MPEP 1400: Difference between revisions

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Chapter 1400 Correction of Patents

1400 [No Text][edit | edit source]

1400.01Introduction[edit | edit source]

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

(A)by reissue,

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

(C)by disclaimer, and

(D)by reexamination.

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

1401 Reissue[edit | edit source]

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

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

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

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

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

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

1402 Grounds for Filing[edit | edit source]

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

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

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

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

The most common bases for filing a reissue application are:

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

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

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

1403 Diligence in Filing[edit | edit source]

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

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

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

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

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

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

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

1404 Submission of Papers Where Reissue Patent Is in Litigation[edit | edit source]

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

1405 Reissue and Patent Term[edit | edit source]

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

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

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

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

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

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

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

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

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

1406 Citation and Consideration of References Cited in Original Patent[edit | edit source]

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

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

(A) a legible copy of each foreign patent,

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

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

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

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

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

1410 Content of Reissue Application[edit | edit source]

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

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

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

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

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

. . .

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

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

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

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

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

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

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

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

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

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

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

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

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

1410.01 Reissue Applicant, Oath or Declaration, and Consent of all Assignees[edit | edit source]

37 CFR 1.172. Applicants, assignees.

(a) A reissue oath must be signed and sworn to or declaration made by the inventor or inventors except as otherwise provided (see §§ 1.42, 1.43, 1.47), and must be accompanied by the written consent of all assignees, if any, owning an undivided interest in the patent, but a reissue oath may be made and sworn to or declaration made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. All assignees consenting to the reissue must establish their ownership interest in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(b) of this chapter.

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

37 CFR 3.73. Establishing right of assignee to take action.

. . .

(b)

(1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:

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

(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or

(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.

(c) For patent matters only:

(1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.

(2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.

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

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

I.CONSENT TO THE REISSUE

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

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

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

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

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

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

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

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

II.PROOF OF OWNERSHIP OF ASSIGNEE

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

(A) filing in the reissue application documentary evidence of a chain of title from the original owner to the assignee; or

(B) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).

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

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

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

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

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

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

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

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

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

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

1411 Form of Specification[edit | edit source]

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Twice reissued patent:

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

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

1411.01 Certificate of Correction or Disclaimer in Original Patent[edit | edit source]

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

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

1411.02 New Matter[edit | edit source]

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

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

1412 Content of Claims[edit | edit source]

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

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

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

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

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

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

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

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

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

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

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

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

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

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

1412.02Recapture of Canceled SubjectMatter [R-5]

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

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

I.THREE STEP TEST FOR RECAPTURE:

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

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

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

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

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

A.The First Step - Was There Broadening?

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

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

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

1.The Two Sub-Steps:

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

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

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

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

2.Examples of the Pannu Second Step Analysis:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The following discussion is provided for analyzing the reissue claims.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

In this case, there is recapture.

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

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

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

In this case, there is no recapture.

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

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

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

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

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

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

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

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

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

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

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

A patentee may file a reissue application to permit consideration of process claims which qualify for 35 U.S.C. 103(b) treatment if a patent is granted on an application entitled to the benefit of 35 U.S.C. 103(b), without an election having been made as a result of.. error without deceptive intent. See MPEP §

706.02(n). This is not to be considered a recapture. The addition of process claims, however, will generally be considered to be a broadening of the invention (Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such addition must be applied for within two years of the grant of the original patent. See also MPEP § 1412.03 as to broadened claims.

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

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

IV.REJECTION BASED UPON RECAPTURE:

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

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

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

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

[2]

Examiner Note:

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

1412.02.

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

Flowchart - Reissue Recapture - Determining its presence or absence

1412.03Broadening Reissue Claims [R-3]

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

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

I. MEANING OF “BROADENED REISSUE CLAIM”

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

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

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

II. SCOPE OF DEPENDENT CLAIM ENLARGED-NOT BROADENING

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

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

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

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

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

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

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

IV. WHEN A BROADENED CLAIM CAN BE PRESENTED

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

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

See also the following cases which pertain to broadened reissues:

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

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

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

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

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

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

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

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

Examiner Note:

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

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

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

Examiner Note:

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

V. BROADENING REISSUE - OATH/ DECLARATION REQUIREMENTS

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

1412.04Correction of Inventorship [R-5]

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

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

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

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

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

See MPEP § 1481 for the procedure to be followed

to obtain a Certificate of Correction for correction of inventorship.

II.REISSUE AS A VEHICLE FOR CORRECTING INVENTORSHIP

Where the provisions of 35 U.S.C. 256 and

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

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

The correction of inventorship does not enlarge the

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

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

1410.01.

Where a reissue to correct inventorship also

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

The reissue application with its reissue oath or declaration

under 37 CFR 1.175 provides a complete mechanism to correct inventorship. See A.F. Stoddard

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

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

1413 Drawings[edit | edit source]

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

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

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

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

AMENDMENT OF DRAWINGS

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

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

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

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

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

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

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

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

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

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

1414 Content of Reissue Oath/Declaration[edit | edit source]

37 CFR 1.175. Reissue oath or declaration.

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

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

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

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

(i) With any amendment prior to allowance; or

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

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

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

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

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

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

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

Reissue oaths or declarations must contain the following:

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

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

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

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

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

(D)The information required by 37 CFR 1.63.

These elements will now be discussed:

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

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

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

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

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

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

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

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

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

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

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

1414. [1]

Examiner Note:

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

2.Form paragraph 14.14 must follow this form paragraph.

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

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

defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). A change or departure from the original specification or claims represents an “error” in the original patent under 35 U.S.C. 251. See MPEP §

1402 for a discussion of grounds for filing a reissue that may constitute the “error” required by 35 U.S.C. 251. Not all changes with respect to the patent constitute the “error” required by 35 U.S.C. 251.

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

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

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

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

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

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

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

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

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

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

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

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

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

Examiner Note:

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

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

3.Form paragraph 14.14 must follow this form paragraph.

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

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

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

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

Examiner Note:

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

2.Form paragraph 14.14 must follow this form paragraph.

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

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

Examiner Note:

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

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

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

3.Form paragraph 14.14 must follow this form paragraph.

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

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

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

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

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

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

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

Examiner Note:

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

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

3.Form paragraph 14.14 must follow.

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

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

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

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

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

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

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

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

Examiner Note:

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

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

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

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

Depending on the circumstances, either form PTO/

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

Reissue Application Declaration by the Inventor

Reissue Application Declaration by the Inventor (page 2)

Privacy Act Statment

Reissue Application Declaration by the Assognee

Reissue Application Declaration by the Assognee (page 2)

Privacy Act Statment

1414.01Supplemental Reissue Oath/ Declaration [R-5]

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

The supplemental reissue oath/declaration must

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

An example of acceptable language is as follows:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

III.SUPPLEMENTAL OATH/DECLARA- TION IN BROADENING REISSUE

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

If a joint inventor refuses or cannot be found or

reached to sign a supplemental oath/declaration, a supplemental oath/declaration listing all the inventors, and signed by all the available inventors may be filed provided it is accompanied by a petition under 37 CFR 1.183 along with the petition fee, requesting waiver of the signature requirement of the nonsigning inventor.

SUPPLEMENTAL DECLARATION FOR REISSUE PATENT APPLICATION TO CORRECT “ERRORS” STATEMENT (37 CFR 1.175) PTO/SB/51S (09-04) Approved for use through 04/30/2007. OMB 0651-0033 U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number. Attorney Docket Number First Named Inventor COMPLETE if known Application Number Filing Date Art Unit SUPPLEMENTAL DECLARATION FOR REISSUE PATENT APPLICATION TO CORRECT “ERRORS” STATEMENT (37 CFR 1.175) Examiner Name I/We hereby declare that: Every error in the patent which was corrected in the present reissue application, and which is not covered by the prior oath(s) and/or declaration(s) submitted in this application, arose without any deceptive intention on the part of the applicant. I/We hereby declare that all statements made herein of my/our own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001 and that such willful false statements may jeopardize the validity of the application or any patent issued thereon. Name of Sole or First Inventor: A petition has been filed for this unsigned inventor Given Name (first and middle [if any]) Family Name or Surname Inventor’s SignatureDate Name of Second Inventor: A petition has been filed for this unsigned inventor Given Name (first and middle [if any]) Family Name or Surname Inventor’s SignatureDate Name of Third Inventor: A petition has been filed for this unsigned inventor Given Name (first and middle [if any]) Family Name or Surname Inventor’s SignatureDate Name of Fourth Inventor: A petition has been filed for this unsigned inventor Given Name (first and middle [if any]) Family Name or SurnameInventor’s SignatureDate Additional inventors or legal representatives(s) are being named on the __________ supplemental sheets PTO/SB/02A or 02LR attached hereto. This collection of information is required by 37 CFR 1.175. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1.8 minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO:Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2. Doc Code:

1415 Reissue Application and Issue Fees[edit | edit source]

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

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

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

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

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

II.APPLICATION SIZE FEE

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

III.EXCESS CLAIMS FEES

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

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

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

Example 1:

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

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

Example 2:

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

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

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

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

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

IV.ISSUE FEE

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

V.REISSUE APPLICATION FEE TRANS- MITTAL FORM

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

Reissue Application Fee Transmittal Form

Privacy Act Statment Privacy Act Statement ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your submission of the attached form related to a patent application or patent. Accordingly, pursuant to the requirements of the Act, please be advised that: (1) the general authority for the collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark Office is to process and/or examine your submission related to a patent application or patent. If you do not furnish the requested information, the U.S. Patent and Trademark Office may not be able to process and/or examine your submission, which may result in termination of proceedings or abandonment of the application or expiration of the patent. The information provided by you in this form will be subject to the following routine uses: 1. The information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of records may be disclosed to the Department of Justice to determine whether disclosure of these records is required by the Freedom of Information Act. 2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the course of settlement negotiations. 3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a request involving an individual, to whom the record pertains, when the individual has requested assistance from the Member with respect to the subject matter of the record. 4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having need for the information in order to perform a contract. Recipients of information shall be required to comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m). 5. A record related to an International Application filed under the Patent Cooperation Treaty in this system of records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty. 6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)). 7. A record from this system of records may be disclosed, as a routine use, to the Administrator, General Services, or his/her designee, during an inspection of records conducted by GSA as part of that agency’s responsibility to recommend improvements in records management practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the GSA regulations governing inspection of records for this purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not be used to make determinations about individuals. 8. A record from this system of records may be disclosed, as a routine use, to the public after either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record was filed in an application which became abandoned or in which the proceedings were terminated and which application is referenced by either a published application, an application open to public inspection or an issued patent. 9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.

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

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

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

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

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

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

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

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

PAYMENT OF MAINTENANCE FEES WHERE THE PATENT HAS BEEN REISSUED

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

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

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

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

1416 No Physical Surrender of Original Patent[edit | edit source]

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

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

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

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

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

Example 1:

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

Example 2:

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

Example 3:

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

Example 4:

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

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

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

Example 5:

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

Example 6:

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

Example 7:

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

Example 8:

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

Example 9:

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

1417 Claim for Benefit Under 35 U.S.C. 119(a)-(d)[edit | edit source]

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

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

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

(A)the application number of the foreign application;

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

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

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

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

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

201.14(a).

1418 Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known to be Material to Patentability[edit | edit source]

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

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

1.173(a)(1)).

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

In addition, a reissue application is subject to the same duty of disclosure requirements as is any other nonprovisional application. The provisions of 37 CFR 1.63 require acknowledgment in the reissue oath or declaration of the “duty to disclose to the Office all information known to the [applicants] to be material to patentability as defined in §

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

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

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

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

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

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

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

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

Examiner Note:

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

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

1430 Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette[edit | edit source]

37 CFR 1.11. Files open to the public.

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

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

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

A notice of a reissue application in the Official Gazette should be published prior to any examination of the application. If an inadvertent failure to publish notice of the filing of the reissue application in the Official Gazette is recognized later in the examination, action should be taken to have the notice published as quickly as possible, and action on the application may be delayed until two months after the

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

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

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

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

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

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

1002.02(b)) in granting petitions for access to such applications.

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

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

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

1440 Examination of Reissue Application[edit | edit source]

37 CFR 1.176. Examination of reissue.

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

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

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

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

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

1441 Two-Month Delay Period[edit | edit source]

37 CFR 1.176 provides that reissue applications will be acted on by the examiner in advance of other applications, i.e., “special.” Generally, a reissue application will not be acted on sooner than 2 months after announcement of the filing of the reissue has appeared in the Official Gazette. The 2-month delay is provided in order that members of the public may have time to review the reissue application and submit pertinent information to the Office before the examiner’s action. The pertinent information is submitted in the form of a protest under 37 CFR 1.291(a). For a discussion as to protests under 37 CFR 1.291(a) in reissue applications, see MPEP § 1441.01. As set forth in MPEP § 1901.04, the public should be aware that such submissions should be made as early as possible, since, under certain circumstances, the 2-month delay period will not be employed. For example, the Office may act on a continuation or a divisional reissue application prior to the expiration of the 2-month period after announcement. Additionally, the Office will entertain a petition under 37 CFR 1.182 which is accompanied by the required petition fee (37 CFR 1.17(f)) to act on a reissue application without delaying for 2 months. Accordingly, protestors to reissue applications (see MPEP § 1441.01) cannot automatically assume that a full 2-month delay period will always be available. Appropriate reasons for requesting that the 2-month delay period not be employed include that litigation involving a patent has been stayed to permit the filing of an application for the reissue of the patent. Where the basis for the petition is ongoing litigation, the petition must clearly identify the litigation, and detail the specifics of the litigation that call for prompt action on the reissue application prior to the expiration of the 2-month delay period. Such petitions are decided by the Office of Patent Legal Administration.

1441.01Protest in Reissue Applications[R-3]

A protest pursuant to 37 CFR 1.291 may be filed throughout the pendency of a reissue application, prior to the date of mailing of a notice of allowance, subject to the timing constraints of the examination, as set forth in MPEP § 1901.04. While a reissue application is not published under 37 CFR 1.211, the reissue application is published pursuant to 35 U.S.C. 122(b)(1)(A) via an announcement in the Official Gazette (and public availability of the file content) per 37 CFR 1.11(b). Such a publication does not preclude the filing of a protest. 35 U.S.C. 122(c) states:

“(c) PROTEST AND PRE-ISSUANCE OPPOSITION- The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.” [Emphasis added.]

A protest is precluded after publication for an application for an original patent, as a “form of pre-issuance opposition.” A reissue application is a post- issuance proceeding. A protest filed in a reissue application is not a “form of pre-issuance opposition to the grant of a patent” since the patent to be reissued has already been granted. Thus, the prohibition against the filing of a protest after publication of an application under 35 U.S.C. 122(c) is not applicable to a reissue application and a protest is permitted after publication of the reissue application.

A protest with regard to a reissue application

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

A potential protestor should be aware that reissue applications are taken up “special” and a protest filed outside the 2-month delay period may be

received after action by the examiner. Once the first Office action is mailed (after the 2-month period), a member of the public may still submit pertinent information in the form of a protest under 37 CFR 1.291, and the examiner will consider the information submitted in the next Office action, to the extent that such consideration is appropriate. Where a final rejection has been issued or the prosecution on the merits has been otherwise closed, a petition under 37 CFR 1.182 along with the required petition fee (37 CFR 1.17(f)) for entry of the protest are required. The petition must include an explanation as to why the additional time was necessary and the nature of the protest intended. A copy of the petition must be served upon the applicant in accordance with 37 CFR 1.248. The petition should be directed to the Office of Petitions.

If the protest of a reissue application cannot be filed within the 2-month delay period, the protestor may petition to request (A) an extension of the 2-month period following the announcement in the Official Gazette, and (B) a delay of the examination until the extended period expires. Such a request will be considered only if filed in the form of a petition under 37 CFR 1.182 and accompanied by the petition fee set forth in 37 CFR 1.17(f). The petition under 37 CFR 1.182 and the petition fee must be filed prior to the expiration of the 2-month period following the announcement of the filing of the reissue application in the Official Gazette. The petition must explain why the additional time is necessary and the nature of the protest intended. A copy of the petition must be served upon applicant in accordance with 37 CFR 1.248. The petition should be directed to the appropriate Technology Center (TC) which will forward the petition to the Office of Patent Legal Administration.

