where the assignee (of an application or of a 
patent being reexamined or to be reissued) signs the 
disclaimer, there is a requirement to comply with 
37 
CFR 3.73(b) in order to satisfy 37 CFR 1.321, 
unless an attorney or agent of record signs the disclaimer. 
In order to comply with 37 CFR 3.73(b), the 
assignee’s ownership interest must be established by:

(1)filing in the application or patent evidence 
of a chain of title from the original owner to the 
assignee and a statement affirming that the documentary 
evidence of the chain of title from the original 
owner to the assignee was, or concurrently is 
being, submitted for recordation pursuant to 37 CFR 
3.11, or

(2)specifying in the record of the application 
or patent where such evidence is recorded in the 
Office (e.g., reel and frame number, etc.). 

The submission with respect to 37 CFR 3.73(b)
to establish ownership must be signed by a party 
authorized to act on behalf of the assignee. See also 
MPEP § 324 as to compliance with 37 CFR 3.73(b). 
A copy of the “Statement Under 37 CFR 3.73 (b),” 
which is reproduced in MPEP § 324, may be sent by 
the examiner to applicant to provide an acceptable 
way to comply with the requirements of 37 CFR 3.73(b). 

(D)Where the attorney or agent of record signs 
the disclaimer, there is no need to comply with 
37 
CFR 3.73(b).

(E)The signature on the disclaimer need not be 
an original signature. Pursuant to 37 CFR 
1.4(d)(1)(ii), the submitted disclaimer can be a copy, 
such as a photocopy or facsimile transmission of an 
original disclaimer.

I.STATUTORY DISCLAIMERS

Under 37 CFR 1.321(a) the owner of a patent may 
disclaim a complete claim or claims of his or her 
patent. This may result from a lawsuit or because he 
or she has reason to believe that the claim or claims 
are too broad or otherwise invalid. If the patent is 
involved in an interference, see 37 CFR 41.121(a).

As noted above, a statutory disclaimer is a statement 
in which a patent owner relinquishes legal rights 
to one or more claims of a patent. A statutory disclaimer 
is not, however, a vehicle for adding or 
amending claims, since there is no provision for such 
in the statute (35 U.S.C. 253) nor the rules (37 CFR 
1.321). Thus, claims of a patent cannot be disclaimed 
in favor of new claims to be added to the patent or an 
amendment to existing claims.

II.TERMINAL DISCLAIMERS

37 CFR 1.321(a) also provides for the filing by an 
applicant or patentee of a terminal disclaimer which 
disclaims or dedicates to the public the entire term or 
any portion of the term of a patent or patent to be 
granted.

37 CFR 1.321(c) specifically provides for the filing 
of a terminal disclaimer in an application or a reexamination 
proceeding for the purpose of overcoming 
a 
nonstatutory double patenting rejection. See MPEP 
§ 804.02.

37 CFR 1.321(d) specifically provides for the filing 
of a terminal disclaimer in an application or a reexamination 
proceeding for the purpose of overcoming a 
nonstatutory double patenting rejection based on a 
U.S. patent or application that is not commonly 
owned but was disqualified under 35 U.S.C. 103(c).

III.PROCESSING

Certificate of Correction Branch

The Certificate of Correction Branch is responsible 
for the handling of all statutory disclaimers filed 
under the first paragraph of 35 U.S.C. 253, whether 
the case is pending or patented, and all terminal disclaimers 
(filed under the second paragraph of 
35 
U.S.C. 253) except for those filed in an application 
or reexamination proceeding pending in a Technology 
Center (TC). This involves:

(A)Determining the compliance of the disclaimer 
with 35 U.S.C. 253 and 37 CFR 1.321 and 3.73;

(B)Notifying applicant or patentee when the disclaimer 
is informal and thus not acceptable;

(C)Recording the disclaimers in the record of the 
application file; and

(D)Providing the disclaimer data for printing in 
the Official Gazette.

