Editing MPEP 1400
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are: | are: | ||
(A)the claims are too narrow or too broad; | |||
(B)the disclosure contains inaccuracies; | |||
(C)applicant failed to or incorrectly claimed foreign | |||
priority; and | |||
(D)applicant failed to make reference to or incorrectly | |||
made reference to prior copending applications. | |||
An attorney’s failure to appreciate the full scope of | An attorney’s failure to appreciate the full scope of | ||
the invention was held to be an error correctable | the invention was held to be an error correctable | ||
through reissue in the decision of In re Wilder, | through reissue in the decision of In re Wilder, | ||
736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). The | 736 | ||
F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). The | |||
correction of misjoinder of inventors in divisional | correction of misjoinder of inventors in divisional | ||
reissues has been held to be a ground for reissue. See | reissues has been held to be a ground for reissue. See | ||
Line 188: | Line 191: | ||
delayed claim under 35 U.S.C. 119(e) would | delayed claim under 35 U.S.C. 119(e) would | ||
not be required in addition to filing a reissue application.. | not be required in addition to filing a reissue application.. | ||
Section 4503 of the American Inventors Protection | Section 4503 of the American Inventors Protection | ||
Line 4,753: | Line 4,757: | ||
such a period is clearly justified. | such a period is clearly justified. | ||
1442.02Concurrent Litigation [R-5] | |||
In order to avoid duplication of effort, action in | In order to avoid duplication of effort, action in | ||
Line 4,776: | Line 4,780: | ||
of action in the reissue, i.e., to deny a stay of the reissue | of action in the reissue, i.e., to deny a stay of the reissue | ||
proceeding. | proceeding. | ||
¶ 14.08 Action in Reissue Not Stayed — Related Litigation | |||
Terminated | |||
Since the litigation related to this reissue application is terminated | |||
and final, action in this reissue application will NOT be | |||
stayed. Due to the related litigation status of this reissue application, | |||
EXTENSIONS OF TIME UNDER THE PROVISIONS OF | |||
37 CFR 1.136(a) WILL NOT BE PERMITTED. | |||
¶ 14.09 Action in Reissue Not Stayed — Related Litigation | |||
Not Overlapping | |||
While there is concurrent litigation related to this reissue application, | |||
action in this reissue application will NOT be stayed | |||
because there are no significant overlapping issues between the | |||
application and that litigation. Due to the related litigation status | |||
of this reissue application, EXTENSIONS OF TIME UNDER | |||
THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED. | |||
¶ 14.10 Action in Reissue Not Stayed — Applicant’s | |||
Request | |||
While there is concurrent litigation related to this reissue application, | |||
action in this reissue application will NOT be stayed | |||
because of applicant's request that the application be examined at | |||
this time. Due to the related litigation status of this reissue application, | |||
EXTENSIONS OF TIME UNDER THE PROVISIONS | |||
OF 37 CFR 1.136(a) WILL NOT BE PERMITTED. | |||
Where none of (A) through (D) above apply, action | Where none of (A) through (D) above apply, action | ||
Line 4,785: | Line 4,819: | ||
14.11 may be used to suspend action, i.e., stay | 14.11 may be used to suspend action, i.e., stay | ||
action, in a reissue application with concurrent litigation. | action, in a reissue application with concurrent litigation. | ||
¶ 14.11 Action in Reissue Stayed - Related Litigation | |||
In view of concurrent litigation, and in order to avoid duplication | |||
of effort between the two proceedings, action in this reissue | |||
application is STAYED until such time as it is evident to the | |||
examiner that (1) a stay of the litigation is in effect, (2) the litigation | |||
has been terminated, (3) there are no significant overlapping | |||
issues between the application and the litigation, or (4) applicant | |||
requests that the application be examined. | |||
An ex parte reexamination proceeding will not be | An ex parte reexamination proceeding will not be | ||
Line 4,796: | Line 4,846: | ||
because of the statutory (35 U.S.C. 305) requirement | because of the statutory (35 U.S.C. 305) requirement | ||
that ex parte reexamination proceedings be conducted | that ex parte reexamination proceedings be conducted | ||
with special dispatch. See MPEP § 2285 and § 2286. | with special dispatch. See MPEP § | ||
2285 and § 2286. | |||
As to a stay or suspension where reissue proceedings | As to a stay or suspension where reissue proceedings | ||
are merged with inter partes reexamination proceedings, | are merged with inter partes reexamination proceedings, | ||
see 37 CFR 1.937 and MPEP § 2686. | see 37 CFR 1.937 and MPEP § 2686. | ||
1442.03Litigation Stayed [R-3] | |||
All reissue applications, except those under suspension | All reissue applications, except those under suspension | ||
Line 4,832: | Line 4,884: | ||
The TC Special Program Examiner is responsible for | The TC Special Program Examiner is responsible for | ||
oversight of reissue applications with related litigation. | oversight of reissue applications with related litigation. | ||
The purpose of these procedures and those deferring | The purpose of these procedures and those deferring | ||
Line 4,842: | Line 4,895: | ||
sufficient time to be heard. | sufficient time to be heard. | ||
Requests for stays or suspension of action in reissues | |||
where litigation has been stayed may be | |||
answered with form paragraph 14.07. | |||
¶ 14.07 Action in Reissue Not Stayed or Suspended — | |||
Related Litigation Stayed | |||
While there is a stay of the concurrent litigation related to this | |||
reissue application, action in this reissue application will NOT be | |||
stayed or suspended because a stay of that litigation is in effect for | |||
the purpose of awaiting the outcome of these reissue proceedings. | |||
Due to the related litigation status of this reissue application, | |||
EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 | |||
CFR 1.136(a) WILL NOT BE PERMITTED. | |||
1442.04Litigation Involving Patent [R-3] | |||
37 CFR 1.178. Original patent; continuing duty of | 37 CFR 1.178. Original patent; continuing duty of | ||
applicant. | applicant. | ||
(b)In any reissue application before the Office, the applicant | (b)In any reissue application before the Office, the applicant | ||
Line 4,852: | Line 4,922: | ||
was involved, such as interferences, reissues, reexaminations, or | was involved, such as interferences, reissues, reexaminations, or | ||
litigations and the results of such proceedings (see also | litigations and the results of such proceedings (see also | ||
§ 1.173(a)(1)). | § | ||
1.173(a)(1)). | |||
Where the patent for which reissue is being sought | Where the patent for which reissue is being sought | ||
Line 4,877: | Line 4,949: | ||
described, and preferably submitted. The Office is not | described, and preferably submitted. The Office is not | ||
interested in receiving voluminous litigation materials | interested in receiving voluminous litigation materials | ||
which are not relevant to the Office’s consideration of | which are not relevant to the Office’s consideration of | ||
the reissue application. The status of the litigation | the reissue application. The status of the litigation | ||
Line 4,945: | Line 5,023: | ||
and appropriate. | and appropriate. | ||
1442.05Court Ordered Filing of Reissue | |||
Application [R-3] | |||
In most instances, the reissue-examination procedure | In most instances, the reissue-examination procedure | ||
Line 4,967: | Line 5,046: | ||
==1443 Initial Examiner Review== | ==1443 Initial Examiner Review== | ||
As part of an examiner’s preparation for the examination | As part of an examiner’s preparation for the examination | ||
of a reissue application, the Examiner Reissue | of a reissue application, the Examiner Reissue | ||
Guide and Checklist should be consulted for basic | Guide and Checklist should be consulted for basic | ||
Line 4,981: | Line 5,060: | ||
from the original owner to the assignee to determine | from the original owner to the assignee to determine | ||
whether the consent requirement of 37 CFR 1.172 has | whether the consent requirement of 37 CFR 1.172 has | ||
been met. The examiner will compare the consent and | been met. The examiner will compare the consent and | ||
documentary evidence of ownership; the assignee | documentary evidence of ownership; the assignee | ||
Line 4,999: | Line 5,084: | ||
indicated by the documentary evidence is the same | indicated by the documentary evidence is the same | ||
assignee which signed the consent. See MPEP | assignee which signed the consent. See MPEP | ||
§ 1410.01 for further discussion as to the required | § | ||
1410.01 for further discussion as to the required | |||
consent and documentary evidence. | consent and documentary evidence. | ||
Line 5,016: | Line 5,103: | ||
the filing of the reissue application has been | the filing of the reissue application has been | ||
announced in the Official Gazette as provided in | announced in the Official Gazette as provided in | ||
37 CFR 1.11(b). The contents entry on the PALM | 37 | ||
CFR 1.11(b). The contents entry on the PALM | |||
Intranet Contents screen should be checked for the | Intranet Contents screen should be checked for the | ||
presence of “NRE” and “NOTICE OF REISSUE | presence of “NRE” and “NOTICE OF REISSUE | ||
Line 5,034: | Line 5,122: | ||
should not further act on the reissue until 2 months | should not further act on the reissue until 2 months | ||