If the protest is a “REISSUE LITIGATION” protest, it is particularly important that it be filed early if protestor wishes it considered at the time the Office first acts on the reissue application. Protestors should be aware that the Office will entertain petitions from the reissue applicants under 37 CFR 1.182 to waive the 2-month delay period in appropriate circumstances. Accordingly, protestors to reissue applications cannot automatically assume that the full 2- month delay period will always be available.

The Technology Center (TC) to which the reissue application is assigned is listed in the Official Gazettenotice of filing of the reissue application. Accordingly, the indicated TC should retain jurisdiction over the reissue application file for 2 months after the date of the Official Gazette notice before transferring the reissue application under the procedure set forth in MPEP §

903.08(d).

The publication of a notice of a reissue application in the Official Gazette should be done prior to any examination of the reissue application. If an inadvertent failure to publish notice of the filing of the reissue application in the Official Gazette is recognized later in the examination, action should be taken to have the notice published as quickly as possible, and action on the reissue application may be delayed until 2 months after the publication, allowing for any protests to be filed.

See MPEP § 1901.06 for general procedures on examiner treatment of protests in reissue applications.

1442 Special Status[edit | edit source]

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

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

1442.01Litigation-Related Reissues [R-5]

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

Form paragraph 14.06 may be used for such an inquiry.

¶ 14.06 Litigation-Related Reissue

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

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

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

Examiner Note:

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

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

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

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

1442.02 Concurrent Litigation[edit | edit source]

In order to avoid duplication of effort, action in reissue applications in which there is an indication of concurrent litigation will be suspended automatically unless and until it is evident to the examiner, or the applicant indicates, that any one of the following applies:

(A)a stay of the litigation is in effect;

(B)the litigation has been terminated;

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

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

Where any of (A) - (D) above apply, form paragraphs 14.08-14.10 may be used to deny a suspension of action in the reissue, i.e., to deny a stay of the reissue proceeding.

Where none of (A) through (D) above apply, action in the reissue application in which there is an indication of concurrent litigation will be suspended by the examiner. The examiner should consult with the Technology Center Special Program Examiner prior to suspending action in the reissue. Form paragraph 14.11 may be used to suspend action, i.e., stay action, in a reissue application with concurrent litigation.

An ex parte reexamination proceeding will not be stayed where there is litigation. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988). Thus, where a reissue application has been merged with an ex parte reexamination proceeding, the merged proceeding will not be stayed where there is litigation. In a merged ex parte reexamination/reissue proceeding, the ex parte reexamination will control because of the statutory (35 U.S.C. 305) requirement that ex parte reexamination proceedings be conducted with special dispatch. See MPEP § 2285 and § 2286. As to a stay or suspension where reissue proceedings are merged with inter partes reexamination proceedings, see 37 CFR 1.937 and MPEP § 2686.

1442.03 Litigation Stayed[edit | edit source]

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

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

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

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

1442.04 Litigation Involving Patent[edit | edit source]

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

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

Where the patent for which reissue is being sought is, or has been, involved in litigation, the applicant should bring the existence of such litigation to the attention of the Office. 37 CFR 1.178(b). This should be done at the time of, or shortly after, the applicant files the application, either in the reissue oath or declaration, or in a separate paper, preferably accompanying the application as filed. Litigation begun after filing of the reissue application also should be promptly brought to the attention of the Office.

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

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

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

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

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

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

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

1442.05 Court Ordered Filing of Reissue Application[edit | edit source]

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

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

1443 Initial Examiner Review[edit | edit source]

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

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

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

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

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

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

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

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

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

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

1444 Review of Reissue Oath/Declaration[edit | edit source]

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

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

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

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

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

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

(D)The information required by 37 CFR 1.63.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

III.AFTER ALLOWANCE

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

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

(A)why the amendment is needed;

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

(C)why the claims are patentable; and

(D)why they were not presented earlier.

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

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

1445 Reissue Application Examined in Same Manner as Original Application[edit | edit source]

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

1448 Fraud, Inequitable Conduct, or Duty of Disclosure Issues[edit | edit source]

The Office no longer investigates and rejects reissue applications under 37 CFR 1.56. The Office will not comment upon duty of disclosure issues which are brought to the attention of the Office in reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer considered by the Office during its examination of patent applications. Examination as to the lack of deceptive intent requirement in reissue applications will continue but without any investigation of fraud, inequitable conduct, or duty of disclosure issues. Applicant’s statement in the reissue oath or declaration of lack of deceptive intent will be accepted as dispositive except in special circumstances such as an admission or judicial determination of fraud, inequitable conduct, or violation of the duty of disclosure.

ADMISSION OR JUDICIAL DETERMINATION

An admission or judicial determination of fraud, inequitable conduct, or violation of the duty of disclosure is a special circumstance, because no investigation need be made. Accordingly, after consulting with the Technology Center (TC) Special Program Examiner (SPRE), a rejection should be made using the appropriate one of form paragraphs 14.21.09 or 14.22as reproduced below.

Any admission of fraud, inequitable conduct or violation of the duty of disclosure must be explicit, unequivocal, and not subject to other interpretation. Where a rejection is made based upon such an admission and applicant responds with any reasonable interpretation of the facts that would not lead to a conclusion of fraud, inequitable conduct or violation of the duty of disclosure, the rejection should be withdrawn. Alternatively, if applicant argues that the admission noted by the examiner was not in fact an admission, the rejection should also be withdrawn.

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

1449 Protest Filed in Reissue Where Patent Is in Interference[edit | edit source]

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

The OPLA will check to see that:

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

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

1449.01 Concurrent Office Proceedings[edit | edit source]

I.CONCURRENT REEXAMINATION PROCEEDINGS:

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

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

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

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

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

II.CONCURRENT INTERFERENCE PROCEEDINGS

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

III.CONCURRENT REISSUE PROCEEDINGS

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

1450 and 1451.

1449.02Interference in Reissue [R-5]

37 CFR 41.8. Mandatory notices.

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

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

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

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

37 CFR 41.202. Suggesting an interference.

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

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

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

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

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

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

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

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

(1)Be patentable to the applicant, and

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

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

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

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

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

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

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

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

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

REISSUE APPLICATION FILED WHILE PATENT IS IN INTERFERENCE

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

1450 Restriction and Election of Species Made in Reissue Application[edit | edit source]

37 CFR 1.176. Examination of reissue.

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

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

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

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

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

Claims elected pursuant to a restriction requirement will receive a complete examination on the merits, while the non-elected claims (to any added invention(s)) will be held in abeyance in a withdrawn status, and will only be examined if filed in a divisional reissue application. If the reissue application containing only original unamended claims becomes allowable first (and no “error” under 35 U.S.C. 251exists),

further action in that reissue application will be suspended to await examination in the divisional reissue application(s) containing the added claims. Multiple suspensions (usually six-month periods) may be necessary. The Office will not permit claims to issue in a reissue application which application does not correct any error in the original patent. Once a divisional reissue application containing the added claims is examined and becomes allowable, the examiner will issue a requirement under 37 CFR 1.177(c) for applicant to merge the claims of the suspended first reissue application with the allowable claims of the divisional reissue application into a single application, by placing all of the claims in one of the applications and expressly abandoning the other. The Office action making this requirement will set a two-month period for compliance with the requirement. If applicant fails to timely respond to the Office action, or otherwise refuses to comply with the requirement made, then the divisional reissue application (claiming the invention which was non-elected in the now-suspended first reissue application) will be passed to issue alone, since the claims of the divisional reissue application, by themselves, do correct an error in the original patent. Prosecution will be reopened in the suspended first reissue application, and a rejection based on a lack of error under 35 U.S.C. 251 will then be made. This rejection may be made final, since applicant is on notice of the consequences of not complying with the merger requirement.

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

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

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

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

1451 Divisional Reissue Applications;Continuation Reissue Applications Where the Parent is Pending[edit | edit source]

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

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

37 CFR 1.177. Issuance of multiple reissue patents.

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

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

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

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

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

I. DIVISIONAL REISSUE APPLICATIONS

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

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

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

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

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

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

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

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

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

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

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

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

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

II. CONTINUATION REISSUE APPLI- CATIONS

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

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

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

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

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

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

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

Where the parent reissue application issues prior to the examination of the continuation, the claims of the continuation should be carefully reviewed for double patenting over the claims of the parent. Where the parent and the continuation reissue applications are examined together, a provisional double patenting rejection should be made in both cases as to any overlapping claims. See MPEP § 804 - §

804.04 as to double patenting rejections. Any terminal disclaimer filed to obviate an obviousness-type double patenting rejection ensures common ownership of the reissue patents throughout the remainder of the unexpired term of the original patent.

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

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

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

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

1452 Request for Continued Examination of Reissue Application[edit | edit source]

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

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

1453 Amendments to Reissue Applications[edit | edit source]

37 CFR 1.121. Manner of making amendments in application.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

I.THE SPECIFICATION

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

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

II.THE CLAIMS

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

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

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

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

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

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

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

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

III.THE DRAWINGS

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

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

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

The Subject Patent Already Has Underlining or Bracketing

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

V.EXAMPLES OF PROPER AMENDMENTS

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

A.Original Patent Description or Patent Claim Amended

Example (1)

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

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

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

Example (2)

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

Amend claim 6 as follows:

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

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

B.Cancellation of Claim(s)

Example (3)

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

Cancel claim 6.

Example (4)

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

Cancel claim 15.

C.Presentation of New Claims

Example (5)

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

Add claim 7 as follows:

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

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

D.Amendment of New Claims

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

E.Amendment of Original Patent Claims More Than Once

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

A. Patent claim.

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

B. Proper first amendment format.

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

C. Proper second amendment format.

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

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

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

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

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

VI.ADDITIONAL EXAMPLES

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

As per MPEP § 1411, double underlining and double bracketing are used in the second reissue application to show amendments made relative to the first reissued patent

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

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

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

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

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

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

1454 Appeal Brief[edit | edit source]

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

1455 Allowance and Issue[edit | edit source]

I.ISSUE CLASSIFICATION SHEET

For IFW reissue applications:

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

For reissue application files that are maintained in paper:

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

II. CHANGES TO THE ORIGINAL PATENT

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

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

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

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

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

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

III. CLAIM NUMBERING

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

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

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

IV. CLAIM DESIGNATED FOR PRINTING

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

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

V. PROVIDING PROPER FORMAT

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

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

VI. PARENT APPLICATION DATA

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

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

VII. REFERENCES CITED AND PRINTED

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

VIII. EXAMINER'S AMENDMENT AND SUP- PLEMENTAL DECLARATION

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

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

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

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

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

IX. FINAL REVIEW OF THE REISSUE APPLICATION BY THE EXAMINER

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

1456 Reissue Review[edit | edit source]

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

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

1457 Design Reissue Applications and Patents[edit | edit source]

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

I.EXPEDITED EXAMINATION PROCE- DURE

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

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

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

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

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

II.DESIGN REISSUE FEE

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

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

III.MULTIPLE DESIGN REISSUE APPLICATIONS

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

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

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

IV.CONVERSION TO UTILITY PATENT

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

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

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

1460 Effect of Reissue[edit | edit source]

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

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

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

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

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

1470 Public Access of Reissue Applications[edit | edit source]

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

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

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

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

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

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

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

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

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

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

1480 Certificates of Correction — Office Mistake[edit | edit source]

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

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

37 CFR 1.322. Certificate of correction of Office mistake.

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

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

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

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

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

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

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

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

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

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

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

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

I. THIRD PARTY INFORMATION ON MISTAKES IN PATENT

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

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

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

II. PUBLICATION IN THE OFFICIAL GAZETTE

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

1480.01 Expedited Issuance of Certificates of Correction - Error Attributable to Office[edit | edit source]

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

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

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

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

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

1481 Certificates of Correction - Applicant’s Mistake[edit | edit source]

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

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

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

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

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

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

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

(1) of a clerical nature,

(2) of a typographical nature, or

(3) a mistake of minor character.

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

(1) constitute new matter or

(2) require reexamination.

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

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

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

1481.01 Correction of Assignees’ Names[edit | edit source]

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

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

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

(B)include a request for a certificate of correction under 37 CFR 1.323 along with the fee set forth in 37 CFR 1.20(a); and

(C)include the processing fee set forth in 37 CFR 1.17(i).

See 37 CFR 3.81(b).

1481.02 Correction of Inventors’ Names[edit | edit source]

35 U.S.C. 256. Correction of named inventor.

Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

In requesting the Office to effectuate a court order correcting inventorship in a patent pursuant to 35 U.S.C. 256, a copy of the court order and a Certificate of Correction under 37 CFR 1.323 should be submitted to the Certificates of Corrections Branch.

37 CFR 1.324. Correction of inventorship in patent, pursuant to 35 U.S.C. 256.

(a)Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his or her part, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors. A petition to correct inventorship of a patent involved in an interference must comply with the requirements of this section and must be accompanied by a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.

(b)Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:

(1)Where one or more persons are being added, a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on his or her part;

(2)A statement from the current named inventors who have not submitted a statement under paragraph (b)(1) of this section either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change;

(3)A statement from all assignees of the parties submitting a statement under paragraphs (b)(1) and (b)(2) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(b) of this chapter; and

(4)The fee set forth in § 1.20(b).

(c)For correction of inventorship in an application, see §§ 1.48 and 1.497.

(d)In a contested case before the Board of Patent Appeals and Interferences under part 41, subpart D, of this title, a request for correction of a patent must be in the form of a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.

The petition to correct inventorship under 37 CFR 1.324 must include the statements and fee required by 37 CFR 1.324(b).

Under 37 CFR 1.324(b)(1), a statement is required from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part. In order to satisfy this, a statement such as the following is sufficient:

“The inventorship error of failing to include John Smith as an inventor of the patent occurred without any deceptive intention on the part of John Smith.”

Nothing more is required. The examiner will determine only whether the statement contains the required language; the examiner will not make any commentas to whether or not it appears that there was in fact deceptive intention (see MPEP § 2022.05).

Under 37 CFR 1.324(b)(2), all current inventors who did not submit a statement under 37 CFR 1.324(b)(1) must submit a statement either agreeing to the change of inventorship, or stating that they have no disagreement with regard to the requested change. “Current inventors” include the inventor(s) being retained as such and the inventor(s) to be deleted. These current inventors need not make a statement as to whether the inventorship error occurred without deceptive intention.

If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, since the inventor’s statement is not required for a non-broadening reissue application to correct inventorship. See MPEP § 1412.04.

Under 37 CFR 1.324(b)(3), a statement is required from the assignee(s) of the patent agreeing to the change of inventorship in the patent. The assignee statement agreeing to the change of inventorship must be accompanied by a proper statement under 37 CFR 3.73(b) establishing ownership, unless a proper 37 CFR 3.73(b) statement is already in the file. See MPEP § 324 as to the requirements of a statement under 37 CFR 3.73(b).

While a request under 37 CFR 1.48 is appropriate to correct inventorship in a nonprovisional application, a petition under 37 CFR 1.324 is the appropriate vehicle to correct inventorship in a patent. If a request under 37 CFR 1.48(a), (b), or (c) is inadvertently filed in a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth below should be used.

Similarly, if a request under 37 CFR 1.48(a), (b), or (c) is filed in a pending application but not acted upon until after the application becomes a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth below should be used.

The statutory basis for correction of inventorship in a patent under 37 CFR 1.324 is 35 U.S.C. 256. It is important to recognize that 35 U.S.C. 256 is stricter than 35 U.S.C. 116, the statutory basis for corrections of inventorship in applications under 37 CFR 1.48. 35 U.S.C. 256 requires “on application of all the parties and assignees,” while 35 U.S.C. 116 does not have the same requirement. Under 35 U.S.C. 116 and 37 CFR 1.48, waiver requests under 37 CFR 1.183may be submitted (see, e.g., MPEP § 201.03, under the heading “Statement of Lack of Deceptive Intention”). This is not possible under 35 U.S.C. 256 and 37 CFR 1.324. In correction of inventorship in a nonprovisional application under 37 CFR 1.48(a), the requirement for a statement by each originally named inventor may be waived pursuant to 37 CFR 1.183; however, correction of inventorship in a patent under 37 CFR 1.324 requires petition of all the parties, i.e., originally named inventors and assignees, in accordance with statute (35 U.S.C. 256) and thus the requirement cannot be waived.