IV.TERMINAL DISCLAIMER IN PENDING APPLICATION PRACTICE IN THE TECHNOLOGY CENTERS

Where a terminal disclaimer is filed in an application 
pending in a TC, it will be processed by the paralegal 
of the Office of the Special Program Examiner 
of the TC having responsibility for the application. 
The paralegal will:

(A)Determine compliance with 35 U.S.C. 253and 37 
CFR 1.321 and 3.73, and ensure that the 
appropriate terminal disclaimer fee set forth in 
37 
CFR 1.20(d) is/was applied;

(B)Notify the examiner having charge of the 
application whether the terminal disclaimer is acceptable 
or not;

(C)Where the terminal disclaimer is not acceptable, 
indicate the nature of the informalities so that the 
examiner can inform applicant in the next Office 
action. For an IFW application, complete the IFW terminal 
disclaimer form by checking the “Disapproved”
box and have the form scanned into IFW;

(D)Where the terminal disclaimer is acceptable, 
record the terminal disclaimer in the record of the 
application as set forth below.

The paralegal will record an acceptable terminal 
disclaimer as being present in an application by:

For IFW applications:

(A)Completing the IFW terminal disclaimer form 
by checking the “Approved” box and having the form 
scanned into IFW; and

(B)Entering the terminal disclaimer into PALM 
for the application.

For application files that are maintained in paper:

For paper applications with 08/ and earlier series 
code

(A)Attaching a green label to the file wrapper;

(B)Stamping a notice on the file of the term 
which has been disclaimed (note that the blanks on 
the stamped notice for entering information on the 
patent(s) being disclaimed are no longer filled in);

(C)Endorsing the paper containing the terminal 
disclaimer submission on the “Contents” flap of the 
application file; and

(D)Entering the terminal disclaimer into the 
PALM system records, for the application.

For paper applications with 09/ and later series 
code

(A)Checking a box on the file wrapper which 
states that the terminal disclaimer has been filed (Any 
blanks for entering information on the patent(s) being 
disclaimed are no longer filled in. Note that applications 
with 10/ and later series codes no longer have 
such blanks to complete);

(B)Endorsing the paper containing the terminal 
disclaimer submission on the “Contents” flap of the 
application file; and

(C)Entering the terminal disclaimer into the 
PALM system records, for the application. 

The paralegal completes a Terminal Disclaimer 
Informal Memo to notify the examiner of the nature 
of any informalities in the terminal disclaimer. The 
examiner should notify the applicant of the informalities 
in the next Office action, or by interview with 
applicant if such will expedite prosecution of the 
application. Further, the examiner should initial and 
date the Terminal Disclaimer Informal Memo and 
return it to the paralegal to indicate that the examiner 
has appropriately notified applicant about the terminal 
disclaimer. The paralegal will then discard the Terminal 
Disclaimer Informal Memo.

V.OTHER MATTERS DIRECTED TO TERMINAL DISCLAIMERS

A.Requirements of Terminal Disclaimers

A proper terminal disclaimer must disclaim the terminal 
part of the statutory term of any patent granted 
on the application being examined which would 
extend beyond the expiration date of the full statutory 
term, shortened by any terminal disclaimer, of the 
patent (or of any patent granted on the application) to 
which the disclaimer is directed. Note the exculpatory 
language in the second paragraph of the sample terminal 
disclaimer forms, PTO/SB/25 and PTO/SB/26, 
provided at the end of this Chapter. That language 
(“In making the above disclaimer, the owner does not 
disclaim...”) is permissible in a terminal disclaimer.

A terminal disclaimer filed to obviate a nonstatutory 
double patenting rejection based on a commonly 
owned patent or application must comply with the 
requirements of 37 CFR 1.321(c). The terminal disclaimer 
must state that any patent granted on the 
application being examined will be enforceable only 
for and during the period that it and the patent to 
which the disclaimer is directed or the patent granted 
on the application to which the disclaimer is directed 
are commonly owned. See MPEP § 706.02(1)(2) for 
examples of common ownership, or lack thereof.

A terminal disclaimer filed to obviate a nonstatutory 
double patenting rejection based on a non-commonly 
owned patent or application disqualified under 
35 U.S.C. 103(c) as a result of activities undertaken 
within the scope of a joint research agreement under 
35 U.S.C. 103(c)(2) and (3) must comply with 37 
CFR 1.321(d), which sets forth signature, waiver 
rights and enforceability requirements.