after announcement of the filing of the reissue has | after announcement of the filing of the reissue has | ||
appeared in the Official Gazette. See MPEP § 1440. | appeared in the Official Gazette. See MPEP § | ||
1440. | |||
The examiner should determine if there is concurrent | The examiner should determine if there is concurrent | ||
litigation, and if so, the status thereof (MPEP | litigation, and if so, the status thereof (MPEP | ||
§ 1442.01), and whether the reissue file wrapper | § | ||
1442.01), and whether the reissue file wrapper | |||
(for reissue application files maintained in paper) or | (for reissue application files maintained in paper) or | ||
file history (for IFW reissue applications) has been | file history (for IFW reissue applications) has been | ||
Line 5,045: | Line 5,137: | ||
The examiner should determine if a protest has | The examiner should determine if a protest has | ||
been filed, and if so, it should be handled as set forth | been filed, and if so, it should be handled as set forth | ||
in MPEP § 1901.06. For a discussion of protests | in MPEP § | ||
1901.06. For a discussion of protests | |||
under 37 CFR 1.291 in reissue applications, see | under 37 CFR 1.291 in reissue applications, see | ||
MPEP § 1441.01. | MPEP § 1441.01. | ||
Line 5,053: | Line 5,147: | ||
to MPEP § 1449.01 before taking any action on the | to MPEP § 1449.01 before taking any action on the | ||
reissue application. | reissue application. | ||
The examiner should verify that all Certificate of | The examiner should verify that all Certificate of | ||
Line 5,061: | Line 5,157: | ||
which the reissue application is based has not expired, | which the reissue application is based has not expired, | ||
either because its term has run or because required | either because its term has run or because required | ||
maintenance fees have not been paid. Once a patent | maintenance fees have | ||
not been paid. Once a patent | |||
has expired, the Director of the USPTO no longer has | has expired, the Director of the USPTO no longer has | ||
the authority under 35 U.S.C. 251 to | the authority under 35 U.S.C. 251 to | ||
reissue the patent. See In re Morgan, 990 F.2d 1230, 26 USPQ2d | reissue the | ||
1392 (Fed. Cir. 1992). See also MPEP § 1415.01. | 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== | ==1444 Review of Reissue Oath/Declaration== | ||
Line 5,088: | Line 5,188: | ||
(C)A statement that all errors which are being | (C)A statement that all errors which are being | ||
corrected in the reissue application up to the time of | corrected in the reissue application up to the time of | ||
filing of the oath/declaration arose without any deceptive | filing of the oath/declaration arose without any deceptive | ||
intention on the part of the applicant; and | intention on the part of the applicant; and | ||
Line 5,115: | Line 5,221: | ||
declaration. | declaration. | ||
A lack of signature on a reissue oath/declaration | ¶ 14.14 Rejection, Defective Reissue Oath or 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 | Claim [1] rejected as being based upon a defective reissue [2] | ||
under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. | |||
The nature of the defect(s) in the [3] is set forth in the discussion | |||
above in this Office action. | |||
Examiner Note: | |||
1.In bracket 1, list all claims in the reissue application. See | |||
MPEP § | |||
706.03(x). | |||
2.This paragraph should be preceded by at least one of the | |||
paragraphs 14.01 to 14.01.04. | |||
3.In brackets 2 and 3, insert either --oath-- or --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 | lack of compliance with 37 CFR 1.175(a) and result in | ||
a rejection, including final rejection, of all the claims | a rejection, including final rejection, of all the claims | ||
Line 5,161: | Line 5,287: | ||
the failure of the initial oath/declaration to comply | the failure of the initial oath/declaration to comply | ||
with 37 CFR 1.175 because an “error” under | with 37 CFR 1.175 because an “error” under | ||
35 U.S.C. 251 upon which reissue can be based was | 35 | ||
U.S.C. 251 upon which reissue can be based was | |||
not identified therein. In reply to the rejection under | not identified therein. In reply to the rejection under | ||
35 U.S.C. 251, a supplemental reissue oath/declaration | 35 U.S.C. 251, a supplemental reissue oath/declaration | ||
must be submitted stating an error under | must be submitted stating an error under | ||
35 U.S.C. 251 which can be relied upon to support the | 35 | ||
U.S.C. 251 which can be relied upon to support the | |||
reissue application. Submission of this supplemental | reissue application. Submission of this supplemental | ||
reissue oath/declaration to obviate the rejection cannot | reissue oath/declaration to obviate the rejection cannot | ||
Line 5,174: | Line 5,302: | ||
oath/declaration is required in reply to the Office | oath/declaration is required in reply to the Office | ||
action in order to properly establish grounds for reissue. | action in order to properly establish grounds for reissue. | ||
A different situation may arise where the initial | A different situation may arise where the initial | ||
Line 5,180: | Line 5,309: | ||
reissue, however, because of changes or amendments | reissue, however, because of changes or amendments | ||
made during prosecution, none of the identified errors | made during prosecution, none of the identified errors | ||
are relied upon any more. A supplemental oath/declaration | 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 | will be needed to identify at least one error nowbeing relied upon as the basis for reissue, even though | ||
Line 5,198: | Line 5,333: | ||
the rejection. | the rejection. | ||
II.SUPPLEMENTAL REISSUE OATH/DECLARATION UNDER 37 CFR 1.175(b)(1): | II.SUPPLEMENTAL REISSUE OATH/DECLARATION | ||
UNDER 37 CFR 1.175(b)(1): | |||
Once the reissue oath/declaration is found to comply | Once the reissue oath/declaration is found to comply | ||
Line 5,206: | Line 5,342: | ||
of error in the patent. During the prosecution of a | of error in the patent. During the prosecution of a | ||
reissue application, amendments are often made | reissue application, amendments are often made | ||
and additional errors in the patent are corrected. A | and | ||
additional errors in the patent are corrected. A | |||
supplemental oath/declaration need not be submitted | supplemental oath/declaration need not be submitted | ||
with each amendment and additional correction. | with each amendment and additional correction. | ||
Line 5,242: | Line 5,379: | ||
When a supplemental oath/declaration under | When a supplemental oath/declaration under | ||
37 CFR 1.175(b)(1) directed to the amendments or | 37 | ||
CFR 1.175(b)(1) directed to the amendments or | |||
other corrections of error is required, the examiner is | other corrections of error is required, the examiner is | ||
encouraged to telephone the applicant and request the | encouraged to telephone the applicant and request the | ||
Line 5,252: | Line 5,390: | ||
use form paragraph 14.05.02 where the action issued | use form paragraph 14.05.02 where the action issued | ||
is a second or subsequent action on the merits. | is a second or subsequent action on the merits. | ||
¶ 14.05.02 Supplemental Oath or Declaration Required | |||
Prior to Allowance | |||
In accordance with 37 CFR 1.175(b)(1), a supplemental reissue | |||
oath/declaration under 37 CFR 1.175(b)(1) must be received | |||
before this reissue application can be allowed. | |||
Claim [1] rejected as being based upon a defective reissue [2] | |||
under 35 U.S.C. 251. See 37 CFR 1.175. The nature of the defect | |||
is set forth above. | |||
Receipt of an appropriate supplemental oath/declaration under | |||
37 CFR 1.175(b)(1) will overcome this rejection under 35 U.S.C. | |||
251. An example of acceptable language to be used in the supplemental | |||
oath/declaration is as follows: | |||
“Every error in the patent which was corrected in the | |||
present reissue application, and is not covered by a prior | |||
oath/declaration submitted in this application, arose without | |||
any deceptive intention on the part of the applicant.” | |||
See MPEP § 1414.01. | |||
Examiner Note: | |||
1.In bracket 1, list all claims in the reissue application. | |||
2.In bracket 2, insert either --oath-- or --declaration--. | |||
3.This form paragraph is used in an Office action to: (a) remind | |||
applicant of the requirement for submission of the supplemental | |||
reissue oath/declaration under 37 CFR 1.175(b)(1) before allowance | |||
and (b) at the same time, reject all the claims since the reissue | |||
application is defective until the supplemental oath/ | |||
declaration is submitted. | |||
4.Do not use this form paragraph if no amendments (or other | |||
corrections of the patent) have been made subsequent to the last | |||
oath/declaration filed in the case; instead allow the case. | |||
5.This form paragraph cannot be used in an Ex parte Quayleaction to require the supplemental oath/declaration, because the | |||
rejection under 35 U.S.C. 251 is more than a matter of form. | |||
6.Do not use this form paragraph in an examiner’s amendment. | |||
The supplemental oath/declaration must be filed prior to mailing | |||
of the Notice of Allowability. | |||
As noted above, the examiner will issue a final | As noted above, the examiner will issue a final | ||
Line 5,354: | Line 5,548: | ||
CFR 1.312 must still be met. This is so, because | CFR 1.312 must still be met. This is so, because | ||
the correction of the patent is an amendment of the | the correction of the patent is an amendment of the | ||