1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits[edit | edit source]

I.CORRECTION TO PERFECT CLAIM FOR 35 U.S.C. 119 (a)-(d) AND (f) BENEFITS

See MPEP § 201.16 for a discussion of when 35 U.S.C. 119 (a)-(d) and (f) benefits can be perfected by certificate of correction.

II.CORRECTION AS TO 35 U.S.C. 120 AND 35 U.S.C. 119(e) BENEFITS

A.For Applications Filed Prior to November 29, 2000

For applications filed prior to November 29, 2000, it is the version of 37 CFR 1.78, which was in effect as of November 29, 2000, that applies. The pre- November 29, 2000 version reads as follows:

37 CFR 1.78. Claiming benefit of earlier filing date andcross-references to other applications.

(a)(1) A nonprovisional application may claim an invention disclosed in one or more prior filed copending nonprovisional applications or copending international applications designating the United States of America. In order for a nonprovisional application to claim the benefit of a prior filed copending nonprovisional application or copending international application designating the United States of America, each prior application must name as an inventor at least one inventor named in the later filed nonprovisional application and disclose the named inventor’s invention claimed in at least one claim of the later filed nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior application must be:

(i)An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America; or

(ii)Complete as set forth in § 1.51(b); or

(iii)Entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and include the basic filing fee set forth in § 1.16; or

(iv)Entitled to a filing date as set forth in § 1.53(b) and have paid therein the processing and retention fee set forth in § 1.21(l) within the time period set forth in § 1.53(f).

(2)Except for a continued prosecution application filed under §

1.53(d), any nonprovisional application claiming the benefit of one or more prior filed copending nonprovisional applications or international applications designating the United States of America must contain a reference to each such prior application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications. Unless the reference required by this paragraph is included in an application data sheet (§ 1.76), the specification must contain or be amended to contain such reference in the first sentence following any title. The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior application. The identification of an application by application number under this section is the specific reference required by 35 U.S.C. 120 to every application assigned that application number. Cross-references to other related applications may be made when appropriate (see § 1.14(a)).

(3)A nonprovisional application other than for a design patent may claim an invention disclosed in one or more prior filed copending provisional applications. In order for a nonprovisional application to claim the benefit of one or more prior filed copending provisional applications, each prior provisional application must name as an inventor at least one inventor named in the later filed nonprovisional application and disclose the named inventor's invention claimed in at least one claim of the later filed nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior provisional application must be entitled to a filing date as set forth in § 1.53(c), have any required English-language translation filed therein within the time period set forth in § 1.52(d), and have paid therein the basic filing fee set forth in § 1.16(k) within the time period set forth in § 1.53(g).

(4)Any nonprovisional application claiming the benefit of one or more prior filed copending provisional applications must contain a reference to each such prior provisional application, identifying it as a provisional application, and including the provisional application number (consisting of series code and serial number). Unless the reference required by this paragraph is included in an application data sheet (§ 1.76), the specification must contain or be amended to contain such reference in the first sentence following any title.

Under certain conditions specified below, a Certificate of Correction can be used, with respect to 35 U.S.C. 120 and 119(e) priority, to correct:

(A)the failure to make reference to a prior copending application pursuant to 37 CFR 1.78(a)(2) and (a)(4); or

(B)an incorrect reference to a prior copending application pursuant to 37 CFR 1.78(a)(2) and (a)(4).

For all situations other than where priority is based upon 35 U.S.C. 365(c), the conditions are as follows:

(A)for 35 U.S.C. 120 priority, all requirements set forth in 37 CFR 1.78(a)(1) must have been met in the application which became the patent to be corrected;

(B)for 35 U.S.C. 119(e) priority, all requirements set forth in 37 CFR 1.78(a)(3) must have been met in the application which became the patent to be corrected; and

(C)it must be clear from the record of the patent and the parent application(s) that priority is appropriate. See MPEP § 201.1l for requirements under 35 U.S.C. 119(e) and 120.

Where 35 U.S.C. 120 and 365(c) priority based on an international application is to be asserted or corrected in a patent via a Certificate of Correction, the following conditions must be satisfied:

(A)all requirements set forth in 37 CFR 1.78(a)(1) must have been met in the application which became the patent to be corrected;

(B)it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 201.11); and

(C)the patentee must submit with the request for the certificate copies of documentation showing designation of states and any other information needed to make it clear from the record that the 35 U.S.C. 120priority is appropriate. See MPEP § 201.13(b) as to the requirements for 35 U.S.C. 120 priority based on an international application.

If all the above-stated conditions are satisfied, a Certificate of Correction can be used to amend the patent to make reference to a prior copending application, or to correct an incorrect reference to the prior copending application. Note In re Schuurs, 218 USPQ 443 (Comm’r Pat. 1983) which suggests that a Certificate of Correction is an appropriate remedy for correcting, in a patent, reference to a prior copending application. Also, note In re Lambrech, 202 USPQ 620 (Comm’r Pat. 1976), citing In re Van Esdonk, 187 USPQ 671 (Comm’r Pat. 1975).

If any of the above-stated conditions is not satisfied, the filing of a reissue application (see MPEP § 1401 - § 1460) would be appropriate to pursue the desired correction of the patent.

B.For Applications Filed on or After November 29, 2000

For applications filed on or after November 29, 2000, the version of 37 CFR 1.78 reproduced below applies (note that amendments to 37 CFR 1.78 took effect on November 29, 2000, December 28, 2001, May 1, 2003, January 21, 2004, September 21, 2004, December 8, 2004, July 1, 2005, and November 25, 2005).

37 CFR 1.78. Claiming benefit of earlier filing date and cross-references to other applications.

(a)(1)A nonprovisional application or international application designating the United States of America may claim an invention disclosed in one or more prior-filed copending nonprovisional applications or international applications designating the United States of America. In order for an application to claim the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America, each prior-filed application must name as an inventor at least one inventor named in the later-filed application and disclose the named inventor’s invention claimed in at least one claim of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed application must be:

(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America; or

(ii) Entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and have paid therein the basic filing fee set forth in § 1.16within the pendency of the application.

(2)(i)Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application or international application designating the United States of America claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications. Cross references to other related applications may be made when appropriate (see § 1.14).

(ii)This reference must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371 (b) or (f) in the later-filed international application or sixteen months from the filing date of the prior-filed application. These time periods are not extendable. Except as provided in paragraph (a)(3) of this section, the failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (a)(2)(i) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:

(A)An application for a design patent;

(B)An application filed under 35 U.S.C. 111 (a) before November 29, 2000; or

(C)A nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000.

(iii)If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76), or the specification must contain or be amended to contain such reference in the first sentence(s) following the title.

(iv)The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.

(3)If the reference required by 35 U.S.C. 120 and paragraph (a)(2) of this section is presented after the time period provided by paragraph (a)(2)(ii) of this section, the claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America may be accepted if the reference identifying the prior-filed application by application number or international application number and international filing date was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application must be accompanied by:

(i)The reference required by 35 U.S.C. 120 and paragraph (a)(2) of this section to the prior-filed application, unless previously submitted;

(ii)The surcharge set forth in § 1.17(t); and

(iii)A statement that the entire delay between the date the claim was due under paragraph (a)(2)(ii) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

(4)A nonprovisional application, other than for a design patent, or an international application designating the United States of America may claim an invention disclosed in one or more prior-filed provisional applications. In order for an application to claim the benefit of one or more prior-filed provisional applications, each prior-filed provisional application must name as an inventor at least one inventor named in the later-filed application and disclose the named inventor’s invention claimed in at least one claim of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must be paid within the time period set forth in § 1.53(g).

(5)(i) Any nonprovisional application or international application designating the United States of America claiming the benefit of one or more prior-filed provisional applications must contain or be amended to contain a reference to each such prior- filed provisional application, identifying it by the provisional application number (consisting of series code and serial number).

(ii)This reference must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later- filed application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed international application or sixteen months from the filing date of the prior-filed provisional application. These time periods are not extendable. Except as provided in paragraph(a)(6) of this section, the failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:

(A)An application filed under 35 U.S.C. 111(a) before November 29, 2000; or

(B)A nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000.

(iii)If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76), or the specification must contain or be amended to contain such reference in the first sentence(s) following the title.

(iv)If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an amendment or Supplemental Application Data Sheet withdrawing the benefit claim, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned.

(6)If the reference required by 35 U.S.C. 119(e) and paragraph (a)(5) of this section is presented in a nonprovisional application after the time period provided by paragraph (a)(5)(ii) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior filed provisional application may be accepted during the pendency of the later-filed application if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior filed provisional application must be accompanied by:

(i)The reference required by 35 U.S.C. 119(e) and paragraph (a)(5) of this section to the prior-filed provisional application, unless previously submitted;

(ii)The surcharge set forth in § 1.17(t); and

(iii)A statement that the entire delay between the date the claim was due under paragraph (a)(5)(ii) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

(b)Where two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.

(c)If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain conflicting claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, the Office may require the assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, and if not, indicate which named inventor is the prior inventor. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person, at the time the later invention was made, the conflicting claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.

Under no circumstances can a Certificate of Correction be employed to correct an applicant’s mistake by adding or correcting a priority claim under 35 U.S.C. 119(e) for an application filed on or after November 29, 2000.

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

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

A Certificate of Correction is NOT a valid mechanism for adding or correcting a priority claim under 35 U.S.C. 119(e) after a patent has been granted on an application filed on or after November 29, 2000.

Under certain conditions as specified below, however, a Certificate of Correction can still be used, with respect to 35 U.S.C. 120 priority, to correct:

(A)the failure to make reference to a prior copending application pursuant to 37 CFR 1.78(a)(2); or

(B)an incorrect reference to a prior copending application pursuant to 37 CFR 1.78(a)(2).

Where priority is based upon 35 U.S.C. 120 to a national application, the following conditions must be satisfied:

(A)all requirements set forth in 37 CFR 1.78(a)(1) must have been met in the application which became the patent to be corrected;

(B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 201.11); and

(C)a grantable petition to accept an unintentionally delayed claim for the benefit of a prior application must be filed, including a surcharge as set forth in 37 CFR 1.17(t), as required by 37 CFR 1.78(a)(3).

Where 35 U.S.C. 120 and 365(c) priority based on an international application is to be asserted or corrected in a patent via a Certificate of Correction, the following conditions must be satisfied:

(A)all requirements set forth in 37 CFR 1.78(a)(1) must have been met in the application which became the patent to be corrected;

(B)it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 201.11);

(C)the patentee must submit together with the request for the certificate, copies of documentation showing designation of states and any other information needed to make it clear from the record that the 35 U.S.C. 120 priority is appropriate (see MPEP § 201.13(b) as to the requirements for 35 U.S.C. 120priority based on an international application; and

(D)a grantable petition to accept an unintentionally delayed claim for the benefit of a prior application must be filed, including a surcharge as set forth in 37 CFR 1.17(t), as required by 37 CFR 1.78(a)(3).

If all the above-stated conditions are satisfied, a Certificate of Correction can be used to amend the patent to make reference to a prior copending application, or to correct an incorrect reference to the prior copending application, for benefit claims under 35 U.S.C. 120 and 365(c).

If any of the above-stated conditions is not satisfied, the filing of a reissue application (see MPEP § 1401 - § 1460) may be appropriate to pursue the desired correction of the patent for benefit claims under 35 U.S.C. 120 and 365(c).

1485 Handling of Request for Certificates of Correction[edit | edit source]

A request for a Certificate of Correction should be addressed to:

Commissioner for Patents

Office of Patent Publication

ATTN: Certificate of Correction Branch

P.O. Box 1450

Alexandria, VA 22313-1450

Requests for Certificates of Correction will be forwarded to the Certificate of Correction Branch of the Office of Patent Publication, where they will be listed in a permanent record book.

If the patent is involved in an interference, a Certificate of Correction under 37 CFR 1.324 will not be issued unless a corresponding motion under 37 CFR 41.121(a)(2) or 41.121(a)(3) has been granted by the administrative patent judge. Otherwise, determination as to whether an error has been made, the responsibility for the error, if any, and whether the error is of such a nature as to justify the issuance of a Certificate of Correction will be made by the Certificate of Correction Branch. If a report is necessary in making such determination, the case will be forwarded to the appropriate group with a request that the report be furnished. If no certificate is to issue, the party making the request is so notified and the request, report, if any, and copy of the communication to the person making the request are placed in the file wrapper (for a paper file) or entered into the file history (for an IFW file), and entered into the “Contents” for the file by the Certificate of Correction Branch. The case is then returned to the patented files. If a certificate is to issue, it will be prepared and forwarded to the person making the request by the Office of Patent Publication. In that case, the request, the report, if any, and a copy of the letter transmitting the Certificate of Correction to the person making the request will be placed in the file wrapper (for a paper file) or entered into the file history (for an IFW file), and entered into the “Contents” for the file.

Applicants, or their attorneys or agents, are urged to submit the text of the correction on a special Certificate of Correction form, PTO/SB/44 (also referred to as Form PTO-1050), which can serve as the camera copy for use in direct offset printing of the Certificate of Correction.

Where only a part of a request can be approved, or where the Office discovers and includes additional corrections, the appropriate alterations are made on the form PTO/SB/44 by the Office. The patentee is notified of the changes on the Notification of Approval-in-part form PTOL-404. The certificate is issued approximately 6 weeks thereafter.

Form PTO/SB/44 should be used exclusively regardless of the length or complexity of the subject matter. Intricate chemical formulas or page of specification or drawings may be reproduced and mounted on a blank copy of PTO/SB/44. Failure to use the form has frequently delayed issuance since the text must be retyped by the Office onto a PTO/SB/44.

The exact page and line number where the errors occur in the application file should be identified on the request. However, on form PTO/SB/44, only the column and line number in the printed patent should be used.

The patent grant should be retained by the patentee. The Office does not attach the Certificate of Correction to patentee’s copy of the patent. The patent grant will be returned to the patentee if submitted.

Below is a sample form illustrating a variety of corrections and the suggested manner of setting out the format. Particular attention is directed to:

(A)Identification of the exact point of error by reference to column and line number of the printed patent for changes in the specification or to claim number and line where a claim is involved.

(B)Conservation of space on the form by typing single space, beginning two lines down from the printed message.

(C)Starting the correction to each separate column as a sentence, and using semicolons to separate corrections within the same column, where possible.

(D)Leaving a two-inch space blank at bottom of the last sheet for the signature of the attesting officer.

(E)Using quotation marks to enclose the exact subject matter to be deleted or corrected; using double hyphens (-- --) to enclose subject matter to be added, except for formulas.

(F)Where a formula is involved, setting out only that portion thereof which is to be corrected or, if necessary, pasting a photocopy onto form PTO/SB/ 44.

ELECTRONIC PUBLICATION OF CERTIFICATES OF CORRECTION WITH LATER LISTING IN THE OFFICIAL GAZETTE

Effective August 2001, the U.S. Patent and Trademark Office (USPTO) publishes on the USPTO web site at http://www.uspto.gov/web/patents/certofcorrect a listing by patent number of the patents for which certificates of correction are being issued.

The USPTO is now automating the publication process for certificates of correction. This new process will result in certificates of correction being published quicker electronically on the USPTO’s web site as compared to their paper publication and the listing of the certificates of correction in the Official Gazette. Under the newly automated process, each issue of certificates of correction will be electronically published on the USPTO web site at http://www.uspto.gov/web/ patents/certofcorrect, and will also subsequently be listed in the Official Gazette (and in the Official Gazette Notices posted at http://www.uspto.gov/web/ offices/com/sol/og) approximately three weeks thereafter. The listing of certificates of correction in the Official Gazette will include the certificate’s date of issuance.