The terminal disclaimer must include a provision:

(1)waiving the right to separately enforce (a) any 
patent granted on that application or the patent being 
reexamined and (b) the reference patent, or any patent 
granted on the reference application which formed the 
basis for the double patenting; and

(2)agreeing that any patent granted on that application 
or patent being reexamined shall be enforceable 
only for and during such period that said patent 
and the reference patent, or any patent granted on the 
reference application, which formed the basis for the 
double patenting are not separately enforced.

A terminal disclaimer must state that the agreement 
is to run with any patent granted on the application 
being examined and is to be binding upon the grantee, 
its successors, or assigns.

A statement of assignee interest in a terminal disclaimer 
that “A and B are the owners of 100% of the 
instant application...” is sufficient to satisfy the 
37 
CFR 1.321(b)(3) requirement that a terminal disclaimer 
“state the present extent of applicant’s or 
assignee’s ownership interest in the patent to be 
granted.” Although the quoted statement does not 
identify what specific percentage is owned by A and 
what specific percentage is owned by B, the statement 
does provide consent to the terminal disclaimer by the 
entirety of the ownership of the application (A and B 
own all of the invention, regardless of the individual 
percentages they own).

 The appropriate one of form paragraphs 14.27.04to 14.27.08 (reproduced below) may be used to provide 
applicant or patent owner with an example of 
acceptable terminal disclaimer language. Additionally, 
copies of forms PTO/SB/25 and PTO/SB/26 (provided 
at the end of this Chapter) may be attached to 
the Office action to provide sample terminal disclaimers.

Pursuant to the last sentence of 35 U.S.C. 253, “any 
patentee or applicant may disclaim or dedicate to the 
public... any terminal part of the term, of the patent 
granted or to be granted”. Accordingly, the disclaimer 
must be of a terminal portion of the term of the entire 
patent to be granted. A disclaimer of a terminal portion 
of the term of an individual claim, or individual 
claims will not be accepted. It is further noted that a 
disclaimer of the term of individual claims would not 
be appropriate since the claims of a pending application 
or proceeding are subject to cancelation, amendment, 
or renumbering. The statute does not provide 
for conditional disclaimers and accordingly, a proposed 
disclaimer which is made contingent on the 
allowance of certain claims cannot be accepted. The 
disclaimer should identify the disclaimant and his or 
her interest in the application and should specify the 
date when the disclaimer is to become effective.

B.Effect of Disclaimers in Continuing Applications 
and in Reissues

A terminal disclaimer filed to obviate a double patenting 
rejection is effective only with respect to the 
application identified in the disclaimer unless by its 
terms it extends to continuing applications. For example, 
a terminal disclaimer filed in a parent application 
normally has no effect on a continuing application 
claiming filing date benefits of the parent application 
under 35 U.S.C. 120. A terminal disclaimer filed in a 
parent application to obviate a double patenting rejection 
does, however, carry over to a continued prosecution 
application (CPA) filed under 37 CFR 1.53(d)
(effective July 14, 2003, CPAs are only available in 
design applications). The terminal disclaimer filed in 
the parent application carries over because the CPA 
retains the same application number as the parent 
application, i.e., the application number to which the 
previously filed terminal disclaimer is directed. If 
applicant does not want the terminal disclaimer to 
carry over to the CPA, applicant must file a petition 
under 37 CFR 1.182, along with the required petition 
fee, requesting the terminal disclaimer filed in the parent 
application not be carried over to the CPA; see 
below “Withdrawing a Terminal Disclaimer” (paragraph 
“A. Before Issuance of Patent”). If applicant 
files a Request for Continued Examination (RCE) of 
an application under 37 CFR 1.114 (which can be 
filed on or after May 29, 2000 for an application filed 
on or after June 8, 1995), any terminal disclaimer 
present will continue to operate, since a new application 
has not been filed, but rather prosecution has 
been continued in the existing application. A petition 
under 37 CFR 1.182, along with the required petition 
fee, may be filed, if withdrawal of the terminal disclaimer 
is to be requested. 

Reissue applications: Where a terminal disclaimer 
was filed in an original application, a copy of that terminal 
disclaimer is not required be filed by applicant 
in the reissue. 

For reissue application files that are maintained in 
paper:

The face of the file wrapper of the reissue application 
should, however, be marked by the examiner in 
order to indicate that a terminal disclaimer has been 
filed for the patent (and will be effective for the patent 
as it will be reissued). Further, a copy of the terminal 
disclaimer should be placed in the reissue application 
file by the Technology Center. 