patent, even though no amendment is physically | patent, even though no amendment is physically | ||
entered into the case. Thus, for a reissue oath/declaration | entered into the case. Thus, for a reissue oath/declaration | ||
Line 5,361: | Line 5,561: | ||
==1445 Reissue Application Examined in Same Manner as Original Application== | ==1445 Reissue Application Examined in Same Manner as Original Application== | ||
As stated in 37 CFR 1.176, a reissue application, | As stated in 37 CFR 1.176, a reissue application, | ||
Line 5,419: | Line 5,620: | ||
of the duty of disclosure must be explicit, | of the duty of disclosure must be explicit, | ||
unequivocal, and not subject to other interpretation. | unequivocal, and not subject to other interpretation. | ||
Where a rejection is made based upon such an admission and applicant | Where a rejection is made based upon such an admission | ||
(see form paragraph 14.22 below) and applicant | |||
responds with any reasonable interpretation of the | responds with any reasonable interpretation of the | ||
facts that would not lead to a conclusion of fraud, | facts that would not lead to a conclusion of fraud, | ||
Line 5,428: | Line 5,630: | ||
should also be withdrawn. | should also be withdrawn. | ||
Form paragraph 14.21.09 should be used where the | |||
fraud, inequitable conduct or violation of duty of disclosure | examiner becomes aware of a judicial determination | ||
in | of fraud, inequitable conduct or violation of the duty | ||
of disclosure on the part of the applicant independently | |||
of the record of the case, i.e., the examiner | |||
has external knowledge of the judicial determination. | |||
Form paragraph 14.22 should be used where, in the | |||
application record, there is (a) an explicit, unequivocal | |||
admission by applicant of fraud, inequitable conduct | |||
or violation of the duty of disclosure which is not | |||
subject to other interpretation, or (b) information as to | |||
a judicial determination of fraud, inequitable conduct | |||
or violation of the duty of disclosure on the part of the | |||
applicant. External information which the examiner | |||
believes to be an admission by applicant should never | |||
be used by the examiner, and such external information | |||
should never be made of record in the reissue | |||
application. | |||
If a protest (see MPEP Chapter 1900) is filed in a | |||
reissue application related to a patent involved in a | |||
¶ 14.21.09 Rejection, 35 U.S.C. 251, No Error Without | |||
Deceptive Intention - External Knowledge | |||
Claims [1] rejected under 35 U.S.C. 251 since error “without | |||
any | |||
deceptive intention” has not been established. In view of the | |||
judicial determination in [2] of [3] on the part of applicant, a conclusion | |||
that any error was “without deceptive intention” cannot be | |||
supported. [4] | |||
Examiner Note: | |||
1.In bracket 1, list all claims in the reissue application. | |||
2.In bracket 2, list the Court or administrative body which | |||
made the determination of fraud or inequitable conduct on the | |||
part of applicant. | |||
3.In bracket 3, insert --fraud--, --inequitable conduct-- and/or - | |||
-violation of duty of disclosure--. | |||
4.In bracket 4, point out where in the opinion (or holding) of | |||
the Court or administrative body the determination of fraud, inequitable | |||
conduct or violation of duty of disclosure is set forth. Page | |||
number, column number, and paragraph information should be | |||
given as to the opinion (or holding) of the Court or administrative | |||
body. The examiner may add explanatory comments. | |||
¶ 14.22 Rejection, 35 U.S.C. 251, No Error Without | |||
Deceptive Intention-Evidence in the Application | |||
Claims [1] rejected under 35 U.S.C. 251 since error “without | |||
any deceptive intention” has not been established. In view of the | |||
reply filed on [2], a conclusion that any error was “without deceptive | |||
intention” cannot be supported. | |||
[3] | |||
Examiner Note: | |||
1.In bracket 1, list all claims in the reissue application. | |||
2.In bracket 2, insert the filing date of the reply which provides | |||
an admission of fraud, inequitable conduct or violation of duty of | |||
disclosure, or that there was a judicial determination of same. | |||
3.In bracket 3, insert a statement that there has been an admission | |||
or a judicial determination of fraud, inequitable conduct or | |||
violation of duty of disclosure which provide circumstances why | |||
applicant’s statement in the oath or declaration of lack of deceptive | |||
intent should not be taken as dispositive. Any admission of | |||
fraud, inequitable conduct or violation of duty of disclosure must | |||
be explicit, unequivocal, and not subject to other interpretation. | |||
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 | pending interference proceeding, the reissue application | ||
should be referred to the Office of Patent Legal | should be referred to the Office of Patent Legal | ||
Line 5,455: | Line 5,740: | ||
37 CFR 1.291 in reissue applications. | 37 CFR 1.291 in reissue applications. | ||
1449.01Concurrent Office Proceedings | |||
[R-5] | |||
I.CONCURRENT REEXAMINATION PROCEEDINGS: | I.CONCURRENT REEXAMINATION PROCEEDINGS: | ||
37 CFR 1.565(d) provides that if “a reissue application | 37 CFR 1.565(d) provides that if “a reissue application | ||
Line 5,465: | Line 5,752: | ||
will normally be made to merge the two proceedings | will normally be made to merge the two proceedings | ||
or to suspend one of the two proceedings.” | or to suspend one of the two proceedings.” | ||
37 CFR 1.991 provides that if “a reissue application | 37 | ||
CFR 1.991 provides that if “a reissue application | |||
and an inter partes reexamination proceeding on | and an inter partes reexamination proceeding on | ||
which an order pursuant to 37 CFR 1.931 has been | which an order pursuant to 37 CFR 1.931 has been | ||
Line 5,490: | Line 5,778: | ||
an order granting reexamination has been issued for | an order granting reexamination has been issued for | ||
the reexamination proceeding, the Office of Patent | the reexamination proceeding, the Office of Patent | ||
Legal Administration (OPLA) must be notified that | Legal Administration (OPLA) must be notified that | ||
the proceedings are ready for a decision as to whether | the proceedings are ready for a decision as to whether | ||
Line 5,540: | Line 5,834: | ||
II.CONCURRENT INTERFERENCE PROCEEDINGS | II.CONCURRENT INTERFERENCE PROCEEDINGS | ||
If the original patent is involved in an interference, | If the original patent is involved in an interference, | ||
Line 5,550: | Line 5,845: | ||
III.CONCURRENT REISSUE PROCEEDINGS | III.CONCURRENT REISSUE PROCEEDINGS | ||
Where more than one reissue applications are pending | Where more than one reissue applications are pending | ||
Line 5,595: | Line 5,891: | ||
(4)Explain in detail why the applicant will prevail on priority, | (4)Explain in detail why the applicant will prevail on priority, | ||
(5)If a claim has been added or amended to provoke an | (5)If a claim has been added or amended to provoke an | ||
Line 5,604: | Line 5,901: | ||
where the disclosure provides a constructive reduction to practice | where the disclosure provides a constructive reduction to practice | ||
within the scope of the interfering subject matter. | within the scope of the interfering subject matter. | ||
(c)Examiner. An examiner may require an applicant to add | (c)Examiner. An examiner may require an applicant to add | ||
Line 5,618: | Line 5,922: | ||
(2)Be drawn to patentable subject matter claimed by | (2)Be drawn to patentable subject matter claimed by | ||
another applicant or patentee. | another applicant or patentee. | ||
In appropriate circumstances, a reissue application | In appropriate circumstances, a reissue application | ||
Line 5,709: | Line 6,015: | ||
claims of the original patent and was not “applied for | claims of the original patent and was not “applied for | ||
within two years from the grant of the original | within two years from the grant of the original | ||
patent.” Failure to satisfy the requirement within a | patent.” Failure to satisfy the requirement within a | ||
period (not less than one month) the examiner sets | period (not less than one month) the examiner sets | ||
Line 5,795: | Line 6,107: | ||
requirement and treating the patent claims on the | requirement and treating the patent claims on the | ||
merits, it is too late to obtain an examination on | merits, it is too late to obtain an examination on | ||
the added claims in the reissue application by filing a | the | ||
added claims in the reissue application by filing a | |||
disclaimer of all the original patent claims. If reissue | disclaimer of all the original patent claims. If reissue | ||
applicant wishes to have the newly added claims be | applicant wishes to have the newly added claims be | ||
Line 5,811: | Line 6,124: | ||
Claims elected pursuant to a restriction requirement | Claims elected pursuant to a restriction requirement | ||
will receive a complete examination on the merits, | will receive a complete examination on the merits, | ||
while the non-elected claims (to any added | while the non-elected claims (to any added inven | ||
and will only be examined if filed in a divisional | |||
reissue application. If the reissue application containing | |||
tion(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 | only original unamended claims becomes allowable | ||
first (and no “error” under 35 U.S.C. 251exists), | first (and no “error” under 35 U.S.C. 251exists), | ||
Line 5,891: | Line 6,212: | ||
claims of the original patent. See MPEP § | claims of the original patent. See MPEP § | ||