On the date on which the listing of certificates of correction is electronically published on the USPTO web site: (A) the certificate of correction will be entered into the file wrapper of a paper-file patent, or entered into the file history of an IFW-file patent and will be available to the public; (B) a printed copy of the certificate of correction will be mailed to the patentee or the patent’s assignee; and (C) an image of the printed certificate of correction will be added to the image of the patent on the patent database at http:// www.uspto.gov.patft. Dissemination of all other paper copies of the certificate of correction will occur shortly thereafter.

The date on which the USPTO makes the certificate of correction available to the public (e.g., by adding the certificate of correction to the file wrapper/file history) will be regarded as the date of issuance of the certificate of correction, not the date of the certificate of correction appearing in the Official Gazette. (For IFW processing, see IFW Manual.) Certificates of correction published in the above-described manner will provide the public with prompt notice and access, and this is consistent with the legislative intent behind the American Inventors Protection Act of 1999. See

35 U.S.C. 10(a) (authorizing the USPTO to publish in electronic form).

The listing of certificates of correction can be electronically accessed on the day of issuance at http:// www.uspto.gov/web/patents/certofcorrect. The electronic image of the printed certificate of correction can be accessed on the patent database at http:// www.uspto.gov/patft and the listing of the certificates of correction, as published in the Official Gazettethree weeks later, will be electronically accessible at http://www.uspto.gov/web/offices/com/sol/og.

1490 Disclaimers[edit | edit source]

35 U.S.C. 253. Disclaimer.

Whenever, without any deceptive intention, a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.

In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.

37 CFR 1.321. Statutory disclaimers, including terminal disclaimers.

(a)A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:

(1)be signed by the patentee, or an attorney or agent of record;

(2)identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term, will be refused recordation;

(3)state the present extent of patentee’s ownership interest in the patent; and

(4)be accompanied by the fee set forth in § 1.20(d).

(b)An applicant or assignee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:

(1)be signed:

(i)by the applicant, or

(ii)if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or

(iii)if there is an assignee of record of the entire interest, by such assignee, or

(iv)by an attorney or agent of record;

(2)specify the portion of the term of the patent being disclaimed;

(3)state the present extent of applicant’s or assignee’s ownership interest in the patent to be granted; and

(4)be accompanied by the fee set forth in § 1.20(d).

(c)A terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding except as provided for in paragraph (d) of this section, must:

(1)Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;

(2)Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and

(3)Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.

(d)A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified under 35 U.S.C. 103(c) as resulting from activities undertaken within the scope of a joint research agreement, must:

(1)Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;

(2)Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or be signed in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding;

(3)Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.

A disclaimer is a statement filed by an owner (in part or in entirety) of a patent or of a patent to be granted (i.e., an application), in which said owner relinquishes certain legal rights to the patent. There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer. The owner of a patent or an application is the original inventor(s) or the assignee of the original inventor(s). The patent or application is assigned by one assignment or by multiple assignments which establish a chain of title from the inventor( s) to the assignee(s). The owner of the patent or application can sign a disclaimer, and a person empowered by the owner to sign the disclaimer can also sign it. Per 37 CFR 1.321(b)(1)(iv), an attorney or agent of record is permitted to sign the disclaimer. A registered practitioner acting in a representative capacity under 37 CFR 1.34 is not permitted to sign the disclaimer. For a disclaimer to be accepted, it must be signed by the proper party as follows:

(A)A disclaimer filed in an application must be signed by

(1)the applicant where the application has not been assigned,

(2)the applicant and the assignee where each owns a part interest in the application,

(3)the assignee where assignee owns the entire interest in the application, or

(4)an attorney or agent of record.

(B)A disclaimer filed in a patent or a reexamination proceeding must be signed by either

(1)the patentee (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the inventors if the patent is assigned-in-part), or

(2)an attorney or agent of record.

(C)Where the assignee (of an application or of a patent being reexamined or to be reissued) signs the disclaimer, there is a requirement to comply with 37 CFR 3.73(b) in order to satisfy 37 CFR 1.321, unless an attorney or agent of record signs the disclaimer. In order to comply with 37 CFR 3.73(b), the assignee’s ownership interest must be established by:

(1)filing in the application or patent evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11, or

(2)specifying in the record of the application or patent where such evidence is recorded in the Office (e.g., reel and frame number, etc.).

The submission with respect to 37 CFR 3.73(b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. See also MPEP § 324 as to compliance with 37 CFR 3.73(b). A copy of the “Statement Under 37 CFR 3.73 (b),” which is reproduced in MPEP § 324, may be sent by the examiner to applicant to provide an acceptable way to comply with the requirements of 37 CFR 3.73(b).

(D)Where the attorney or agent of record signs the disclaimer, there is no need to comply with 37 CFR 3.73(b).

(E)The signature on the disclaimer need not be an original signature. Pursuant to 37 CFR 1.4(d)(1)(ii), the submitted disclaimer can be a copy, such as a photocopy or facsimile transmission of an original disclaimer.

I.STATUTORY DISCLAIMERS

Under 37 CFR 1.321(a) the owner of a patent may disclaim a complete claim or claims of his or her patent. This may result from a lawsuit or because he or she has reason to believe that the claim or claims are too broad or otherwise invalid. If the patent is involved in an interference, see 37 CFR 41.121(a).

As noted above, a statutory disclaimer is a statement in which a patent owner relinquishes legal rights to one or more claims of a patent. A statutory disclaimer is not, however, a vehicle for adding or amending claims, since there is no provision for such in the statute (35 U.S.C. 253) nor the rules (37 CFR 1.321). Thus, claims of a patent cannot be disclaimed in favor of new claims to be added to the patent or an amendment to existing claims.

II.TERMINAL DISCLAIMERS

37 CFR 1.321(a) also provides for the filing by an applicant or patentee of a terminal disclaimer which disclaims or dedicates to the public the entire term or any portion of the term of a patent or patent to be granted.

37 CFR 1.321(c) specifically provides for the filing of a terminal disclaimer in an application or a reexamination proceeding for the purpose of overcoming a nonstatutory double patenting rejection. See MPEP § 804.02.

37 CFR 1.321(d) specifically provides for the filing of a terminal disclaimer in an application or a reexamination proceeding for the purpose of overcoming a nonstatutory double patenting rejection based on a U.S. patent or application that is not commonly owned but was disqualified under 35 U.S.C. 103(c).

III.PROCESSING

Certificate of Correction Branch

The Certificate of Correction Branch is responsible for the handling of all statutory disclaimers filed under the first paragraph of 35 U.S.C. 253, whether the case is pending or patented, and all terminal disclaimers (filed under the second paragraph of 35 U.S.C. 253) except for those filed in an application or reexamination proceeding pending in a Technology Center (TC). This involves:

(A)Determining the compliance of the disclaimer with 35 U.S.C. 253 and 37 CFR 1.321 and 3.73;

(B)Notifying applicant or patentee when the disclaimer is informal and thus not acceptable;

(C)Recording the disclaimers in the record of the application file; and

(D)Providing the disclaimer data for printing in the Official Gazette.

IV.TERMINAL DISCLAIMER IN PENDING APPLICATION PRACTICE IN THE TECHNOLOGY CENTERS

Where a terminal disclaimer is filed in an application pending in a TC, it will be processed by the paralegal of the Office of the Special Program Examiner of the TC having responsibility for the application. The paralegal will:

(A)Determine compliance with 35 U.S.C. 253and 37 CFR 1.321 and 3.73, and ensure that the appropriate terminal disclaimer fee set forth in 37 CFR 1.20(d) is/was applied;

(B)Notify the examiner having charge of the application whether the terminal disclaimer is acceptable or not;

(C)Where the terminal disclaimer is not acceptable, indicate the nature of the informalities so that the examiner can inform applicant in the next Office action. For an IFW application, complete the IFW terminal disclaimer form by checking the “Disapproved” box and have the form scanned into IFW;

(D)Where the terminal disclaimer is acceptable, record the terminal disclaimer in the record of the application as set forth below.

The paralegal will record an acceptable terminal disclaimer as being present in an application by:

For IFW applications:

(A)Completing the IFW terminal disclaimer form by checking the “Approved” box and having the form scanned into IFW; and

(B)Entering the terminal disclaimer into PALM for the application.

For application files that are maintained in paper:

For paper applications with 08/ and earlier series code

(A)Attaching a green label to the file wrapper;

(B)Stamping a notice on the file of the term which has been disclaimed (note that the blanks on the stamped notice for entering information on the patent(s) being disclaimed are no longer filled in);

(C)Endorsing the paper containing the terminal disclaimer submission on the “Contents” flap of the application file; and

(D)Entering the terminal disclaimer into the PALM system records, for the application.

For paper applications with 09/ and later series code

(A)Checking a box on the file wrapper which states that the terminal disclaimer has been filed (Any blanks for entering information on the patent(s) being disclaimed are no longer filled in. Note that applications with 10/ and later series codes no longer have such blanks to complete);

(B)Endorsing the paper containing the terminal disclaimer submission on the “Contents” flap of the application file; and

(C)Entering the terminal disclaimer into the PALM system records, for the application.

The paralegal completes a Terminal Disclaimer Informal Memo to notify the examiner of the nature of any informalities in the terminal disclaimer. The examiner should notify the applicant of the informalities in the next Office action, or by interview with applicant if such will expedite prosecution of the application. Further, the examiner should initial and date the Terminal Disclaimer Informal Memo and return it to the paralegal to indicate that the examiner has appropriately notified applicant about the terminal disclaimer. The paralegal will then discard the Terminal Disclaimer Informal Memo.

V.OTHER MATTERS DIRECTED TO TERMINAL DISCLAIMERS

A.Requirements of Terminal Disclaimers

A proper terminal disclaimer must disclaim the terminal part of the statutory term of any patent granted on the application being examined which would extend beyond the expiration date of the full statutory term, shortened by any terminal disclaimer, of the patent (or of any patent granted on the application) to which the disclaimer is directed. Note the exculpatory language in the second paragraph of the sample terminal disclaimer forms, PTO/SB/25 and PTO/SB/26, provided at the end of this Chapter. That language (“In making the above disclaimer, the owner does not disclaim...”) is permissible in a terminal disclaimer.

A terminal disclaimer filed to obviate a nonstatutory double patenting rejection based on a commonly owned patent or application must comply with the requirements of 37 CFR 1.321(c). The terminal disclaimer must state that any patent granted on the application being examined will be enforceable only for and during the period that it and the patent to which the disclaimer is directed or the patent granted on the application to which the disclaimer is directed are commonly owned. See MPEP § 706.02(1)(2) for examples of common ownership, or lack thereof.

A terminal disclaimer filed to obviate a nonstatutory double patenting rejection based on a non-commonly owned patent or application disqualified under 35 U.S.C. 103(c) as a result of activities undertaken within the scope of a joint research agreement under 35 U.S.C. 103(c)(2) and (3) must comply with 37 CFR 1.321(d), which sets forth signature, waiver rights and enforceability requirements.

The terminal disclaimer must include a provision:

(1)waiving the right to separately enforce (a) any patent granted on that application or the patent being reexamined and (b) the reference patent, or any patent granted on the reference application which formed the basis for the double patenting; and

(2)agreeing that any patent granted on that application or patent being reexamined shall be enforceable only for and during such period that said patent and the reference patent, or any patent granted on the reference application, which formed the basis for the double patenting are not separately enforced.

A terminal disclaimer must state that the agreement is to run with any patent granted on the application being examined and is to be binding upon the grantee, its successors, or assigns.

A statement of assignee interest in a terminal disclaimer that “A and B are the owners of 100% of the instant application...” is sufficient to satisfy the 37 CFR 1.321(b)(3) requirement that a terminal disclaimer “state the present extent of applicant’s or assignee’s ownership interest in the patent to be granted.” Although the quoted statement does not identify what specific percentage is owned by A and what specific percentage is owned by B, the statement does provide consent to the terminal disclaimer by the entirety of the ownership of the application (A and B own all of the invention, regardless of the individual percentages they own).

The appropriate one of form paragraphs 14.27.04to 14.27.08 (reproduced below) may be used to provide

applicant or patent owner with an example of acceptable terminal disclaimer language. Additionally, copies of forms PTO/SB/25 and PTO/SB/26 (provided at the end of this Chapter) may be attached to the Office action to provide sample terminal disclaimers.

Pursuant to the last sentence of 35 U.S.C. 253, “any patentee or applicant may disclaim or dedicate to the public... any terminal part of the term, of the patent granted or to be granted”. Accordingly, the disclaimer must be of a terminal portion of the term of the entire patent to be granted. A disclaimer of a terminal portion of the term of an individual claim, or individual claims will not be accepted. It is further noted that a disclaimer of the term of individual claims would not be appropriate since the claims of a pending application or proceeding are subject to cancelation, amendment, or renumbering. The statute does not provide for conditional disclaimers and accordingly, a proposed disclaimer which is made contingent on the allowance of certain claims cannot be accepted. The disclaimer should identify the disclaimant and his or her interest in the application and should specify the date when the disclaimer is to become effective.

B.Effect of Disclaimers in Continuing Applications and in Reissues

A terminal disclaimer filed to obviate a double patenting rejection is effective only with respect to the application identified in the disclaimer unless by its terms it extends to continuing applications. For example, a terminal disclaimer filed in a parent application normally has no effect on a continuing application claiming filing date benefits of the parent application under 35 U.S.C. 120. A terminal disclaimer filed in a parent application to obviate a double patenting rejection does, however, carry over to a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (effective July 14, 2003, CPAs are only available in design applications). The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed. If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182, along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA; see below “Withdrawing a Terminal Disclaimer” (paragraph “A. Before Issuance of Patent”). If applicant files a Request for Continued Examination (RCE) of an application under 37 CFR 1.114 (which can be filed on or after May 29, 2000 for an application filed on or after June 8, 1995), any terminal disclaimer present will continue to operate, since a new application has not been filed, but rather prosecution has been continued in the existing application. A petition under 37 CFR 1.182, along with the required petition fee, may be filed, if withdrawal of the terminal disclaimer is to be requested.

Reissue applications: Where a terminal disclaimer was filed in an original application, a copy of that terminal disclaimer is not required be filed by applicant in the reissue.

For reissue application files that are maintained in paper:

The face of the file wrapper of the reissue application should, however, be marked by the examiner in order to indicate that a terminal disclaimer has been filed for the patent (and will be effective for the patent as it will be reissued). Further, a copy of the terminal disclaimer should be placed in the reissue application file by the Technology Center.

For IFW reissue applications:

The “Final SPRE Review” form will be filled in to indicate that a terminal disclaimer has been filed for the patent (and will be effective for the patent as it will be reissued). Further, a copy of the terminal disclaimer should be scanned into the reissue application file history by the Technology Center.

C.Disclaimer Identifies the Wrong Target Application or Patent

In some instances a terminal disclaimer filed to obviate an obviousness type double patenting rejection will identify the wrong target application or patent (i.e., an application or patent which is not the basis for the double patenting rejection). In these instances, a replacement terminal disclaimer identifying the correct target application or patent would be required by the examiner. Once a correct replacement terminal disclaimer is received, the next Office action should make it clear that “the second terminal disclaimer replaces the first terminal disclaimer, and the first terminal disclaimer is thus void.” A second terminal disclaimer fee should not be assessed/charged, since the first fee is applied to the second terminal disclaimer.

D.Two or More Copending Applications

If two (or more) pending applications are filed, in each of which a rejection of one claimed invention over the other on the ground of provisional obviousness- type double patenting (ODP) is proper, the ODP rejection will be made in each application. If the ODP rejection is the only rejection remaining in the earlier filed of the two pending applications, (but the later- filed application is rejectable on other grounds), the examiner should then withdraw that rejection and permit the earlier-filed application to issue as a patent without a terminal disclaimer. If the ODP rejection is the only rejection remaining in the later-filed application, (while the earlier-filed application is rejectable on other grounds), a terminal disclaimer must be required in the later-filed application, before the ODP rejection can be withdrawn.

If the ODP rejections in both applications are the only rejections remaining in those applications, the examiner should then withdraw the ODP rejection in the earlier filed application thereby permitting that application to issue without need of a terminal disclaimer. A terminal disclaimer must be required in the later-filed application before the ODP rejection can be withdrawn and the application be permitted to issue.