For IFW reissue applications:

The “Final SPRE Review” form will be filled in to 
indicate that a terminal disclaimer has been filed for 
the patent (and will be effective for the patent as it 
will be reissued). Further, a copy of the terminal disclaimer 
should be scanned into the reissue application 
file history by the Technology Center.

C.Disclaimer Identifies the Wrong Target 
Application or Patent

In some instances a terminal disclaimer filed to 
obviate an obviousness type double patenting rejection 
will identify the wrong target application or 
patent (i.e., an application or patent which is not the 
basis for the double patenting rejection). In these 
instances, a replacement terminal disclaimer identifying 
the correct target application or patent would be 
required by the examiner. Once a correct replacement 
terminal disclaimer is received, the next Office action 
should make it clear that “the second terminal disclaimer 
replaces the first terminal disclaimer, and the 
first terminal disclaimer is thus void.” A second terminal 
disclaimer fee should not be assessed/charged, 
since the first fee is applied to the second terminal disclaimer.

D.Two or More Copending Applications

If two (or more) pending applications are filed, in 
each of which a rejection of one claimed invention 
over the other on the ground of provisional obviousness-
type double patenting (ODP) is proper, the ODP 
rejection will be made in each application. If the ODP 
rejection is the only rejection remaining in the earlier 
filed of the two pending applications, (but the later-
filed application is rejectable on other grounds), 
the examiner should then withdraw that rejection 
and permit the earlier-filed application to issue as a 
patent without a terminal disclaimer. If the ODP rejection 
is the only rejection remaining in the later-filed 
application, (while the earlier-filed application is 
rejectable on other grounds), a terminal disclaimer 
must be required in the later-filed application, before 
the ODP rejection can be withdrawn.

If the ODP rejections in both applications are the 
only rejections remaining in those applications, the 
examiner should then withdraw the ODP rejection in 
the earlier filed application thereby permitting that 
application to issue without need of a terminal disclaimer. 
A terminal disclaimer must be required in the 
later-filed application before the ODP rejection can be 
withdrawn and the application be permitted to issue.

If both applications are filed on the same day, the 
examiner should determine which application claims 
the base invention and which application claims the 
improvement (added limitations). The ODP rejection 
in the base application can be withdrawn without a 
terminal disclaimer, while the ODP rejection in the 
improvement application cannot be withdrawn without 
a terminal disclaimer.

Where there are three applications containing 
claims that conflict such that an ODP rejection is 
made in each application based upon the other two, it 
is not sufficient to file a terminal disclaimer in only 
one of the applications addressing the other two applications. 
Rather, an appropriate terminal disclaimer 
must be filed in at least two of the applications to link 
all three together. This is because a terminal disclaimer 
filed to obviate a double patenting rejection is 
effective only with respect to the application in which 
the terminal disclaimer is filed; it is not effective to 
link the other two applications to each other.

VI. WITHDRAWING A RECORDED TERMINAL DISCLAIMER 

If timely requested, a recorded terminal disclaimer 
may be withdrawn before the application in which it 
is filed issues as a patent, or in a reexamination proceeding, 
before the reexamination certificate issues. 
After a patent or reexamination certificate issues, it is 
unlikely that a recorded terminal disclaimer will be 
nullified. 

A. Before Issuance Of Patent 

While the filing and recordation of an unnecessary 
terminal disclaimer has been characterized as an 
“unhappy circumstance” in In re Jentoft, 392 F.2d 
633, 157 USPQ 363 (CCPA 1968), there is no statutory 
prohibition against nullifying or otherwise canceling 
the effect of a recorded terminal disclaimer 
which was erroneously filed before the patent issues. 
Since the terminal disclaimer would not take effect 
until the patent is granted, and the public has not had 
the opportunity to rely on the terminal disclaimer, 
relief from this unhappy circumstance may be available 
by way of petition or by refiling the application 
(other than by refiling it as a CPA). 