821.04(a). | 821.04(a). | ||
==1451 Divisional Reissue Applications;Continuation Reissue Applications Where the Parent is Pending== | ==1451 Divisional Reissue Applications;Continuation Reissue Applications Where the Parent is Pending== | ||
35 U.S.C. 251. Reissue of defective patents. | 35 U.S.C. 251. Reissue of defective patents. | ||
The Director may issue several reissued patents for distinct and | The Director may issue several reissued patents for distinct and | ||
Line 5,900: | Line 6,225: | ||
and upon payment of the required fee for a reissue for each of | and upon payment of the required fee for a reissue for each of | ||
such reissued patents. | such reissued patents. | ||
37 CFR 1.177. Issuance of multiple reissue patents. | 37 CFR 1.177. Issuance of multiple reissue patents. | ||
Line 5,910: | Line 6,237: | ||
each of the reissue applications by relationship, application | each of the reissue applications by relationship, application | ||
number and filing date. The Office may correct by certificate of | 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. | 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 | (b)If applicant files more than one application for the reissue | ||
Line 5,936: | Line 6,273: | ||
The court in In re Graff, 111 F.3d 874, 876-77, | The court in In re Graff, 111 F.3d 874, 876-77, | ||
42 USPQ2d 1471, 1473 (Fed. Cir. 1997) stated that | 42 | ||
USPQ2d 1471, 1473 (Fed. Cir. 1997) stated that | |||
“[t]he statute does not prohibit divisional or continuation | “[t]he statute does not prohibit divisional or continuation | ||
reissue applications, and does not place stricter | reissue applications, and does not place stricter | ||
Line 5,953: | Line 6,291: | ||
(TC) Special Program Examiner to the Office of | (TC) Special Program Examiner to the Office of | ||
Patent Legal Administration. | Patent Legal Administration. | ||
I. DIVISIONAL REISSUE APPLICATIONS | I. DIVISIONAL REISSUE APPLICATIONS | ||
37 CFR 1.176(b) permits the examiner to require | 37 CFR 1.176(b) permits the examiner to require | ||
restriction in a reissue application between the original | restriction in a reissue application between the original | ||
claims of the patent and any newly added claims | claims of the patent and any newly added claims | ||
Line 5,965: | Line 6,305: | ||
restriction requirement. | restriction requirement. | ||
In addition, applicant may initiate a division of the | In addition, applicant may initiate a division of the | ||
claims by filing more than one reissue application in | claims by filing more than one reissue application in | ||
accordance with 37 CFR 1.177. The multiple reissue | accordance with 37 CFR 1.177. The multiple reissue | ||
Line 5,978: | Line 6,318: | ||
apply the appropriate double patenting rejections. | apply the appropriate double patenting rejections. | ||
There is no requirement that a family of divisional | There is no requirement that a family of divisional | ||
reissue applications issue at the same time; however, | reissue applications issue at the same time; however, | ||
it is required that they contain a cross reference to | it is required that they contain a cross reference to | ||
Line 5,994: | Line 6,334: | ||
follows: | follows: | ||
Notice: More than one reissue application has | Notice: More than one reissue application has | ||
been filed for the reissue of Patent No. 9,999,999. The | been | ||
filed for the reissue of Patent No. 9,999,999. The | |||
reissue applications are application numbers 09/ | reissue applications are application numbers 09/ | ||
999,994 (the present application), 09/999,995, and 09/ | 999,994 (the present application), 09/999,995, and 09/ | ||
Line 6,001: | Line 6,342: | ||
No. 9,999,999. | No. 9,999,999. | ||
The examiner should object to the specification | The examiner should object to the specification | ||
and require an appropriate amendment if applicant | and require an appropriate amendment if applicant | ||
fails to include such a cross reference to the other reissue | fails to include such a cross reference to the other reissue | ||
applications in the first sentence of the specification | applications in the first sentence of the specification | ||
of each of the reissue applications. | of each of the reissue applications. | ||
Where one of the divisional applications of the | |||
family has issued without the required cross reference | |||
to the other reissue application(s), the examiner will | |||
refer the matter to his/her Supervisory Patent Examiner | |||
(SPE). The SPE will initiate a certificate of correction | |||
under 37 CFR 1.322 to include the appropriate | |||
cross reference in the already issued first reissue | |||
patent before passing the pending reissue application | |||
to issue. Form paragraph 10.19 may be used for such | |||
purpose. After the SPE prepares the memorandum as | |||
per form paragraph 10.19, the patent file with the | |||
memorandum should be forwarded to the Certificates | |||
of Correction Branch for issuance of a certificate. The | |||
examiner should make a reference in the pending | |||
divisional reissue application to the fact that an actual | |||
request for a Certificate of Correction has been initiated | |||
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. | |||
¶ 10.19 Memorandum - Certificate of Correction (Cross- | |||
Reference to Other Reissues in Family) | |||
DATE: [1] | |||
TO: Certificates of Correction Branch | |||
FROM: [2], SPE, Art Unit [3] | |||
SUBJECT: Request for Certificate of Correction | |||
Please issue a Certificate of Correction in U. S. Letters Patent | |||
No. [4] as specified on the attached Certificate. | |||
______________________ | |||
[5], SPE | |||
Art Unit [6] | |||
UNITED STATES PATENT AND TRADEMARK OFFICE | |||
CERTIFICATE | |||
Patent No. [7] | |||
Patented: [8] | |||
The present reissue patent issued from an application that is | |||
one of a family of divisional reissue applications resulting from | |||
Patent No. [9]. The present reissue patent has issued without the | |||
cross reference to the other reissue application(s) of the family | |||
which is required pursuant to 37 CFR 1.177(a). Accordingly, | |||
insert in the first sentence of the specification as follows: | |||
Notice: More than one reissue application has been filed for the | |||
reissue of patent [9]. The reissue applications are [10]. | |||
_________________________ | |||
[11], Supervisory Patent Examiner | |||
Art Unit [12] | |||
Examiner Note: | |||
1In bracket 9, insert the patent number of the patent for which | |||
multiple reissue divisional applications have been filed. | |||
2This is an internal memo and must not be mailed to the applicant. | |||
This memo should accompany the patented file to the Certificates | |||
of Correction Branch as noted in form paragraphs 10.13 and | |||
10.14. | |||
3.In brackets 5 and 11, insert the name of SPE and provide the | |||
signature of the SPE above each line. | |||
4.In brackets 6 and 12, insert the Art Unit number. | |||
5.Two separate pages of USPTO letterhead will be printed | |||
when using this form paragraph. | |||
6.In bracket 10, identify each of the reissue applications | |||
(including the present application) and their relationship within | |||
the family of reissue applications, and to the original patent. | |||
In addition to the amendment to the first sentence | In addition to the amendment to the first sentence | ||
Line 6,048: | Line 6,480: | ||
patent, because original claim 1 would be superseded | patent, because original claim 1 would be superseded | ||
by the reissuance of claim 1 in the other reissue application. | by the reissuance of claim 1 in the other reissue application. | ||
A rejection under 35 U.S.C. 112, in that claim 1 is | A rejection under 35 U.S.C. 112, in that claim 1 is | ||
Line 6,058: | Line 6,491: | ||
The reissue applicant should then be advised to follow | The reissue applicant should then be advised to follow | ||
a procedure similar to the following example: | a procedure similar to the following example: | ||
If there are patent claims 1 – 10 in two divisional | If there are patent claims 1 – 10 in two divisional | ||
Line 6,105: | Line 6,543: | ||
should be accepted by OIPE, since it is an oath/ | should be accepted by OIPE, since it is an oath/ | ||
declaration, even though it may be improper under | declaration, even though it may be improper under | ||
35 U.S.C. 251. The examiner should check the copy | 35 | ||
U.S.C. 251. The examiner should check the copy | |||
of the oath/declaration to ensure that it identifies an | of the oath/declaration to ensure that it identifies an | ||
error being corrected by the divisional reissue application. | error being corrected by the divisional reissue application. | ||
Line 6,136: | Line 6,575: | ||
from a requirement to restrict to distinct inventions or | from a requirement to restrict to distinct inventions or | ||
a requirement to elect species, see MPEP § 1450. | a requirement to elect species, see MPEP § 1450. | ||
II. CONTINUATION REISSUE APPLI- | II. CONTINUATION REISSUE APPLI- | ||
Line 6,144: | Line 6,585: | ||
as called for in the second paragraph of 35 U.S.C. | as called for in the second paragraph of 35 U.S.C. | ||
251. The decision of In re Graff, 111 F.3d 874, | 251. The decision of In re Graff, 111 F.3d 874, | ||
42 USPQ2d 1471 (Fed. Cir. 1997) interprets | 42 | ||
35 U.S.C. 251 to permit multiple reissue patents to | 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 | issue even where the multiple reissue patents are not | ||
for “distinct and separate parts of the thing patented.” | for “distinct and separate parts of the thing patented.” | ||
Line 6,159: | Line 6,602: | ||