If both applications are filed on the same day, the examiner should determine which application claims the base invention and which application claims the improvement (added limitations). The ODP rejection in the base application can be withdrawn without a terminal disclaimer, while the ODP rejection in the improvement application cannot be withdrawn without a terminal disclaimer.

Where there are three applications containing claims that conflict such that an ODP rejection is made in each application based upon the other two, it is not sufficient to file a terminal disclaimer in only one of the applications addressing the other two applications. Rather, an appropriate terminal disclaimer must be filed in at least two of the applications to link all three together. This is because a terminal disclaimer filed to obviate a double patenting rejection is effective only with respect to the application in which the terminal disclaimer is filed; it is not effective to link the other two applications to each other.

VI. WITHDRAWING A RECORDED TERMINAL DISCLAIMER

If timely requested, a recorded terminal disclaimer may be withdrawn before the application in which it is filed issues as a patent, or in a reexamination proceeding, before the reexamination certificate issues. After a patent or reexamination certificate issues, it is unlikely that a recorded terminal disclaimer will be nullified.

A. Before Issuance Of Patent

While the filing and recordation of an unnecessary terminal disclaimer has been characterized as an “unhappy circumstance” in In re Jentoft, 392 F.2d 633, 157 USPQ 363 (CCPA 1968), there is no statutory prohibition against nullifying or otherwise canceling the effect of a recorded terminal disclaimer which was erroneously filed before the patent issues. Since the terminal disclaimer would not take effect until the patent is granted, and the public has not had the opportunity to rely on the terminal disclaimer, relief from this unhappy circumstance may be available by way of petition or by refiling the application (other than by refiling it as a CPA).

Under appropriate circumstances, consistent with the orderly administration of the examination process, the nullification of a recorded terminal disclaimer may be addressed by filing a petition under 37 CFR 1.182 requesting withdrawal of the recorded terminal disclaimer. Petitions seeking to reopen the question of the propriety of the double patenting rejection that prompted the filing of the terminal disclaimer have not been favorably considered. The filing of a continuing application other than a CPA, while abandoning the application in which the terminal disclaimer has been filed, will typically nullify the effect of a terminal disclaimer. The filing of a Request for Continued Examination (RCE) of an application under 37 CFR 1.114 will not nullify the effect of a terminal disclaimer, since a new application has not been filed, but rather prosecution has been continued in the existing application.

B.After Issuance Of Patent

The mechanisms to correct a patent — Certificate of Correction (35 U.S.C. 255), reissue (35 U.S.C. 251), and reexamination (35 U.S.C. 305) — are not available to withdraw or otherwise nullify the effect of a recorded terminal disclaimer. As a general principle, public policy does not favor the restoration to the patent owner of something that has been freely dedicated to the public, particularly where the public interest is not protected in some manner — e.g., intervening rights in the case of a reissue patent. See, e.g., Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 24 USPQ 308 (1935).

Certificates of Correction (35 U.S.C. 255) are available for the correction of an applicant’s mistake. The scope of this remedial provision is limited in two ways — by the nature of the mistake for which correction is sought and the nature of the proposed correction. In re Arnott, 19 USPQ2d 1049 (Comm’r Pat. 1991). The nature of the mistake for which correction is sought is limited to those mistakes that are:

(A)of a clerical nature,

(B)of a typographical nature, or

(C)of a minor character.

The nature of the proposed correction is limited to those situations where the correction does not involve changes which would:

(A)constitute new matter, or

(B)require reexamination.

A mistake in filing a terminal disclaimer does not fall within any of the categories of mistake for which a certificate of correction of applicant’s mistake is permissible, and any attempt to remove or nullify the effect of the terminal disclaimer would typically require reexamination of the circumstances under which it was filed.

Although the remedial nature of reissue (35 U.S.C. 251) is well recognized, reissue is not available to correct all errors. It has been the Office position that reissue is not available to withdraw or otherwise nullify the effect of a terminal disclaimer recorded in an issued patent. First, the reissue statute only authorizes the Director of the USPTO to reissue a patent “for the unexpired part of the term of the original patent.” Since the granting of a reissue patent without the effect of a recorded terminal disclaimer would result in extending the term of the original patent, reissue under these circumstances would be contrary to the statute. Second, the principle against recapturing something that has been intentionally dedicated to the public dates back to Leggett v. Avery, 101 U.S. 256 (1879). The attempt to restore that portion of the patent term that was dedicated to the public to secure the grant of the original patent would be contrary to this recapture principle. Finally, applicants have the opportunity to challenge the need for a terminal disclaimer during the prosecution of the application that issues as a patent. “Reissue is not a substitute for Patent Office appeal procedures.” Ball Corp. v. United States, 729 F.2d 1429, 1435, 221 USPQ 289, 293 (Fed. Cir. 1984). Where applicants did not challenge the propriety of the examiner’s obvious-type double patenting rejection, but filed a terminal disclaimer to avoid the rejection, the filing of the terminal disclaimer did not constitute error within the meaning of 35 U.S.C. 251. Ex parte Anthony, 230 USPQ 467 (Bd. App. 1982), aff’d, No. 84-1357 (Fed. Cir. June 14, 1985).

Finally, the nullification of a recorded terminal disclaimer would not be appropriate in a reexamination proceeding. There is a prohibition (35 U.S.C. 305) against enlarging the scope of a claim during a reexamination proceeding. As noted by the Board in Anthony, supra, if a terminal disclaimer was nullified, “claims would be able to be sued upon for a longer period than would the claims of the original patent. Therefore, the vertical scope, as opposed to the horizontal scope (where the subject matter is enlarged), would be enlarged.”