Under appropriate circumstances, consistent with 
the orderly administration of the examination process, the nullification of a recorded terminal disclaimer 
may be addressed by filing a petition under 37 CFR 
1.182 requesting withdrawal of the recorded terminal 
disclaimer. Petitions seeking to reopen the question of 
the propriety of the double patenting rejection that 
prompted the filing of the terminal disclaimer have 
not been favorably considered. The filing of a continuing 
application other than a CPA, while abandoning 
the application in which the terminal disclaimer 
has been filed, will typically nullify the effect of a terminal 
disclaimer. The filing of a Request for Continued 
Examination (RCE) of an application under 
37 
CFR 1.114 will not nullify the effect of a terminal 
disclaimer, since a new application has not been filed, 
but rather prosecution has been continued in the existing 
application.

B.After Issuance Of Patent 

The mechanisms to correct a patent — Certificate 
of Correction (35 U.S.C. 255), reissue (35 U.S.C. 
251), and reexamination (35 U.S.C. 305) — are not 
available to withdraw or otherwise nullify the effect 
of a recorded terminal disclaimer. As a general principle, 
public policy does not favor the restoration to the 
patent owner of something that has been freely dedicated 
to the public, particularly where the public interest 
is not protected in some manner — e.g., 
intervening rights in the case of a reissue patent. See, 
e.g., Altoona Publix Theatres v. American Tri-Ergon 
Corp., 294 
U.S. 477, 24 USPQ 308 (1935). 

Certificates of Correction (35 U.S.C. 255) are 
available for the correction of an applicant’s mistake. 
The scope of this remedial provision is limited in 
two 
ways — by the nature of the mistake for which 
correction is sought and the nature of the proposed 
correction. In re Arnott, 19 USPQ2d 1049 (Comm’r 
Pat. 1991). The nature of the mistake for which correction 
is sought is limited to those mistakes that are: 

(A)of a clerical nature, 

(B)of a typographical nature, or 

(C)of a minor character. 

The nature of the proposed correction is limited to 
those situations where the correction does not involve 
changes which would: 

(A)constitute new matter, or 

(B)require reexamination. 

A mistake in filing a terminal disclaimer does not 
fall within any of the categories of mistake for which 
a certificate of correction of applicant’s mistake is 
permissible, and any attempt to remove or nullify the 
effect of the terminal disclaimer would typically 
require reexamination of the circumstances under 
which it was filed. 

Although the remedial nature of reissue (35 U.S.C. 251) is well recognized, reissue is not available to correct all errors. It has been the Office position that reissue is not available to withdraw or otherwise nullify the effect of a terminal disclaimer recorded in an issued patent. First, the reissue statute only authorizes the Director of the USPTO to reissue a patent “for the unexpired part of the term of the original patent.” Since the granting of a reissue patent without the 
effect of a recorded terminal disclaimer would result 
in extending the term of the original patent, reissue 
under these circumstances would be contrary to the 
statute. Second, the principle against recapturing 
something that has been intentionally dedicated to the 
public dates back to Leggett v. Avery, 101 U.S. 256 
(1879). The attempt to restore that portion of the 
patent term that was dedicated to the public to secure 
the grant of the original patent would be contrary to 
this recapture principle. Finally, applicants have the 
opportunity to challenge the need for a terminal disclaimer 
during the prosecution of the application that 
issues as a patent. “Reissue is not a substitute for 
Patent Office appeal procedures.” Ball Corp. v. United 
States, 729 
F.2d 1429, 1435, 221 USPQ 289, 293 
(Fed. Cir. 1984). Where applicants did not challenge 
the propriety of the examiner’s obvious-type double 
patenting rejection, but filed a terminal disclaimer to 
avoid the rejection, the filing of the terminal disclaimer 
did not constitute error within the meaning of 
35 U.S.C. 251. Ex parte Anthony, 230 USPQ 467 (Bd. 
App. 1982), aff’d, No. 84-1357 (Fed. Cir. June 14, 
1985). 

Finally, the nullification of a recorded terminal disclaimer 
would not be appropriate in a reexamination 
proceeding. There is a prohibition (35 U.S.C. 305) 
against enlarging the scope of a claim during a reexamination 
proceeding. As noted by the Board in 
Anthony, supra, if a terminal disclaimer was nullified, 
“claims would be able to be sued upon for a longer 
period than would the claims of the original patent. 
Therefore, the vertical scope, as opposed to the horizontal 
scope (where the subject matter is enlarged), 
would be enlarged.”
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