places no greater burden on Mr. Graff’s continuation reissue | places no greater burden on Mr. Graff’s continuation reissue | ||
application than upon a continuation of an original | application than upon a continuation of an original | ||
application; § 251[2] neither overrides, enlarges, nor | application; § 251[2] neither overrides, enlarges, nor lim | ||
its the statement in § 251[3] that the provisions of Title 5 | |||
apply to reissues. | |||
111 F.3d at 877, 42 USPQ2d at 1473. Accordingly, | 111 F.3d at 877, 42 USPQ2d at 1473. Accordingly, | ||
Line 6,262: | Line 6,714: | ||
reissue oath/declaration should be accepted by OIPE, | reissue oath/declaration should be accepted by OIPE, | ||
since it is a oath/declaration, albeit improper under | since it is a oath/declaration, albeit improper under | ||
35 U.S.C. 251. The examiner should reject the claims | 35 | ||
of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration | 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 | that does not identify an error being corrected by the | ||
continuation reissue application, and should require a | continuation reissue application, and should require a | ||
Line 6,315: | Line 6,776: | ||
37 CFR 1.121. Manner of making amendments in | 37 CFR 1.121. Manner of making amendments in | ||
application. | application. | ||
(i)Amendments in reissue applications. Any amendment to | (i)Amendments in reissue applications. Any amendment to | ||
the description and claims in reissue applications must be made in | the description and claims in reissue applications must be made in | ||
accordance with § 1.173. | accordance with § 1.173. | ||
37 CFR 1.173. Reissue specification, drawings, and | 37 CFR 1.173. Reissue specification, drawings, and | ||
amendments. | amendments. | ||
(b)Making amendments in a reissue application. An amendment | (b)Making amendments in a reissue application. An amendment | ||
Line 6,364: | Line 6,831: | ||
identified as “New.” In the event that a figure is canceled, the figure | identified as “New.” In the event that a figure is canceled, the figure | ||
must be surrounded by brackets and identified as “Canceled.” | must be surrounded by brackets and identified as “Canceled.” | ||
All changes to the drawing(s) shall be explained, in detail, | All changes to the drawing(s) shall be explained, in detail, begin | ||
ning on a separate sheet accompanying the papers including the | |||
amendment to the drawings. | amendment to the drawings. | ||
Line 6,479: | Line 6,954: | ||
underlined each time they are re-submitted in the reissue | underlined each time they are re-submitted in the reissue | ||
application. | application. | ||
II.THE CLAIMS | II.THE CLAIMS | ||
Line 6,592: | Line 7,072: | ||
type (indicating material added in the subject reissue). | type (indicating material added in the subject reissue). | ||
V.EXAMPLES OF PROPER | V.EXAMPLES OF PROPER AMEND- | ||
MENTS | |||
A substantial number of problems arise in the | A substantial number of problems arise in the | ||
Line 6,807: | Line 7,288: | ||
The requirements for an appeal brief are set forth in | The requirements for an appeal brief are set forth in | ||
37 CFR 41.37 and MPEP § 1206, and they apply | 37 | ||
CFR 41.37 and MPEP § 1206, and they apply | |||
to a reissue application in the same manner that they | to a reissue application in the same manner that they | ||
apply to a non-reissue application. There is, however, | apply to a non-reissue application. There is, however, | ||
Line 6,821: | Line 7,303: | ||
==1455 Allowance and Issue== | ==1455 Allowance and Issue== | ||
I.ISSUE CLASSIFICATION SHEET | I.ISSUE CLASSIFICATION SHEET | ||
Line 6,843: | Line 7,327: | ||
the Issue Classification Slip is prepared in the same | the Issue Classification Slip is prepared in the same | ||
manner as for a non-reissue application. | manner as for a non-reissue application. | ||
For 09/ and later series applications, the patent | |||
number of the original patent which is being reissued | |||
should be placed on the face of the file wrapper above | |||
the box “PREPARED AND APPROVED FOR | |||
ISSUE” just after “(Exr. Initials)” in the line reading | |||
“SURRENDER OF ORIGINAL PATENT________ | |||
(Exr. Initials).” | |||
II. CHANGES TO THE ORIGINAL | II. CHANGES TO THE ORIGINAL | ||
Line 6,861: | Line 7,355: | ||
the following heading, which will be added by the | the following heading, which will be added by the | ||
Publishing Division of the Office of Patent Publication: | Publishing Division of the Office of Patent Publication: | ||
“Matter enclosed in heavy brackets [ ] appears in the original | “Matter enclosed in heavy brackets [ ] appears in the original | ||
Line 6,868: | Line 7,363: | ||
The examiners should see that the specification is | The examiners should see that the specification is | ||
in proper form for printing. Examiners should | in proper form for printing. Examiners should care | ||
fully check the entry of all amendments to ensure that | |||
the changes directed by applicant will be accurately | the changes directed by applicant will be accurately | ||
printed in any reissue patent that may ultimately issue. | printed in any reissue patent that may ultimately issue. | ||
Line 6,884: | Line 7,387: | ||
in the reissue patent, with canceled patent claims | in the reissue patent, with canceled patent claims | ||
being enclosed in brackets. | being enclosed in brackets. | ||
III. CLAIM NUMBERING | III. CLAIM NUMBERING | ||
Line 6,921: | Line 7,426: | ||
with the number of claims indicated as allowable | with the number of claims indicated as allowable | ||
on the Notice of Allowability (Form PTOL-37). | on the Notice of Allowability (Form PTOL-37). | ||
IV. CLAIM DESIGNATED FOR PRINTING | IV. CLAIM DESIGNATED FOR PRINTING | ||
Line 6,939: | Line 7,446: | ||
representative pending allowed claim is designated | representative pending allowed claim is designated | ||
for printing in the Official Gazette. | for printing in the Official Gazette. | ||
V. PROVIDING PROPER FORMAT | V. PROVIDING PROPER FORMAT | ||
Line 6,959: | Line 7,468: | ||
because the correction of format does not correct | because the correction of format does not correct | ||
a 35 U.S.C. 251 error in the patent. | a 35 U.S.C. 251 error in the patent. | ||
VI. PARENT APPLICATION DATA | VI. PARENT APPLICATION DATA | ||
Line 6,970: | Line 7,481: | ||
It sometimes happens that the reissue is a continuation | It sometimes happens that the reissue is a continuation | ||
of another reissue application, and there is also | of another reissue application, and there is also | ||
original-patent parent application data. The examiner | original-patent parent application data. The examiner | ||
should ensure that the parent application data on the | should ensure that the parent application data on the | ||
Line 6,979: | Line 7,496: | ||
statement as to parent application data should be | statement as to parent application data should be | ||
checked carefully for proper bracketing and underlining. | checked carefully for proper bracketing and underlining. | ||
VII. REFERENCES CITED AND PRINTED | VII. REFERENCES CITED AND PRINTED | ||
Line 6,990: | Line 7,510: | ||
cannot be reissued solely for the purpose of adding | cannot be reissued solely for the purpose of adding | ||
citations of additional prior art. | citations of additional prior art. | ||
VIII. EXAMINER'S AMENDMENT AND SUP- | VIII. EXAMINER'S AMENDMENT AND SUP- | ||
Line 7,024: | Line 7,546: | ||
oath or declaration, which must be filed before | oath or declaration, which must be filed before | ||
the application can be counted as an allowance. | the application can be counted as an allowance. | ||
IX. FINAL REVIEW OF THE REISSUE | IX. FINAL REVIEW OF THE REISSUE | ||
Line 7,068: | Line 7,592: | ||
described PALM “flag” before a Notice of Allowance | described PALM “flag” before a Notice of Allowance | ||
can be generated or the PALM transaction for an issue | can be generated or the PALM transaction for an issue | ||
revision can be entered, thereby ensuring that the | revision can be entered, thereby ensuring that the | ||
SPRE is made aware of when the reissue application | SPRE is made aware of when the reissue application | ||
is being allowed so that the SPRE may be able to conduct | is being allowed so that the SPRE may be able to conduct | ||
a final review of the reissue application, if appropriate. | a final review of the reissue application, if appropriate. | ||
When the reissue application has been reviewed | When the reissue application has been reviewed | ||
Line 7,077: | Line 7,608: | ||
should do the following: | should do the following: | ||
== 1457 Design Reissue Applications and Patents== | For IFW reissue applications: | ||
The SPRE should complete the “Final SPRE | |||
Review” form. The SPRE will discard any informal | |||
papers that were forwarded to the SPRE, such as the | |||
informal Reissue Check List that was filled out by the | |||
examiner. The SPRE will then forward (message) the | |||
reissue file to the Office of Patent Legal Administration | |||
(OPLA). The file for any original paper patent | |||
should be forwarded to OPLA. | |||
For reissue application files that are maintained in | |||
paper: | |||
The SPRE should initial the face of the file wrapper, | |||
and forward the reissue file to OPLA. | |||
Along with the reissue file, the file for the original | |||
patent should be forwarded to OPLA. | |||
After leaving the TC, all reissue applications go | |||
through a screening process which is currently performed | |||
in OPLA. The screening process which | |||
includes review of the reissue oath or declaration for | |||
compliance with 37 CFR 1.175, review of the presentation | |||