← MPEP 1300

↑ MPEP Table of Contents

MPEP 1500 →

@@ Line 3: / Line 3: @@
 '''<big>Chapter 1400 Correction of Patents</big>'''
-__TOC__
+<div class="noautonum">__TOC__</div>
 ==1400 [No Text]==
@@ Line 26: / Line 26: @@
 MPEP Chapter 2600 for inter partes reexamination.
+==1401 Reissue==
+{{Statute|35 U.S.C. 251. Reissue of defective patents.}}
-Reissue [R-3]
-U.S.C. 251. Reissue of defective patents.
 Whenever any patent is, through error without any deceptive
 intention, deemed wholly or partly inoperative or invalid, by reason
@@ Line 60: / Line 54: @@
 claims of the original patent unless applied for within two years
 from the grant of the original patent.
+|}
 The provisions of 35 U.S.C. 251 permit the reissue
@@ Line 68: / Line 64: @@
 directed to reissue.
-Grounds for Filing [R-5]
+==1402 Grounds for Filing==
 A reissue application is filed to correct an error in
@@ Line 102: / Line 98: @@
 present).
- These corrections may be made via a certificate of
+These corrections may be made via a certificate of
 correction; see MPEP § 1481.
@@ Line 108: / Line 104: @@
 are:
-(A)the claims are too narrow or too broad;
+{{Tab1}}(A)the claims are too narrow or too broad; </p>
-(B)the disclosure contains inaccuracies;
+{{Tab1}}(B)the disclosure contains inaccuracies; </p>
-(C)applicant failed to or incorrectly claimed foreign
+{{Tab1}}(C)applicant failed to or incorrectly claimed foreign priority; and</p>
-priority; and
-(D)applicant failed to make reference to or incorrectly
+{{Tab1}}(D)applicant failed to make reference to or incorrectly made reference to prior copending applications.</p>
-made reference to prior copending applications.
 An attorney’s failure to appreciate the full scope of
 the invention was held to be an error correctable
 through reissue in the decision of In re Wilder,
+F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). The
-F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). The
 correction of misjoinder of inventors in divisional
 reissues has been held to be a ground for reissue. See
@@ Line 144: / Line 137: @@
 by filing a request for a certificate of correction under
 the provisions of 35 U.S.C. 256 and 37 CFR 1.324.
-See MPEP §
+See MPEP § 1412.04 and § 1481. A Certificate of
-.04 and § 1481. A Certificate of
 Correction will be issued if all parties are in agreement
 and the inventorship issue is not contested.
@@ Line 152: / Line 143: @@
 A reissue was granted in Brenner v. State of Israel,
 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where
 the only ground urged was failure to file a certified
 copy of the original foreign application to obtain the
@@ Line 203: / Line 188: @@
 delayed claim under 35 U.S.C. 119(e) would
 not be required in addition to filing a reissue application..
 Section 4503 of the American Inventors Protection
@@ Line 260: / Line 244: @@
 within the time period set forth in 37 CFR 1.78(a)(2),
 then a petition for an unintentionally delayed benefit
 claim under 37 CFR 1.78(a)(3) along with the surcharge
 set forth in 37 CFR 1.17(t) would be required
@@ Line 300: / Line 278: @@
 one substantive “error ” under 35 U.S.C. 251.
-Diligence in Filing [R-3]
+==1403 Diligence in Filing==
 When a reissue application is filed within 2 years
@@ Line 345: / Line 323: @@
 .01.
-Submission of Papers Where Reissue
+==1404 Submission of Papers Where Reissue Patent Is in Litigation==
-Patent Is in Litigation [R-2]
 Marking of envelope: Applicants and protestors
@@ Line 366: / Line 343: @@
 marked “REISSUE LITIGATION” will be given special
 attention and expedited handling. (For IFW processing,
-see IFW Manual.) See MPEP §
+see IFW Manual.) See MPEP § 1442.01through § 1442.04 for examination of litigation-
-.01through § 1442.04 for examination of litigation-
 related reissue applications. Protestor’s participation,
 including the submission of papers, is limited in
 accordance with 37 CFR 1.291(c).
+==1405 Reissue and Patent Term==
-Reissue and Patent Term [R-2]
 U.S.C. 251 prescribes the effect of reissue on the
@@ Line 458: / Line 426: @@
 original patent.”
-Citation and Consideration of
+==1406 Citation and Consideration of References Cited in Original Patent==
-References Cited in Original Patent[R-3]
 In a reissue application, the examiner should consider
@@ Line 468: / Line 435: @@
 patent may no longer be relevant, e.g., in view of a
 narrowing of the claim scope in the reissue application.
 Should applicants wish to ensure that all of the references
@@ Line 481: / Line 447: @@
 .98(a)(2) requires
-(A)a legible copy of each foreign patent,
+(A) a legible copy of each foreign patent,
-(B)each publication or that portion which caused
+(B) each publication or that portion which caused
 it to be listed,
-(C)each pending unpublished U.S. application
+(C) each pending unpublished U.S. application
 unless the cited pending U.S. application is stored in
 the Image File Wrapper (IFW) system. The requirement
@@ Line 504: / Line 465: @@
 (Oct. 19, 2004),
-(D)all other information or that portion which
+(D) all other information or that portion which
 caused it to be listed.
- See MPEP § 609.04(a). The Office imposes no
+See MPEP § 609.04(a). The Office imposes no
 responsibility on a reissue applicant to resubmit, in a
 reissue application, all the “References Cited” in the
@@ Line 524: / Line 485: @@
 reference has been considered.
-Content of Reissue Application[R-3]
+==1410 Content of Reissue Application==
-CFR 1.171. Application for reissue.
+{{Statute|37 CFR 1.171. Application for reissue.}}
 An application for reissue must contain the same parts required
 for an application for an original patent, complying with all the
@@ Line 533: / Line 493: @@
 must comply with the requirements of the rules relating to
 reissue applications.
+|}
-CFR 1.173. Reissue specification, drawings, and
-amendments.
-(a)Contents of a reissue application. An application for
+{{Statute|37 CFR 1.173. Reissue specification, drawings, and amendments.}}
+(a) Contents of a reissue application. An application for
 reissue must contain the entire specification, including the claims,
 and the drawings of the patent. No new matter shall be introduced
@@ Line 545: / Line 505: @@
 U.S.C. 251.
-(1)Specification, including claims. The entire specification,
+<p style="padding-left: +20px;">(1) Specification, including claims. The entire specification,
 including the claims, of the patent for which reissue is
 requested must be furnished in the form of a copy of the printed
@@ Line 556: / Line 516: @@
 of correction (§§ 1.322 through 1.324), or reexamination certificate
 (§ 1.570) issued in the patent must be included. (See also §
-.178).
+.178).</p>
-(2)Drawings. Applicant must submit a clean copy of
+<p style="padding-left: +20px;">(2) Drawings. Applicant must submit a clean copy of
 each drawing sheet of the printed patent at the time the reissue
 application is filed. If such copy complies with § 1.84, no further
@@ Line 565: / Line 525: @@
 the changes to the drawing must be made in accordance with
 paragraph (b)(3) of this section. The Office will not transfer the
-drawings from the patent file to the reissue application.
+drawings from the patent file to the reissue application.</p>
+{{Ellipsis}}
+|}
@@ Line 594: / Line 555: @@
 made either by:
-(A)physically incorporating the changes within
+(A) physically incorporating the changes within
 the specification by cutting the column of the printed
 patent and inserting the added material and rejoining
@@ Line 601: / Line 562: @@
 printed patent. Markings pursuant to 37 CFR 1.173(d)
 must be used to show the changes. The columnar
 structure of the printed patent must be preserved, and
 the physically modified page must comply with
+CFR 1.52(a)(1). As to compliance with 37 CFR
-CFR 1.52(a)(1). As to compliance with 37 CFR
 .52(a)(1)(iv), the “written either by a typewriter or
 machine printer in permanent dark ink or its equivalent”
@@ Line 618: / Line 572: @@
 typed legibly in the margin; or
-(B)providing a separate amendment paper with
+(B) providing a separate amendment paper with
 the reissue application.
- In either case, the amendment must be made pursuant
+In either case, the amendment must be made pursuant
 to 37 CFR 1.173(b) and must comply with all the
 provisions of 37 CFR 1.173(b)– (e) and (g).
@@ Line 663: / Line 617: @@
 The initial contents of a
 reissue application are discussed
-in detail in MPEP §
+in detail in MPEP § 1410.01 through § 1418.
-.01 through § 1418.
- For expedited processing, new and continuing reissue
+For expedited processing, new and continuing reissue
 application filings under 37 CFR 1.53(b) may be
 addressed to: Mail Stop REISSUE, Commissioner for
@@ Line 695: / Line 647: @@
 MPEP § 1410.01.
-Form PTO/SB/50, Reissue Patent Application
+===1410.01 Reissue Applicant, Oath or Declaration, and Consent of all Assignees===
-Transmittal, may be used for filing reissue applications.
+{{Statute|37 CFR 1.172. Applicants, assignees.}}
+(a) A reissue oath must be signed and sworn to or declaration
+made by the inventor or inventors except as otherwise provided
+(see §§ 1.42, 1.43, 1.47), and must be accompanied by the
+written consent of all assignees, if any, owning an undivided interest
+in the patent, but a reissue oath may be made and sworn to or
+declaration made by the assignee of the entire interest if the application
+does not seek to enlarge the scope of the claims of the original
+patent. All assignees consenting to the reissue must establish
+their ownership interest in the patent by filing in the reissue application
+a submission in accordance with the provisions of § 3.73(b)
+of this chapter.
+(b) A reissue will be granted to the original patentee, his
+legal representatives or assigns as the interest may appear.
+|}
+{{Statute|37 CFR 3.73. Establishing right of assignee to take action.}}
+{{Ellipsis}}
+(b)
+<p style="padding-left: +20px;">(1) In order to request or take action in a patent or trademark
+matter, the assignee must establish its ownership of the
+patent or trademark property of paragraph (a) of this section to the
+satisfaction of the Director. The establishment of ownership by
+the assignee may be combined with the paper that requests or
+takes the action. Ownership is established by submitting to the
+Office a signed statement identifying the assignee, accompanied
+by either:</p>
+<p style="padding-left: +40px;">(i) Documentary evidence of a chain of title from the
+original owner to the assignee (e.g., copy of an executed assignment).
+For trademark matters only, the documents submitted to
+establish ownership may be required to be recorded pursuant to §
+.11 in the assignment records of the Office as a condition to permitting
+the assignee to take action in a matter pending before the
+Office. For patent matters only, the submission of the documentary
+evidence must be accompanied by a statement affirming that
+the documentary evidence of the chain of title from the original
+owner to the assignee was or concurrently is being submitted for
+recordation pursuant to § 3.11; or</p>
+<p style="padding-left: +40px;">(ii) A statement specifying where documentary evidence
+of a chain of title from the original owner to the assignee is
+recorded in the assignment records of the Office (e.g., reel and
+frame number).</p>
-Reissue Patent Application Transmittal
+<p style="padding-left: +20px;">(2) The submission establishing ownership must show
-PTO/SB/50 (04-05)
+that the person signing the submission is a person authorized to
-Approved for use through 04/30/2007. OMB 0651-0033
+act on behalf of the assignee by:</p>
-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.
+<p style="padding-left: +40px;">(i) Including a statement that the person signing the
-REISSUE PATENT APPLICATION TRANSMITTAL
+submission is authorized to act on behalf of the assignee; or</p>
-Attorney Docket No.
-First Named Inventor
-Original Patent Number
-Original Patent Issue Date
-(Month/Day/Year)
-Address to:
-Mail Stop Reissue
-Commissioner for Patents
-P.O. Box 1450
-Alexandria, VA 22313-1450Express Mail Label No.
-APPLICATION FOR REISSUE OF:
-(Check applicable box)
-Utility Patent Design Patent Plant Patent
-APPLICATION ELEMENTS (37 CFR 1.173) ACCOMPANYING APPLICATION PARTS
-Statement of status and support for all
-. changes to the claims. See 37 CFR 1.173(c).
-. Foreign Priority Claim (35 U.S.C. 119)
-(if applicable)
-. Information Disclosure Statement (IDS)
-PTO/SB/08 or PTO-1449
-Copies of foreign patent documents,
-publications & other information
-. English Translation of Reissue Oath/Declaration
-(if applicable)
-. Preliminary Amendment
-Return Receipt Postcard (MPEP 503)
-. (Should be specifically itemized)
-. Other:
-. Fee Transmittal Form (PTO/SB/56)(Submit a duplicate copy)
-. Applicant claims small entity status. See 37 CFR 1.27.
-. Specification and Claims in double column copy of patent format
-(amended, if appropriate)
-. Drawing(s) (proposed amendments, if appropriate)
-. Reissue Oath/Declaration (original or copy)
-(37 C.F.R. 1.175) (PTO/SB/51 or 52)
-. Power of Attorney7. Original U.S. Patent currently assigned? Yes No
-(If Yes, check applicable box(es))
-Written Consent of all Assignees (PTO/SB/53)
-CFR 3.73(b) Statement (PTO/SB/96)
-. CD-ROM or CD-R in duplicate, Computer Program (Appendix)
-or large table
-Landscape Table on CD
-. Nucleotide and/or Amino Acid Sequence Submission
-(if applicable, items a. – c. are required))
-a. Computer Readable Form (CRF)
-b. Specification Sequence Listing on:
-i CD-ROM (2 copies) or CD-R (2 copies); or
-ii paper
-c. Statements verifying identity of above copies17. CORRESPONDENCE ADDRESS
-The address associated withCustomer Number: OR Correspondence address below
-Name
-Address
-City State Zip Code
-Country Telephone Email
-Signature Date
-Name (Print/Type) Registration No. (Attorney/Agent)
-This collection of information is required by 37 CFR 1.173. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
-to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete,
-including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
-the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
-Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
-ADDRESS. SEND TO: Mail Stop Reissue,Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
-If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
-Doc Code:
+<p style="padding-left: +40px;">(ii) Being signed by a person having apparent authority
+to sign on behalf of the assignee, e.g., an officer of the
+assignee.</p>
+(c) For patent matters only:
+<p style="padding-left: +20px;">(1) Establishment of ownership by the assignee must be
+submitted prior to, or at the same time as, the paper requesting or
+taking action is submitted.</p>
+<p style="padding-left: +20px;">(2) If the submission under this section is by an assignee
+of less than the entire right, title and interest, such assignee must
+indicate the extent (by percentage) of its ownership interest, or the
+Office may refuse to accept the submission as an establishment of
+ownership.</p>
+|}
-Privacy Act Statment
+The reissue oath must be signed and sworn to by all
-Privacy Act Statement
+the inventors, or declaration made by all the inventors,
-ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
+except as otherwise provided in 37 CFR 1.42,
-with your submission of the attached form related to a patent application or patent. Accordingly,
+.43, and 1.47 (see MPEP § 409). Pursuant to 37 CFR
-pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
+.172, where the reissue application does not seek to
-collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
+enlarge the scope of any of the claims of the original
-and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
+patent, the reissue oath may be made and sworn to, or
-Office is to process and/or examine your submission related to a patent application or patent. If you do
+declaration made, by the assignee of the entire interest.
-not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
+Depending on the circumstances, either Form
-process and/or examine your submission, which may result in termination of proceedings or
+PTO/SB/51, Reissue Application Declaration by the
-abandonment of the application or expiration of the patent.
+Inventor, or Form PTO/SB/52, Reissue Application
-The information provided by you in this form will be subject to the following routine uses:
+Declaration by the Assignee, may be used to prepare a
-. The information on this form will be treated confidentially to the extent allowed under the
+declaration in a reissue application. These forms are
-Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
+reproduced in MPEP § 1414.
-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.
-. 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.
-. 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.
-. 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).
-. 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.
-. 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)).
-. 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.
-. 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.
-. 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.
+If an inventor is to be added in a reissue application,
+a proper reissue oath or declaration including the
+signatures of all of the inventors is required. If one or
+more inventors are being deleted in a reissue application,
+an oath or declaration must be supplied over the
+signatures of the remaining inventors. Note that
+although an inventor being deleted in a reissue application
+need not sign the oath or declaration, if that
+inventor to be deleted has any ownership interest in
+the patent (e.g., that inventor did not assign away his/
+her rights to the patent), the signature of that inventor
+must be supplied in the consent to filing the reissue
+application. See MPEP § 1412.04 as to correction of
+inventorship via reissue.
+I.CONSENT TO THE REISSUE
+Where no assignee exists, applicant should affirmatively
+state that fact. This can be done by simply
+checking the “NO” box of item 7 of Form PTO/SB/50
+(which form may be signed by the inventors, or by a
+registered practitioner). If the file record is silent as to
+the existence of an assignee, it will be presumed that
+an assignee does exist. This presumption should be
+set forth by the examiner in the first Office action
+alerting applicant to the requirement. It should be
+noted that the mere filing of a written assertion of
+small entity status in no way relieves applicant of the
+requirement to affirmatively state that no assignee
+exists.
+Where a written assertion of small entity status, or
+other paper in file indicates that the application/patent
+is assigned, and there is no consent by the assignee
+named in the written assertion of small entity, the
+examiner should make inquiry into the matter in an
+Office action, even if the record otherwise indicates
+that the application/patent is not assigned.
+The reissue oath or declaration must be accompanied
+by the written consent of all assignees. 35 U.S.C.
+(a) and 37 CFR 1.53(b) provide, however, for
+according an application a filing date if filed with a
+specification, including claim(s), and any required
+drawings. Thus, where an application is filed without
+an oath or declaration, or without the consent of all
+assignees, if the application otherwise complies with
+CFR 1.53(b) and the reissue rules, the Office of
+Initial Patent Examination (OIPE) will accord a filing
+date and send out a notice of missing parts setting a
+period of time for filing the missing part and for payment
+of any surcharge required under 37 CFR 1.53(f)
+and 1.16(f). If the reissue oath or declaration is filed
+but the assignee consent is lacking, the surcharge is
+required because, until the consent is filed, the reissue
+oath or declaration is defective, since it is not apparent
+that the signatures thereon are proper absent an indication
+that the assignees have consented to the filing.
+The consent of assignee must be signed by a party
+authorized to act on behalf of the assignee. See MPEP
+§ 324 for a discussion of parties authorized to act on
+behalf of the assignee.
+Where the written consent of all the assignees to the
+filing of the reissue application cannot be obtained,
+applicant may under appropriate circumstances petition
+to the Office of Petitions (MPEP § 1002.02(b))
+for a waiver under 37 CFR 1.183 of the requirement
+of 37 CFR 1.172, to permit the acceptance of the filing
+of the reissue application. The petition fee under
+CFR 1.17(f) must be included with the petition.
-.01Reissue Applicant, Oath or
+The reissue application can then be examined, but
-Declaration, and Consent of all
+will not be allowed or issued without the consent of
-Assignees [R-5]
+all the assignees as required by 37 CFR 1.172. See
+Baker Hughes Inc. v. Kirk, 921 F.Supp. 801, 809,
+USPQ2d 1885, 1892 (D.D.C. 1995), N. B. Fassett,
+C.D. 32, 11 O.G. 420 (Comm’r Pat. 1877);
+James D. Wright, 1876 C.D. 217, 10 O.G. 587
+(Comm’r Pat. 1876).
-CFR 1.172. Applicants, assignees.
+Where a continuation reissue application is filed
+with a copy of the assignee consent from the parent
-(a)A reissue oath must be signed and sworn to or declaration
+reissue application, and the parent reissue application
-made by the inventor or inventors except as otherwise provided
+is not to be abandoned, the copy of the consent should
-(see
+not be accepted. Where a divisional reissue application
-§§
+is filed with a copy of the assignee consent from
+the parent reissue application, regardless of whether
-.42, 1.43, 1.47), and must be accompanied by the
+or not the parent reissue application is to be abandoned,
-written consent of all assignees, if any, owning an undivided interest
+the copy of the consent should not be
-in the patent, but a reissue oath may be made and sworn to or
+accepted. The copy of the consent from the parent
-declaration made by the assignee of the entire interest if the application
+does not indicate that the assignee has consented to
-does not seek to enlarge the scope of the claims of the original
+the addition of the new invention of the divisional
-patent. All assignees consenting to the reissue must establish
+reissue application to the original patent, or to the
-their ownership interest in the patent by filing in the reissue application
+addition of the new error correction of the continuation
-a submission in accordance with the provisions of §