and entry of reissue amendments for compliance | |||
with 37 CFR 1.173(b), and review of other | |||
matters to ensure adherence to current reissue practices. | |||
The above identified review processes are | |||
appropriate vehicles for correcting errors, identifying | |||
problem areas and recognizing trends, providing | |||
information on the uniformity of practice, and providing | |||
feedback to the TC personnel responsible for processing | |||
and examining reissue applications. | |||
==1457 Design Reissue Applications and Patents== | |||
A reissue application can be filed for a design | A reissue application can be filed for a design | ||
Line 7,246: | Line 7,811: | ||
application, a restriction was thus made, and then | application, a restriction was thus made, and then | ||
applicant failed to file a divisional reissue application | applicant failed to file a divisional reissue application | ||
for a non-elected invention that was canceled in view | for a non-elected invention that was canceled in view | ||
of a restriction requirement (prior to issue of the original | of a restriction requirement (prior to issue of the original | ||
Line 7,345: | Line 7,916: | ||
Cir. 1993). | Cir. 1993). | ||
== | ==1470Public Access of Reissue Applications== | ||
37 CFR 1.11(b) opens all reissue applications filed | 37 CFR 1.11(b) opens all reissue applications filed | ||
Line 7,356: | Line 7,927: | ||
opportunity to submit to the examiner information | opportunity to submit to the examiner information | ||
pertinent to patentability of the reissue application. | pertinent to patentability of the reissue application. | ||
The filing of a continued prosecution application | The filing of a continued prosecution application | ||
Line 7,446: | Line 8,022: | ||
destroyed after the order has been completed. | destroyed after the order has been completed. | ||
See also MPEP § 103. | See also MPEP § 103. | ||
==1480 Certificates of Correction — Office Mistake== | ==1480 Certificates of Correction — Office Mistake== | ||
Line 7,463: | Line 8,039: | ||
have the same effect and operation in law on the trial of actions | have the same effect and operation in law on the trial of actions | ||
for causes thereafter arising as if the same had been originally | for causes thereafter arising as if the same had been originally | ||
issued in such corrected form. The Director may issue a corrected | issued in such corrected form. The Director may issue a corrected | ||
patent without charge in lieu of and with like effect as a certificate | patent without charge in lieu of and with like effect as a certificate | ||
Line 7,542: | Line 8,124: | ||
number or claim and line number. See MPEP § 1485for a discussion of the preparation and submission of | number or claim and line number. See MPEP § 1485for a discussion of the preparation and submission of | ||
a request for a Certificate of Correction. | a request for a Certificate of Correction. | ||
A request for a Certificate of Correction should be | |||
addressed to: | |||
ATTN: Certificate of Correction Branch | |||
Commissioner for Patents | |||
P.O. Box 1450 | |||
Alexandria, VA 22313-1450 | |||
I. THIRD PARTY INFORMATION ON | I. THIRD PARTY INFORMATION ON | ||
MISTAKES IN PATENT | MISTAKES IN PATENT | ||
Third parties do not have standing to demand that | Third parties do not have standing to demand that | ||
the Office issue, or refuse to issue, a Certificate of | the Office issue, or refuse to issue, a Certificate of | ||
Correction. See Hallmark Cards, Inc. v. Lehman, 959 | Correction. See Hallmark Cards, Inc. v. Lehman, 959 | ||
Line 7,563: | Line 8,158: | ||
for issuance of a Certificate of Correction. | for issuance of a Certificate of Correction. | ||
While third parties are permitted to submit information | While third parties are permitted to submit information | ||
about mistakes in patents which information | about mistakes in patents which information | ||
will be reviewed, the Office need not act on that information | will be reviewed, the Office need not act on that information | ||
Line 7,570: | Line 8,165: | ||
for submission of the information by a third party has | for submission of the information by a third party has | ||
not been imposed. The Office may, however, choose | 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 | |||
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 | party, if it desires to do so. Regardless of whether the | ||
third party information is acted upon, the information | third party information is acted upon, the information | ||
Line 7,577: | Line 8,178: | ||
nor be retained by the Office. 37 CFR 1.322(a)(2)(ii). | nor be retained by the Office. 37 CFR 1.322(a)(2)(ii). | ||
When such third party information (about mistakes | When such third party information (about mistakes | ||
in patents) is received by the Office, the Office will | in patents) is received by the Office, the Office will | ||
not correspond with third parties about the information | not correspond with third parties about the information | ||
Line 7,589: | Line 8,190: | ||
stamped, self-addressed post card has been submitted. | stamped, self-addressed post card has been submitted. | ||
See MPEP § 503. | See MPEP § 503. | ||
II. PUBLICATION IN THE OFFICIAL | II. PUBLICATION IN THE OFFICIAL | ||
Line 7,599: | Line 8,202: | ||
(date).” | (date).” | ||
1480.01Expedited Issuance of | |||
Certificates of Correction - | |||
Error Attributable to Office [R- | |||
2] | |||
In an effort to reduce the overall time required in | In an effort to reduce the overall time required in | ||
Line 7,646: | Line 8,254: | ||
(although the Office will make every effort to process | (although the Office will make every effort to process | ||
the request expeditiously). | the request expeditiously). | ||
As in the case of a request for a Certificate of Correction, | |||
a Request for Expedited Issuance of Certificate | |||
of Correction should be addressed to: | |||
ATTN: Certificate of Correction Branch | |||
Commissioner for Patents | |||
P.O. Box 1450 | |||
Alexandria, VA 22313-1450 | |||
==1481 Certificates of Correction - Applicant’s Mistake== | ==1481 Certificates of Correction - Applicant’s Mistake== | ||
Line 7,661: | Line 8,281: | ||
patent, together with the certificate, shall have the same effect and | patent, together with the certificate, shall have the same effect and | ||
operation in law on the trial of actions for causes thereafter | operation in law on the trial of actions for causes thereafter | ||
arising as if the same had been originally issued in such corrected | |||
arising | |||
as if the same had been originally issued in such corrected | |||
form. | form. | ||
Line 7,673: | Line 8,300: | ||
the request must comply with the requirements of this section | the request must comply with the requirements of this section | ||
and be accompanied by a motion under § 41.121(a)(2) or | and be accompanied by a motion under § 41.121(a)(2) or | ||
§ 41.121(a)(3) of this title. | § | ||
41.121(a)(3) of this title. | |||
37 CFR 1.323 relates to the issuance of Certificates | 37 CFR 1.323 relates to the issuance of Certificates | ||
Line 7,682: | Line 8,311: | ||
MPEP § 1401 - § 1460). See Novo Industries, L.P. v. | MPEP § 1401 - § 1460). See Novo Industries, L.P. v. | ||
Micro Molds Corporation, 350 F.3d 1348, | Micro Molds Corporation, 350 F.3d 1348, | ||
69 USPQ2d 1128 (Fed. Cir. 2003) (The Federal Circuit | 69 | ||
USPQ2d 1128 (Fed. Cir. 2003) (The Federal Circuit | |||
stated that when Congress in 1952 defined | stated that when Congress in 1952 defined | ||
USPTO authority to make corrections with prospective | USPTO authority to make corrections with prospective | ||
Line 7,731: | Line 8,361: | ||
The fee for providing a correction of applicant’s | The fee for providing a correction of applicant’s | ||
mistake, other than inventorship, is set forth in | mistake, other than inventorship, is set forth in | ||
37 CFR 1.20(a). The fee for correction of inventorship | 37 | ||
CFR 1.20(a). The fee for correction of inventorship | |||
in a patent is set forth in 37 CFR 1.20(b). | in a patent is set forth in 37 CFR 1.20(b). | ||
1481.01Correction of Assignees’ Names[R-3] | |||
The Fee(s) Transmittal Form portion (PTOL- | The Fee(s) Transmittal Form portion (PTOL- | ||
Line 7,760: | Line 8,395: | ||
(B)include a request for a certificate of correction | (B)include a request for a certificate of correction | ||
under 37 CFR 1.323 along with the fee set forth in | under 37 CFR 1.323 along with the fee set forth in | ||
37 CFR 1.20(a); and | 37 | ||
CFR 1.20(a); and | |||
(C)include the processing fee set forth in 37 CFR | (C)include the processing fee set forth in 37 CFR | ||
Line 7,767: | Line 8,403: | ||
See 37 CFR 3.81(b). | See 37 CFR 3.81(b). | ||
1481.02Correction of Inventors’ Names[R-3] | |||
35 U.S.C. 256. Correction of named inventor. | 35 U.S.C. 256. Correction of named inventor. | ||
Line 7,775: | Line 8,413: | ||
issued patent and such error arose without any deceptive intention | issued patent and such error arose without any deceptive intention | ||
on his part, the Director may, on application of all the parties and | on his part, the Director may, on application of all the parties and | ||
assignees, with proof of the facts and such other requirements as | assignees, with proof of the facts and such other requirements as | ||
may be imposed, issue a certificate correcting such error. | may be imposed, issue a certificate correcting such error. | ||
Line 7,787: | Line 8,431: | ||
In requesting the Office to effectuate a court order | In requesting the Office to effectuate a court order | ||
correcting inventorship in a patent pursuant to | correcting inventorship in a patent pursuant to | ||
35 U.S.C. 256, a copy of the court order and a Certificate | 35 | ||
U.S.C. 256, a copy of the court order and a Certificate | |||
of Correction under 37 CFR 1.323 should be submitted | of Correction under 37 CFR 1.323 should be submitted | ||
to the Certificates of Corrections Branch. | to the Certificates of Corrections Branch. | ||
Line 7,833: | Line 8,478: | ||
and Interferences under part 41, subpart D, of this title, a request | 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 | 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. | § | ||
41.121(a)(2) or § 41.121(a)(3) of this title. | |||
The petition to correct inventorship under 37 CFR | The petition to correct inventorship under 37 CFR | ||
Line 7,865: | Line 8,512: | ||
deceptive intention. | deceptive intention. | ||
If an inventor is not available, or refuses, to submit | If an inventor is not available, or refuses, to submit | ||
a statement, the assignee of the patent may wish to | a statement, the assignee of the patent may wish to | ||
consider filing a reissue application to correct inventorship, | consider filing a reissue application to correct inventorship, | ||
Line 7,891: | Line 8,538: | ||
10.14 set forth below should be used. | 10.14 set forth below should be used. | ||
Similarly, if a request under 37 CFR 1.48(a), (b), or | Similarly, if a request under 37 CFR 1.48(a), (b), or | ||
(c) is filed in a pending application but not acted upon | (c) is filed in a pending application but not acted upon | ||
until after the application becomes a patent, the | 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 | 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. | forth below should be used. | ||
The statutory basis for correction of inventorship | The statutory basis for correction of inventorship | ||
in a patent under 37 CFR 1.324 is 35 U.S.C. 256. It is | 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 | important to recognize that 35 U.S.C. 256 is stricter | ||
than 35 U.S.C. 116, the statutory basis for corrections | than 35 U.S.C. 116, the statutory basis for corrections | ||
of inventorship in applications under 37 CFR 1.48. | of inventorship in applications under 37 CFR 1.48. | ||
35 U.S.C. 256 requires “on application of all the parties | 35 | ||
U.S.C. 256 requires “on application of all the parties | |||
and assignees,” while 35 U.S.C. 116 does not | and assignees,” while 35 U.S.C. 116 does not | ||
have the same requirement. Under 35 U.S.C. 116 and | have the same requirement. Under 35 U.S.C. 116 and | ||
Line 7,916: | Line 8,571: | ||
originally named inventors and assignees, in accordance | originally named inventors and assignees, in accordance | ||
with statute (35 U.S.C. 256) and thus the | with statute (35 U.S.C. 256) and thus the | ||
requirement cannot be waived. | requirement cannot be waived. Correction of inventorship | ||
requests under 37 CFR 1.324 should be | |||
directed to the Supervisory Patent Examiner whose | |||
unit handles the subject matter of the patent. Form | |||
paragraphs 10.13 through 10.18 may be used. | |||
¶ 10.13 Petition Under 37 CFR 1.324, Granted | |||
In re Patent No. [1]: | |||
Issue Date: [2]: DECISION | |||
Appl. No.: [3]: GRANTING | |||
Filed: [4]: PETITION | |||
For: [5]: 37 CFR 1.324 | |||
This is a decision on the petition filed [6] to correct inventorship | |||
under 37 CFR 1.324. | |||
The petition is granted. | |||
The patented file is being forwarded to Certificate of Corrections | |||
Branch for issuance of a certificate naming only the actual | |||
inventor or inventors. | |||
_______________________ | |||
[7] | |||
Supervisory Patent Examiner, | |||
Art Unit [8], | |||
Technology Center [9] | |||
[10] | |||
Examiner Note: | |||
1.Petitions to correct inventorship of an issued patent are | |||
decided by the Supervisory Patent Examiner, as set forth in the | |||
Commissioner’s memorandum dated June 2, 1989. | |||
2.In bracket 10, insert the correspondence address of record. | |||
3.This form paragraph is printed with the USPTO letterhead. | |||
4.Prepare Certificate using form paragraph 10.15. | |||
¶ 10.14 Treatment of Request Under 37 CFR 1.48 Petition | |||
Under 37 CFR 1.324, Petition Granted | |||
In re Patent No. [1]: | |||
Issue Date: [2]: DECISION | |||
Appl. No.: [3]: GRANTING | |||
Filed: [4]: PETITION | |||
For: [5]: 37 CFR 1.324 | |||
This is a decision on the request under 37 CFR 1.48, filed [6]. | |||
1. | In view of the fact that the patent has already issued, the request | ||
under 37 CFR 1.48 has been treated as a petition to correct inventorship | |||
under 37 CFR 1.324. | |||
The petition is granted. | |||
The patented file is being forwarded to Certificate of Corrections | |||
Branch for issuance of a certificate naming only the actual | |||
of | inventor or inventors. | ||
_______________________ | |||
[7] | |||
Supervisory Patent Examiner, | |||
Art Unit [8], | |||
Technology Center [9] | |||
[10] | |||
Examiner Note: | |||
1.Petitions to correct inventorship of an issued patent are | |||
decided by the Supervisory Patent Examiner, as set forth in the | |||
Commissioner’s memorandum dated June 2, 1989. | |||
2.This form paragraph is printed with the USPTO letterhead. | |||
3.Prepare Certificate using form paragraph 10.15. | |||
4.In bracket 10, insert the correspondence address of record. | |||
¶ 10.15 Memorandum - Certificate of Correction | |||
(Inventorship) | |||
DATE: [1] | |||
TO: Certificates of Correction Branch | |||
FROM: [2], SPE, Art Unit [3] | |||
SUBJECT: Request for Certificate of Correction | |||
Please issue a Certificate of Correction in U. S. Letters Patent | |||
No. [4] as specified on the attached Certificate. | |||
______________________ | |||
[5], SPE | |||
Art Unit [6] | |||
UNITED STATES PATENT AND TRADEMARK OFFICE | |||
CERTIFICATE | |||
Patent No. [7] | |||
it | Patented: [8] | ||
On petition requesting issuance of a certificate for correction of | |||
inventorship pursuant to 35 U.S.C. 256, it has been found that the | |||
above identified patent, through error and without deceptive | |||
intent, improperly sets forth the inventorship. Accordingly, it is | |||
hereby certified that the correct inventorship of this patent is: | |||
[9] | |||
_________________________ | |||
[10], Supervisory Patent Examiner | |||
Art Unit [11] | |||
Examiner Note: | |||
1.In bracket 9, insert the full name and residence (City, State) | |||
of each actual inventor. | |||
2.This is an internal memo, not to be mailed to applicant, | |||
the | which accompanies the patented file to Certificates of Correction | ||
Branch as noted in form paragraphs 10.13 and 10.14. | |||
3.In brackets 5 and 10, insert name of SPE; in brackets 6 and | |||
11 the Art Unit and sign above each line. | |||
4.Two separate pages of USPTO letterhead will be printed | |||
when using this form paragraph. | |||
and | |||
¶ 10.16 Petition Under 37 CFR 1.324, Dismissed | |||
In re Patent No. [1]: | |||
Issue Date: [2]: DECISION | |||
Appl. No.: [3]: DISMISSING | |||
Filed: [4]: PETITION | |||
For: [5]: 37 CFR 1.324 | |||
This is a decision on the petition filed [6] to correct inventorship | |||
under 37 CFR 1.324. | |||
The petition is dismissed. | |||
( | A petition to correct inventorship as provided by 37 CFR 1.324requires (1) a statement from each person who is being added as | ||
an inventor that the inventorship error occurred without any | |||
deceptive intention on their part, (2) a statement from the current | |||
named inventors (including any “inventor” being deleted) who | |||
have not submitted a statement as per “(1)” 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 “(1)” and “(2)” | |||
agreeing to the change of inventorship in the patent; such statement | |||
must comply with the requirements of 37 CFR 3.73(b); and | |||
(4) the fee set forth in 37 CFR 1.20(b).This petition lacks item(s) | |||
[7]. | |||
_______________________ | |||
[8] | |||
Supervisory Patent Examiner, | |||
Art Unit [9], | |||
Technology Center [10] | |||
[11] | |||
Examiner Note: | |||
1.If each of the four specified items has been submitted but one | |||
a | or more is insufficient, the petition should be denied. See paragraph | ||
10.17. However, if the above noted deficiency can be cured | |||
by the submission of a renewed petition, a dismissal would be | |||
appropriate. | |||
2.If the petition includes a request for suspension of the rules | |||
(37 CFR 1.183) of one or more provisions of 37 CFR 1.324 that | |||
are required by the statute (35 U.S.C. 256), form paragraph 10.18should follow this form paragraph. | |||
( | 3.In bracket 7, pluralize as necessary and insert the item number( | ||
s) which are missing. | |||
4.In bracket 11, insert correspondence address of record. | |||
5.This form paragraph is printed with the USPTO letterhead. | |||
¶ 10.17 Petition Under 37 CFR 1.324, Denied | |||
In re Patent No. [1]: | |||
Issue Date: [2]:DECISION DENYING PETITION | |||
Appl. No.: [3]:37 CFR 1.324 | |||
1. | |||
Filed: [4]: | |||
For: [5]: | |||
This is a decision on the petition filed [6] to correct inventorship | |||
under 37 CFR 1.324. | |||
The petition is denied. | |||
[7] | |||
_______________________ | |||
[8] | |||
Supervisory Patent Examiner, | |||
Art Unit [9], | |||
Technology Center [10] | |||
[11] | |||
Examiner Note: | |||
1.In bracket 7, a full explanation of the deficiency must be provided. | |||
2.If the petition lacks one or more of the required parts set forth | |||
in 37 CFR 1.324, it should be dismissed using form paragraph | |||
10.14 or 10.20, rather than being denied. | |||
3.In bracket 11, insert correspondence address of record. | |||
In | |||
4.This form paragraph is printed with the USPTO letterhead. | |||