+reissue application. (Presumably, a new correction
+has been added via the continuation, since the
-.73(b)
+parent is still pending.) As noted above, OIPE will
-of this chapter.
+accord a filing date and send out a notice of missing
+parts stating that there is no proper consent and setting
+a period of time for filing the missing part and for
+payment of any surcharge required under 37 CFR
+.53(f) and 1.16(f)
-(b)A reissue will be granted to the original patentee, his
+Where a continuation reissue application is filed
-legal representatives or assigns as the interest may appear.
+with a copy of the assignee consent from the parent
+reissue application, and the parent reissue application
+is, or will be abandoned, the copy of the consent
+should be accepted by the Office.
-CFR 3.73. Establishing right of assignee to take action.
+II.PROOF OF OWNERSHIP OF ASSIGNEE
+The assignee that consents to the filing of the reissue
+application (as discussed above) must also establish
+that it is the assignee, i.e., the owner, of the
+patent. See 37 CFR 1.172. Accordingly, a 37 CFR
+.73(b) paper establishing the ownership of the
+assignee should be submitted at the time of filing the
+reissue application, in order to support the consent of
+the assignee. The assignee must establish its ownership
+in accordance with 37 CFR 3.73(b) by:
+(A) filing in the reissue application documentary
+evidence of a chain of title from the original owner to
+the assignee; or
-(b)(1) In order to request or take action in a patent or trademark
+(B) specifying in the record of the reissue application
-matter, the assignee must establish its ownership of the
+where such evidence is recorded in the Office
-patent or trademark property of paragraph (a) of this section to the
+(e.g., reel and frame number, etc.).
-satisfaction of the Director. The establishment of ownership by
-the assignee may be combined with the paper that requests or
-takes the action. Ownership is established by submitting to the
-Office a signed statement identifying the assignee, accompanied
-by either:
+Compliance with 37
+CFR 3.73(b) may be provided
+as part of the same paper in which the consent by
+assignee is provided.
+In connection with option (A) above, the submission
+of the documentary evidence to establish ownership
+must be accompanied by a statement affirming
+that the documentary evidence of the chain of title
+from the original owners to the assignee was, or concurrently
+is, submitted for recordation pursuant to 37
+CFR 3.11. Thus, when filing a 37 CFR
+.73(b) statement
+to establish ownership, an applicant or patent
+owner must also submit the relied-upon assignment
+document(s) to the Office for recordation, unless such
+a submission has already been previously made. If the
+CFR 3.73(b) statement is not accompanied by a
+statement affirming that the documentary evidence
+was, or concurrently is, submitted for recordation pursuant
+to 37 CFR 3.11, then the 37 CFR
+.73(b) statement will not be accepted, and the assignee(s) will not
+have established the right to take action in the patent
+application or the patent for which the 37
+CFR 3.73(b) statement was submitted. This could
+result, for example, in an incomplete response, where
+a party stated to be the “assignee” signs a consent to
+the reissue to obviate a requirement for submission of
+assignee consent made in an Office action.
-(i) Documentary evidence of a chain of title from the
+Upon initial receipt of a reissue application, the
-original owner to the assignee (e.g., copy of an executed assignment).
+examiner should inspect the application to determine
-For trademark matters only, the documents submitted to
+whether the submission under 37 CFR 1.172 and
-establish ownership may be required to be recorded pursuant to §
+CFR 3.73(b) establishing the ownership of the
-.11 in the assignment records of the Office as a condition to permitting
+assignee is present and sufficient.
-the assignee to take action in a matter pending before the
-Office. For patent matters only, the submission of the documentary
-evidence must be accompanied by a statement affirming that
-the documentary evidence of the chain of title from the original
-owner to the assignee was or concurrently is being submitted for
-recordation pursuant to § 3.11; or
-(ii) A statement specifying where documentary evidence
-of a chain of title from the original owner to the assignee is
-recorded in the assignment records of the Office (e.g., reel and
-frame number).
-(2)The submission establishing ownership must show
+If an assignment document is attached with the
-that the person signing the submission is a person authorized to
+CFR 3.73(b) submission, the assignment should be
-act on behalf of the assignee by:
+reviewed to ensure that the named assignee is the
+same for the assignment document and the 37 CFR
+.73(b) statement, and that the assignment document
+is an assignment of the patent to be reissued to the
+assignee. If an assignment document is not attached
+with the 37 CFR 3.73(b) statement, but rather the reel
+and frame number where the assignment document is
+recorded in the USPTO is referenced in the 37 CFR
+.73(b) statement, it will be presumed that the assignment
+recorded in the USPTO supports the statement
+identifying the assignee. It will not be necessary
+for the examiner to obtain a copy of the recorded
+assignment document.
-(i)Including a statement that the person signing the
+Just as the consent of assignee must be signed by a
-submission is authorized to act on behalf of the assignee; or
+party authorized to act on behalf of the assignee, the
+submission with respect to 37 CFR 3.73(b) to establish
+ownership must be signed by a party authorized
+to act on behalf of the assignee. The signature of an
+attorney or agent registered to practice before the
+Office is not sufficient, unless that attorney or agent is
+authorized to act on behalf of the assignee.
-(ii)Being signed by a person having apparent authority
+Where the submission establishes the assignee’s
-to sign on behalf of the assignee, e.g., an officer of the
+ownership as to the patent, ownership as to the reissue
-assignee.
+application will be presumed. Accordingly, a submission
+as to the ownership of the patent will be construed
+to satisfy the 37
+CFR1.172 (and 37 CFR
+.73(b)) requirements for establishing ownership of
+the application. Thus, a terminal disclaimer can be
+filed in a reissue application where ownership of the
+patent has been established, without the need for a
+separate submission under 37 CFR 3.73(b) showing
+ownership of the reissue application.
-(c)For patent matters only:
+Even if the submission states that it is establishing
+ownership of the reissue application (rather than the
+patent), the submission should be accepted by the
+examiner as also establishing ownership in the patent.
+The documentation in the submission establishing
+ownership of the reissue application must, of necessity,
+include chain of title as to the patent.
-(1)Establishment of ownership by the assignee must be
+III.COMPARISON OF ASSIGNEE THAT
-submitted prior to, or at the same time as, the paper requesting or
+CONSENTS TO ASSIGNEE SET FORTH
-taking action is submitted.
+IN SUBMISSION ESTABLISHING OWNERSHIP
+INTEREST
-(2)If the submission under this section is by an assignee
+The examiner must inspect both the consent and
-of less than the entire right, title and interest, such assignee must
+documentary evidence of ownership to determine
-indicate the extent (by percentage) of its ownership interest, or the
+whether the requirements of 37 CFR 1.172 have been
-Office may refuse to accept the submission as an establishment of
+met. The assignee identified by the documentary evidence
-ownership.
+must be the same assignee which signed the
+consent. Also, the person who signs the consent for
+the assignee and the person who signs the submission
+of evidence of ownership for the assignee must both
+be persons having authority to do so. See also MPEP
+§ 324.
-The reissue oath must be signed and sworn to by all
+The reissue patent will be granted to the original
-the inventors, or declaration made by all the inventors,
+patentee, his or her legal representatives or assigns as
-except as otherwise provided in 37 CFR 1.42,
+the interest may appear.
-.43, and 1.47 (see MPEP § 409). Pursuant to 37 CFR
-.172, where the reissue application does not seek to
-enlarge the scope of any of the claims of the original
-patent, the reissue oath may be made and sworn to, or
-declaration made, by the assignee of the entire interest.
-Depending on the circumstances, either Form
-PTO/SB/51, Reissue Application Declaration by the
-Inventor, or Form PTO/SB/52, Reissue Application
-Declaration by the Assignee, may be used to prepare a
-declaration in a reissue application. These forms are
-reproduced in MPEP § 1414.
-If an inventor is to be added in a reissue application,
+==1411 Form of Specification==
-a proper reissue oath or declaration including the
-signatures of all of the inventors is required. If one or
-more inventors are being deleted in a reissue application,
-an oath or declaration must be supplied over the
-signatures of the remaining inventors. Note that
-although an inventor being deleted in a reissue application
-need not sign the oath or declaration, if that
-inventor to be deleted has any ownership interest in
-the patent (e.g., that inventor did not assign away his/
-her rights to the patent), the signature of that inventor
-must be supplied in the consent to filing the reissue
-application. See MPEP § 1412.04 as to correction of
-inventorship via reissue.
-I.CONSENT TO THE REISSUE
+{{Statute|37 CFR 1.173. Reissue specification, drawings, and amendments.}}
+(a) Contents of a reissue application. An application for
+reissue must contain the entire specification, including the claims,
+and the drawings of the patent. No new matter shall be introduced
+into the application. No reissue patent shall be granted enlarging
+the scope of the claims of the original patent unless applied for
+within two years from the grant of the original patent, pursuant to
+U.S.C. 251.
-Where no assignee exists, applicant should affirmatively
+<p style="padding-left: +20px;">(1) Specification, including claims. The entire specification,
-state that fact. This can be done by simply
+including the claims, of the patent for which reissue is
-checking the “NO” box of item 7 of Form PTO/SB/50
+requested must be furnished in the form of a copy of the printed
-(which form may be signed by the inventors, or by a
+patent, in double column format, each page on only one side of a
-registered practitioner). If the file record is silent as to
+single sheet of paper. If an amendment of the reissue application is
-the existence of an assignee, it will be presumed that
+to be included, it must be made pursuant to paragraph (b) of this
+section. The formal requirements for papers making up the reissue
+application other than those set forth in this section are set out in §
+.52. Additionally, a copy of any disclaimer (§ 1.321), certificate
+of correction (§§ 1.322 through 1.324), or reexamination certificate
+(§ 1.570) issued in the patent must be included. (See also
+§ 1.178).</p>
+<p style="padding-left: +20px;">(2) Drawings. Applicant must submit a clean copy of
+each drawing sheet of the printed patent at the time the reissue
+application is filed. If such copy complies with § 1.84, no further
+drawings will be required. Where a drawing of the reissue application
+is to include any changes relative to the patent being reissued,
+the changes to the drawing must be made in accordance with
+paragraph (b)(3) of this section. The Office will not transfer the
+drawings from the patent file to the reissue application.</p>
+|}
+The file wrappers of all /08 and earlier series reissue
+applications are stamped “REISSUE” above the
+application number on the front of the file. “Reissue”
+also appears below the application number on the
+printed label on the file wrapper of the application
+with 08/ and earlier series.
+Reissue applications filed after July of 1998 (09/
+series and later) are placed in an orange and white
+striped file wrapper and can be easily identified as
+reissue applications. (For IFW Processing, see IFW
+Manual.)
-an assignee does exist. This presumption should be
+Reissue applications filed prior to November 7,
-set forth by the examiner in the first Office action
+should be furnished in the form of cut-up soft
-alerting applicant to the requirement. It should be
+copies of the original patent, with only a single column
-noted that the mere filing of a written assertion of
+of the printed patent securely mounted on a separate
-small entity status in no way relieves applicant of the
+sheet of paper.
-requirement to affirmatively state that no assignee
-exists.
-Where a written assertion of small entity status, or
+For reissue applications filed on or after November
-other paper in file indicates that the application/patent
+, 2000, 37 CFR 1.173(a)(1) requires that the application
-is assigned, and there is no consent by the assignee
+specification, including the claims, must be furnished
-named in the written assertion of small entity, the
+in the form of a copy of the printed patent in
-examiner should make inquiry into the matter in an
+double column format (so that the patent can be simply
-Office action, even if the record otherwise indicates
+copied without cutting). Applicants are required to
-that the application/patent is not assigned.
+submit a clean copy of each drawing sheet of the
+printed patent at the time the reissue application is
-The reissue oath or declaration must be accompanied
+filed (37 CFR 1.173(a)(2)). Any changes to the drawings must be made in accordance with 37 CFR
-by the written consent of all assignees. 35 U.S.C.
+.173(b)(3). Thus, a full copy of the printed patent
-(a) and 37 CFR 1.53(b) provide, however, for
+(including the front page) is used to provide the
-according an application a filing date if filed with a
+abstract, drawings, specification, and claims of the
-specification, including claim(s), and any required
+patent for the reissue application. Each page of the
-drawings. Thus, where an application is filed without
+patent must appear on only one side of each individual
-an oath or declaration, or without the consent of all
+page of the specification of the reissue application;
-assignees, if the application otherwise complies with
+a two-sided copy of the patent is not proper. It
-CFR 1.53(b) and the reissue rules, the Office of
+should be noted that a re-typed specification is not
-Initial Patent Examination (OIPE) will accord a filing
+acceptable in a reissue application; the full copy of the
-date and send out a notice of missing parts setting a
+printed patent must be used. If, however, the changes
-period of time for filing the missing part and for payment
+to be made to the patent are so extensive/numerous
-of any surcharge required under 37 CFR 1.53(f)
+that reading and understanding the specification is
-and 1.16(f). If the reissue oath or declaration is filed
+extremely difficult and error-prone, a clean copy of
-but the assignee consent is lacking, the surcharge is
+the specification may be submitted if accompanied by
-required because, until the consent is filed, the reissue
+a grantable petition under 37 CFR 1.183 for waiver of
-oath or declaration is defective, since it is not apparent
+CFR 1.125(d) and 37 CFR 1.173(a)(1).
-that the signatures thereon are proper absent an indication
-that the assignees have consented to the filing.
-The consent of assignee must be signed by a party
+Pursuant to 37 CFR 1.173(b), amendments may be
-authorized to act on behalf of the assignee. See MPEP
+made at the time of filing of a reissue application.
-§ 324 for a discussion of parties authorized to act on
+The amendment may be made either by:
-behalf of the assignee. The consent to the reissue
-application may use language such as:
-The XYZ Corporation, assignee of U.S. Patent No.
+(A) physically incorporating the changes within
-,999,999, consents to the filing of reissue application No.
+the specification by cutting the column of the printed
-/999,999 (or the present application, if filed with the
+patent and inserting the added material and rejoining
-initial application papers) for the reissue of U.S. Patent
+the remainder of the column and then joining the
-No. 9,999,999.
+resulting modified column to the other column of the
+printed patent. Markings pursuant to 37 CFR 1.173(d)
+must be used to show the changes. The columnar
+structure of the printed patent must be preserved, and
+the physically modified page must comply with 37
+CFR 1.52(a)(1). As to compliance with 37 CFR
+.52(a)(1)(iv), the “written either by a typewriter or
+machine printer in permanent dark ink or its equivalent”
+requirement is deemed to be satisfied where a
+caret and line are drawn from a position within the
+text to a newly added phrase, clause, sentence, etc.
+typed legibly in the margin; or
+(B) providing a preliminary amendment (a separate
+amendment paper) directing that specified
+changes be made to the copy of the printed patent.
-_______________
+The presentation of the insertions or deletions as
+part of the original reissue specification is an amendment
+under 37 CFR 1.173(b). An amendment of the
+reissue application made at the time of filing of the
-Lilly M. Schor
+reissue application must be made in accordance with
+CFR 1.173(b)-(e) and (g); see MPEP § 1453. Thus,
+as required by 37 CFR 1.173(c), an amendment of the
+claims made at the time of filing of a reissue application
+must include a separate paper setting forth the
+status of all claims (i.e., pending or canceled), and an
+explanation of the support in the disclosure of the
+patent for the changes made to the claims.
-Vice President,
+If a chart, table, or chemical formula is amended
+and it spans two columns of the patent, it should not
+be split. Rather, the chart, table, or chemical formula
+should be provided in its entirety as part of the column
+of the patent to which it pertains, in order to provide
+a continuity of the description. When doing so,
+the chart, table, or chemical formula may extend
+beyond the width of the column. Change in only a part
+of a word or chemical formula is not permitted. Entire
+words or chemical formulas must be shown as being
+changed. Deletion of a chemical formula should be
+shown by brackets which are substantially larger and
+darker than any in the formula.
+Where a terminal disclaimer was filed in the application
+for the patent to be reissued, a copy of that terminal
+disclaimer is not needed in the reissue
+application file. For a reissue application that is
+maintained in a paper file, the face of the file wrapper
+should be marked to indicate that a terminal disclaimer
+has been filed for the patent. For a reissue
+application that is maintained in IFW, the “Final
+SPRE Review” form will be filled in.
-XYZ Corporation
+Twice reissued patent:
-Where the written consent of all the assignees to the
+Examples of the form for a twice-reissued patent
-filing of the reissue application cannot be obtained,
+are found in Re. 23,558 and Re. 28,488. Double
-applicant may under appropriate circumstances petition
+underlining and double bracketing are used in the second
-to the Office of Petitions (MPEP § 1002.02(b))
+reissue application, while bold-faced type and
-for a waiver under 37 CFR 1.183 of the requirement
+double bracketing appear in the printed patent (the
-of 37 CFR 1.172, to permit the acceptance of the filing
+second reissue patent) to indicate further insertions
-of the reissue application. The petition fee under
+and deletions, respectively, in the second reissue
-CFR 1.17(f) must be included with the petition.
+patent.
-The reissue application can then be examined, but
+When a copy of a first reissue patent is used as the
-will not be allowed or issued without the consent of
+specification of a second reissue application (filed as
-all the assignees as required by 37 CFR 1.172. See
+a reissue of a reissue), additions made by the first reissue
-Baker Hughes Inc. v. Kirk, 921 F.Supp. 801, 809,
+will already be printed in italics, and should
+remain in such format. Thus, applicants need only
-USPQ2d 1885, 1892 (D.D.C. 1995), N. B. Fassett,
+present additions to the specification/claims in the
-C.D. 32, 11 O.G. 420 (Comm’r Pat. 1877);
+second reissue application as double underlined text.
-James D. Wright, 1876 C.D. 217, 10 O.G. 587
+Subject matter to be deleted from the first reissue
-(Comm’r Pat. 1876).
+patent should be presented in the second reissue application
+within sets of double brackets.
-Where a continuation reissue application is filed
-with a copy of the assignee consent from the parent
-reissue application, and the parent reissue application
-is not to be abandoned, the copy of the consent should
-not be accepted. Where a divisional reissue application
-is filed with a copy of the assignee consent from
-the parent reissue application, regardless of whether
-or not the parent reissue application is to be abandoned,
-the copy of the consent should not be
-accepted. The copy of the consent from the parent
-does not indicate that the assignee has consented to
-the addition of the new invention of the divisional
-reissue application to the original patent, or to the
-addition of the new error correction of the continuation
-reissue application. (Presumably, a new correction
-has been added via the continuation, since the
-parent is still pending.) As noted above, OIPE will
-accord a filing date and send out a notice of missing
-parts stating that there is no proper consent and setting
-a period of time for filing the missing part and for
-payment of any surcharge required under 37 CFR
-.53(f) and 1.16(f)
-Where a continuation reissue application is filed
+===1411.01 Certificate of Correction or Disclaimer in Original Patent===
-with a copy of the assignee consent from the parent
-reissue application, and the parent reissue application
-is, or will be abandoned, the copy of the consent
-should be accepted by the Office.
+The applicant should include any changes, additions,
+or deletions that were made by a Certificate of
+Correction to the original patent grant in the reissue
+application without underlining or bracketing. The
+examiner should  make certain that all Certificate of
+Correction changes in the patent have been properly