¶ 10.18 Waiver of Requirements of 37 CFR 1.324 Under 37 | |||
CFR 1.183, Dismissed | |||
Suspension of the rules under 37 CFR 1.183 may be granted | |||
for any requirement of the regulations which is not a requirement | |||
of the statutes. In this instance, 35 U.S.C. 256 requires [1]. | |||
Accordingly, the petition under 37 CFR 1.183 is dismissed as | |||
moot. | |||
Examiner Note: | |||
the | 1. This form paragraph should follow form paragraph 10.16whenever the petition requests waiver of one or more of the provisions | ||
of 37 CFR 1.324 that are also requirements of 35 U.S.C. | |||
256. | |||
2. If the petition requests waiver of requirements of 37 CFR | |||
1.324 that are not specific requirements of the statute (i.e., the fee | |||
or the oath or declaration by all inventors), the application must be | |||
forwarded to a petitions attorney in the Office of the Deputy Commissioner | |||
for Patent Examination Policy for decision. | |||
1481.03Correction of 35 U.S.C. 119 and | |||
35 U.S.C. 120 Benefits [R-5] | |||
( | 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: | |||
as | |||
of | |||
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 | |||
the | 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 | |||
of | 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 | |||
35 U.S.C. 253. Disclaimer. | (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. | |||
UNITED STATES PATENT AND TRADEMARK | |||
OFFICE CERTIFICATE OF CORRECTION | |||
Patent No. :9,999,999 | |||
Application No. :10/999,999 | |||
Issue Date :May 1, 2002 | |||
Inventor(s) :Eli Y. Rosenthal | |||
It is certified that error appears in the above-identified | |||
patent and that said Letters Patent is hereby corrected as | |||
shown below: | |||
In the drawings, Sheet 3, Fig. 3, the reference numeral | |||
225 should be applied to the plate element attached to the | |||
support member 207: | |||
Column 2, line 68 and column 3, lines 3, 8 and 13, for | |||
the claim reference numeral '2', each occurrence, should | |||
read -1-. | |||
Column 7, lines 45 to 49, the left-hand formula should | |||
appear as follows: | |||
-R3 -CHF | |||
Column 8, Formula XVII, that portion of the formula | |||
reading “-CHClCH-” should read --CHFCH2 --; line 5, | |||
“chlorine” should be changed to --fluorine--. | |||
Column 10, line 29, cancel the text beginning with “12. | |||
A sensor device” to and ending “active strips.” in column | |||
11, line 10, and insert the following claim: | |||
12. A control circuit of the character set forth in claim | |||
4 and for an automobile having a convertible top, and | |||
including; means for moving the top between a raised and | |||
lowered retracted position; and control means responsive | |||
to a sensor relay for energizing the top moving means for | |||
moving said top from a retracted position to a raised position. | |||
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. | |||
Certificate of Correction | |||
PTO/SB/44 (04-05) | |||
Approved for use through 04/30/2007. OMB 0651-0033 | |||
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE | |||
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. | |||
(Also Form PTO-1050) | |||
UNITED STATES PATENT AND TRADEMARK OFFICE | |||
CERTIFICATE OF CORRECTION | |||
Page _____ of _____ | |||
PATENT NO. : | |||
APPLICATION NO.: | |||
ISSUE DATE : | |||
INVENTOR(S) : | |||
It is certified that an error appears or errors appear in the above-identified patent and that said Letters Patent | |||
is hereby corrected as shown below: | |||
MAILING ADDRESS OF SENDER (Please do not use customer number below): | |||
This collection of information is required by 37 CFR 1.322, 1.323, and 1.324. 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 1.14. This collection is estimated to take 1.0 hour 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: Attention Certificate of Corrections Branch,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: COCIN | |||
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. | |||
==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 | |||
to the | part or in entirety) of a patent or of a patent to be | ||
of the patent | 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. | |||
in the | 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 | ||
by | 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) | (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) | (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: | |||
the | |||
( | (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 | 37 | ||
CFR | 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; | |||
(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, | (D)Where the terminal disclaimer is acceptable, | ||
Line 8,955: | Line 10,119: | ||
Disclaimer Informal Memo. | Disclaimer Informal Memo. | ||
V.OTHER MATTERS DIRECTED TO TERMINAL DISCLAIMERS | |||
V.OTHER MATTERS DIRECTED TO | |||
TERMINAL DISCLAIMERS | |||
A.Requirements of Terminal Disclaimers | A.Requirements of Terminal Disclaimers | ||
A proper terminal disclaimer must disclaim the terminal | A proper terminal disclaimer must disclaim the terminal | ||
part of the statutory term of any patent granted | part of the statutory term of any patent granted | ||
on the application being examined which would | on the application being examined which would | ||
Line 8,983: | Line 10,153: | ||
are commonly owned. See MPEP § 706.02(1)(2) for | are commonly owned. See MPEP § 706.02(1)(2) for | ||
examples of common ownership, or lack thereof. | examples of common ownership, or lack thereof. | ||
A terminal disclaimer filed to obviate a nonstatutory | A terminal disclaimer filed to obviate a nonstatutory | ||
Line 8,992: | Line 10,164: | ||
CFR 1.321(d), which sets forth signature, waiver | CFR 1.321(d), which sets forth signature, waiver | ||
rights and enforceability requirements. | rights and enforceability requirements. | ||
The terminal disclaimer must include a provision: | The terminal disclaimer must include a provision: | ||
Line 9,034: | Line 10,208: | ||
at the end of this Chapter) may be attached to | at the end of this Chapter) may be attached to | ||
the Office action to provide sample terminal disclaimers. | the Office action to provide sample terminal disclaimers. | ||
Pursuant to the last sentence of 35 U.S.C. 253, “any | Pursuant to the last sentence of 35 U.S.C. 253, “any | ||
Line 9,134: | Line 10,309: | ||
disclaimer fee should not be assessed/charged, | disclaimer fee should not be assessed/charged, | ||
since the first fee is applied to the second terminal disclaimer. | since the first fee is applied to the second terminal disclaimer. | ||
D.Two or More Copending Applications | D.Two or More Copending Applications | ||
Line 9,145: | Line 10,321: | ||
filed of the two pending applications, (but the later- | filed of the two pending applications, (but the later- | ||
filed application is rejectable on other grounds), | filed application is rejectable on other grounds), | ||
the examiner should then withdraw that rejection | the | ||
and permit the earlier-filed application to issue as a | 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 | patent without a terminal disclaimer. If the ODP rejection | ||
is the only rejection remaining in the later-filed | is the only rejection remaining in the later-filed | ||
application, (while the earlier-filed application is | application, (while the earlier-filed application is | ||
rejectable on other grounds), a terminal disclaimer | rejectable on other grounds), a terminal disclaimer | ||
must be required in the later-filed application, before | must be required in the later-filed application, before | ||
the ODP rejection can be withdrawn. | the ODP rejection can be withdrawn. | ||
Line 9,185: | Line 10,369: | ||
link the other two applications to each other. | link the other two applications to each other. | ||
VI. WITHDRAWING A RECORDED | VI.WITHDRAWING A RECORDED TER- | ||
MINAL DISCLAIMER | |||
If timely requested, a recorded terminal disclaimer | If timely requested, a recorded terminal disclaimer | ||
Line 9,212: | Line 10,397: | ||
Under appropriate circumstances, consistent with | Under appropriate circumstances, consistent with | ||
the orderly administration of the examination process, the nullification of a recorded terminal disclaimer | the orderly administration of the examination process, | ||
the nullification of a recorded terminal disclaimer | |||
may be addressed by filing a petition under 37 CFR | may be addressed by filing a petition under 37 CFR | ||
1.182 requesting withdrawal of the recorded terminal | 1.182 requesting withdrawal of the recorded terminal | ||
Line 9,278: | Line 10,470: | ||
which it was filed. | 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 | Although the remedial nature of reissue (35 U.S.C. | ||
effect of a recorded terminal disclaimer would result | 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 | in extending the term of the original patent, reissue | ||
under these circumstances would be contrary to the | under these circumstances would be contrary to the | ||
Line 9,311: | Line 10,514: | ||
Anthony, supra, if a terminal disclaimer was nullified, | Anthony, supra, if a terminal disclaimer was nullified, | ||
“claims would be able to be sued upon for a longer | “claims would be able to be sued upon for a longer | ||
period than would the claims of the original patent. | period than would the claims of the original patent. | ||
Therefore, the vertical scope, as opposed to the horizontal | Therefore, the vertical scope, as opposed to the horizontal | ||
scope (where the subject matter is enlarged), | scope (where the subject matter is enlarged), | ||
would be enlarged.” | would be enlarged.” | ||