+incorporated into the reissue application.
+Certificate of Correction changes and disclaimer of
+claim(s) under 37 CFR 1.321(a) should be made without
+using underlining or brackets. Since these are part
+of the original patent and were made before the reissue
+was filed, they should show up in the printed reissue
+patent document as part of the original patent,
+i.e., not in italics or bracketed. If the changes are
+extensive and/or applicant has submitted them
+improperly with underlining and brackets, a clean
+copy of the specification with the Certificate of Correction
+changes in it may be requested by the examiner.
+In order for the clean copy to be entered as a
+substitute specification, the reissue applicant must file
+a grantable petition under 37 CFR 1.183 for waiver of
+CFR 1.125(d) and 37 CFR 1.173(a)(1). The examiner’
+s request for the clean copy will generally serve
+as sufficient basis for granting the petition.
+===1411.02 New Matter===
+New matter, that is, matter not present in the patent
+sought to be reissued, is excluded from a reissue
+application in accordance with 35 U.S.C. 251.
-Form paragraph 14.15 may be used to indicate that
+The claims in the reissue application must be for
-the consent of the assignee is lacking.
+subject matter which the applicant had the right to
+claim in the original patent. Any change in the patent
-¶ 14.15 Consent of Assignee to Reissue Lacking
+made via the reissue application should be checked to
+ensure that it does not introduce new matter. Note that
-This application is objected to under 37 CFR 1.172(a) as lacking
+new matter may exist by virtue of the omission of a
-the written consent of all assignees owning an undivided interest
+feature or of a step in a method. See United States
-in the patent. The consent of the assignee must be in
+Industrial Chemicals, Inc. v. Carbide & Carbon
-compliance with 37 CFR 1.172. See MPEP § 1410.01.
+Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942).
-A proper assent of the assignee in compliance with 37 CFR
+==1412 Content of Claims==
-.172 and 3.73 is required in reply to this Office action.
-Examiner Note:
+The content of claims in a reissue application is
+somewhat limited, as is indicated in MPEP § 1412.01through MPEP § 1412.03.
-.This form paragraph may be used in an Office action which
+.01Reissue Claims Must Be for
-rejects any of the claims on other grounds.
+Same General Invention [R-2]
-.If a consent document/statement has been submitted but is
+The reissue claims must be for the same invention
-insufficient (e.g., not by all the assignees) or is otherwise ineffective
+as that disclosed as being the invention in the
-(e.g., a conditional consent, or a copy of the consent from the
+original patent, as required by 35 U.S.C. 251. This
-parent reissue application was filed in this continuation reissue
+does not mean that the invention claimed in the reissue
-application and the parent reissue application is not being abandoned),
+must have been claimed in the original patent,
-an explanation of such is to be included following this
+although this is evidence that applicants considered it
-form paragraph.
+their invention. The entire disclosure, not just the
+claim(s), is considered in determining what the patentee
+objectively intended as his or her invention. The
+proper test as to whether reissue claims are for the
+same invention as that disclosed as being the invention
+in the original patent is “an essentially factual
+inquiry confined to the objective intent manifested by
+the original patent.” In re Amos, 953 F.2d 613, 618,
+USPQ2d 1271, 1274 (Fed. Cir. 1991) (quoting In
+re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489
+(CCPA 1975)) (emphasis added). See also In re Mead,
+F.2d 257, 198 USPQ 412 (CCPA 1978). The
+“original patent” requirement of 35 U.S.C. 251 must
+be understood in light of In re Amos, supra, where the
+Court of Appeals for the Federal Circuit stated:
-.If the case is otherwise ready for allowance, this form paragraph
+We conclude that, under both Mead and Rowand, a claim
-should be followed by form paragraph 7.51 (insert the
+submitted in reissue may be rejected under the “original
-phrase --See above-- in bracket 1 of form paragraph 7.51).
+patent” clause if the original specification demonstrates,
+to one skilled in the art, an absence of disclosure sufficient
+to indicate that a patentee could have claimed the subject
+matter. Merely finding that the subject matter was “not
+originally claimed, not an object of the original patent,
+and not depicted in the drawing,” does not answer the
+essential inquiry under the “original patent” clause of §
+, which is whether one skilled in the art, reading the
-II.PROOF OF OWNERSHIP OF ASSIGNEE
-The assignee that consents to the filing of the reissue
-application (as discussed above) must also establish
-that it is the assignee, i.e., the owner, of the
-patent. See 37 CFR 1.172. Accordingly, a 37 CFR
-.73(b) paper establishing the ownership of the
-assignee should be submitted at the time of filing the
-reissue application, in order to support the consent of
-the assignee. The assignee must establish its ownership
-in accordance with 37 CFR 3.73(b) by:
-(A)filing in the reissue application documentary
-evidence of a chain of title from the original owner to
-the assignee; or
-(B)specifying in the record of the reissue application
-where such evidence is recorded in the Office
-(e.g., reel and frame number, etc.).
-Compliance with 37
+specification, would identify the subject matter of the new
-CFR 3.73(b) may be provided
+claims as invented and disclosed by the patentees. In
-as part of the same paper in which the consent by
+short, the absence of an “intent,” even if objectively evident
-assignee is provided.
+from the earlier claims, the drawings, or the original
+objects of the invention is simply not enough to establish
+that the new claims are not drawn to the invention disclosed
+in the original patent.
-In connection with option (A) above, the submission
+F.2d at 618-19, 21 USPQ2d at 1275. Claims presented
-of the documentary evidence to establish ownership
+in a reissue application are considered to satisfy
-must be accompanied by a statement affirming
+the requirement of 35 U.S.C. 251 that the claims
-that the documentary evidence of the chain of title
+be “for the invention disclosed in the original patent”
-from the original owners to the assignee was, or concurrently
+where:
-is, submitted for recordation pursuant to 37
-CFR
-.11. Thus, when filing a 37 CFR
-.73(b) statement
-to establish ownership, an applicant or patent
-owner must also submit the relied-upon assignment
-document(s) to the Office for recordation, unless such
-a submission has already been previously made. If the
-CFR
-.73(b) statement is not accompanied by a
-statement affirming that the documentary evidence
-was, or concurrently is, submitted for recordation pursuant
-to 37 CFR
-.11, then the 37 CFR
-.73(b) statement
-will not be accepted, and the assignee(s) will not
-have established the right to take action in the patent
-application or the patent for which the 37
-CFR
-.73(b) statement was submitted. This could
-result, for example, in an incomplete response, where
-a party stated to be the “assignee” signs a consent to
-the reissue to obviate a requirement for submission of
-assignee consent made in an Office action.
-Upon initial receipt of a reissue application, the
+(A)the claims presented in the reissue application
-examiner should inspect the application to determine
+are described in the original patent specification and
-whether the submission under 37 CFR 1.172 and
+enabled by the original patent specification such that
+U.S.C. 112 first paragraph is satisfied; and
-CFR 3.73(b) establishing the ownership of the
-assignee is present and sufficient.
-If an assignment document is attached with the
+(B)nothing in the original patent specification
+indicates an intent not to claim the subject matter of
-CFR 3.73(b) submission, the assignment should be
+the claims presented in the reissue application.
-reviewed to ensure that the named assignee is the
-same for the assignment document and the 37 CFR
-.73(b) statement, and that the assignment document
-is an assignment of the patent to be reissued to the
-assignee. If an assignment document is not attached
-with the 37 CFR 3.73(b) statement, but rather the reel
-and frame number where the assignment document is
-recorded in the USPTO is referenced in the 37 CFR
-.73(b) statement, it will be presumed that the assignment
-recorded in the USPTO supports the statement
-identifying the assignee. It will not be necessary
-for
-the examiner to obtain a copy of the recorded
-assignment document. If the submission under
-CFR 1.172 and 37 CFR 3.73(b) is not present,
-form paragraph 14.16 may be used to indicate that the
-assignee has not provided evidence of ownership.
-¶ 14.16 Failure of Assignee To Establish Ownership
+The presence of some disclosure (description
+and enablement) in the original patent should evidence
-This application is objected to under 37 CFR 1.172(a) as the
+that applicant intended to claim or that applicant
-assignee has not established its ownership interest in the patent for
+considered the material now claimed to be his or
-which reissue is being requested. An assignee must establish its
+her invention.
-ownership interest in order to support the consent to a reissue
-application required by 37 CFR 1.172(a). The assignee’s ownership
-interest is established by:
+The original patent specification would indicate an
+intent not to claim the subject matter of the claims
+presented in the reissue application in a situation analogous
+to the following:
+The original patent specification discloses that
+composition X is not suitable (or not satisfactory) for
+molding an item because composition X fails to provide
+quick drying. After the patent issues, it is found
+that composition X would be desirable for the molding
+in spite of the failure to provide quick drying,
+because of some other newly recognized benefit from
+composition X. A claim to composition X or a method
+of use thereof would not be permitted in a reissue
+application, because the original patent specification
+contained an explicit statement of intent not to claim
+composition X or a method of use thereof.
+In most instances, however, the mere failure to
+claim a disclosed embodiment in the original patent
+(absent an explicit statement in the original patent
+specification of unsuitability of the embodiment)
+would not be grounds for prohibiting a claim to that
+embodiment in the reissue.
+FAILURE TO TIMELY FILE A DIVISIONAL
+APPLICATION PRIOR TO ISSUANCE OF
+ORIGINAL PATENT
-(a) filing in the reissue application evidence of a chain of title
+Where a restriction requirement was made in an
-from the original owner to the assignee, or
+application and applicant permitted the elected invention
+to issue as a patent without the filing of a divisional
+application on the non-elected invention(s), the
+non-elected invention(s) cannot be recovered by filing
+a reissue application. A reissue applicant’ s failure to
+timely file a divisional application covering the non-
+elected invention(s) in response to a restriction
+requirement is not considered to be error causing a
+patent granted on the elected claims to be partially
+inoperative by reason of claiming less than the applicant
+had a right to claim. Accordingly, such error is
+not correctable by reissue of the original patent under
+U.S.C. 251. In re Watkinson, 900 F.2d 230, 14
+USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 550 F.2d
+, 1280, 193 USPQ 145, 148 (CCPA 1977). See
+also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA
+). In this situation, the reissue claims should be
+rejected under 35 U.S.C. 251 for lack of defect in the
+original patent and lack of error in obtaining the original
+patent. Compare with In re Doyle, 293 F.3d 1355,
+USPQ2d 1161 (Fed. Cir. 2002) where the court
+permitted the patentee to file a reissue application to
+present a so-called linking claim, a claim broad
+enough to read on or link the invention elected (and
+patented) together with the invention not elected. The
+non-elected invention(s) were inadvertently not filed
+as a divisional application.
-(b) specifying in the record of the reissue application where
+.02Recapture of Canceled SubjectMatter [R-5]
-such evidence is recorded in the Office (e.g., reel and frame number,
-etc.).
-The submission with respect to (a) and (b) to establish ownership
+A reissue will not be granted to “recapture” claimed
-must be signed by a party authorized to act on behalf of the
+subject matter which was surrendered in an application
-assignee. See MPEP § 1410.01.
+to obtain the original patent. North American
+Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d
-An appropriate paper satisfying the requirements of 37 CFR
+, 75 USPQ2d 1545 (Fed. Cir. 2005, Pannu v.
-.73 must be submitted in reply to this Office action.
+Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d
+(Fed. Cir. 2001); Hester Industries, Inc. v. Stein,
-Examiner Note:
+Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir.
+); In re Clement, 131 F.3d 1464, 45 USPQ2d
+(Fed. Cir. 1997); Ball Corp. v. United States, 729
+F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir.
+); In re Wadlinger, 496 F.2d 1200, 181 USPQ
+(CCPA 1974); In re Richman, 409 F.2d 269, 276,
-.This form paragraph may be used in an Office action which
-rejects any of the claims on other grounds.
-.If otherwise ready for allowance, this form paragraph should
-be followed by form paragraph 7.51 (insert the phrase --See
-above-- in bracket 1 of form paragraph 7.51).
-Just as the consent of assignee must be signed by a
-party authorized to act on behalf of the assignee, the
-submission with respect to 37 CFR 3.73(b) to establish
-ownership must be signed by a party authorized
-to act on behalf of the assignee. The signature of an
-attorney or agent registered to practice before the
-Office is not sufficient, unless that attorney or agent is
-authorized to act on behalf of the assignee.
-If the submission under 37 CFR 3.73(b) to establish
-ownership is not signed by a party authorized to act
-on behalf of the assignee, the appropriate paragraphs
-of form paragraphs 14.16.01 through 14.16.06 may be
-used.
+USPQ 359, 363-364 (CCPA 1969); In re Willingham,
+F.2d 353, 127 USPQ 211 (CCPA 1960).
+I.THREE STEP TEST FOR RECAPTURE:
-¶ 14.16.01 Establishment of Ownership Not Signed by
+In Clement, 131 F.3d at 1468-70, 45 USPQ2d at
-Appropriate Party
+-65, the Court of Appeals for the Federal Circuit
+set forth a three step test for recapture analysis. In
+Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600, the
+court restated this test as follows:
-This application is objected to under 37 CFR 1.172(a) as the
+Application of the recapture rule is a three-step process.
-assignee has not established its ownership interest in the patent for
-which reissue is being requested. An assignee must establish its
-ownership interest in order to support the consent to a reissue
-application required by 37 CFR 1.172(a). The submission establishing
-the ownership interest of the assignee is informal. There is
-no indication of record that the party who signed the submission is
-an appropriate party to sign on behalf of the assignee. 37 CFR
-.73(b)
-A proper submission establishing ownership interest in the
-patent, pursuant to 37 CFR 1.172(a), is required in response to this
-action.
-Examiner Note:
+The first step is to ‘determine whether and in what aspect
+the reissue claims are broader than the patent claims.’....
-.This form paragraph should be followed: by one of form
+‘The second step is to determine whether the broader
-paragraphs 14.16.02 through 14.16.04, and then optionally by
+aspects of the reissued claim related to surrendered subject
-form paragraph 14.16.06.
+matter’ ....
-.See MPEP § 1410.01.
+Finally, the court must determine whether the reissued
+claims were materially narrowed in other respects to avoid
+the recapture rule. [Emphasis added]
+A.The First Step - Was There Broadening?
+In every reissue application, the examiner must first
+review each claim for the presence of broadening, as
+compared with the scope of the claims of the patent to
+be reissued. A reissue claim is broadened where some
+limitation of the patent claims is no longer required in
+the reissue claim; see MPEP § 1412.03 for guidance
+as to the nature of a “broadening claim.” If the reissue
+claim is not broadened in any respect as compared to
+the patent claims, the analysis ends; there is no recapture.
-¶ 14.16.02 Failure To State Capacity To Sign
-The person who signed the submission establishing ownership
+B.The Second Step - Does Any Broadening
-interest has failed to state his/her capacity to sign for the corporation
+Aspect of the Reissued Claim Relate to
-or other business entity, and he/she has not been established
+Surrendered Subject Matter?
-as being authorized to act on behalf of the assignee. See MPEP §
-.
-Examiner Note:
+Where a claim in a reissue application is broadened
+in some respect as compared to the patent claims, the
-.This form paragraph is to be used when the person signing
+examiner must next determine whether the broadening
-the submission establishing ownership interest does not state his/
+aspect(s) of that reissue claim relate(s) to subject
-her capacity (e.g., as a recognized officer) to sign for the assignee,
+matter that applicant previously surrendered during
-and is not established as being authorized to act on behalf of the
+the prosecution of the original application (which
-assignee.
+became the patent to be reissued). Each limitation of
+the patent claims, which is omitted or broadened in
-.Use form paragraph 14.16.06 to explain how an official,
+the reissue claim, must be reviewed for this determination.
-other than a recognized officer, may properly sign a submission
+This involves two sub-steps:
-establishing ownership interest.
-¶ 14.16.03 Lack of Capacity To Sign
+.The Two Sub-Steps:
-The person who signed the submission establishing ownership
+(A)It must first be determined whether there was
-interest is not recognized as an officer of the assignee, and he/she
+any surrender of subject matter made in the prosecution
-has not been established as being authorized to act on behalf of the
+of the original application which became the
-assignee. See MPEP § 324.
+patent to be reissued.
-¶ 14.16.04 Attorney/Agent of Record Signs
+If an original patent claim limitation now being
+omitted or broadened in the present reissue application
+was originally relied upon by applicant in the
+original application to make the claims allowable over
+the art, the omitted limitation relates to subject matter
+previously surrendered by applicant. The reliance by
+applicant to define the original patent claims over the
+art can be by way of presentation of new/amended
+claims to define over the art, or an argument/statement
+by applicant that a limitation of the claim(s)
+defines over the art. To determine whether such reliance
+occurred, the examiner must review the prosecution
+history of the original application file (of the
+patent to be reissued) for recapture. The prosecution
+history includes the rejections and applicant’s arguments
+made therein.
-The submission establishing ownership interest was signed by
+If there was no surrender of subject matter made
-applicant’s [1]. An attorney or agent of record is not authorized to
+in the prosecution of the original application, again
-sign a submission establishing ownership interest, unless he/she
+the analysis ends and there is no recapture.
-has been established as being authorized to act on behalf of the
-assignee. See MPEP § 324.
-Examiner Note:
+(B)If there was a surrender of subject matter in
+the original application prosecution, it must then be
+determined whether any of the broadening of the reissue
+claims is in the area of the surrendered subject
+matter. All of the broadening aspects of reissue claims
+must be analyzed to determine if any of the omitted/
+broadened limitation(s) are directed to limitations
+relied upon by applicant in the original application to
+make the claims allowable over the art.
-.This form paragraph is to be used when the person signing
+.Examples of the Pannu Second Step Analysis:
-the submission establishing ownership interest is an attorney or
-agent of record who is not an authorized officer as defined in
-MPEP § 324 and has not been established as being authorized to
-act on behalf of the assignee.
-.Use form paragraph 14.16.06 to explain how an official,
-other than a recognized officer, may properly sign a submission
-establishing ownership interest.
-.In bracket 1, insert either --attorney-- or --agent--.
+(A)Example (1) - Argument without amendment:
-¶ 14.16.06 Criteria To Accept When Signed by a Non-
+In Hester, supra, the Federal Circuit held that the
-Recognized Officer
+surrender which forms the basis for impermissible
+recapture “can occur through arguments alone”.
-It would be acceptable for a person, other than a recognized
-officer, to sign a submission establishing ownership interest, provided
+F.3d at 1482, 46 USPQ2d at 1649. For example,
-the record for the application includes a duly signed statement
+assume that limitation A of the patent claims is omitted
-that the person is empowered to sign a submission
+in the reissue claims. This omission provides a
-establishing ownership interest and/or act on behalf of the
+broadening aspect in the reissue claims, as compared
-assignee.
+to the claims of the patent. If the omitted limitation A
+was argued in the original application to make the
+application claims allowable over the art in the appli
-Accordingly, a new submission establishing ownership interest
-which includes such a statement above, will be considered to be
-signed by an appropriate official of the assignee. A separately
-filed paper referencing the previously filed submission establishing
-ownership interest and containing a proper empowerment
-statement would also be acceptable.
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraphs
-.16.02, 14.16.03 or 14.16.04.
@@ Line 1,355: / Line 1,447: @@
-.When one of form paragraphs 14.16.02, 14.16.03 or 14.16.04is used to indicate that a submission establishing ownership interest
+cation, then the omitted limitation relates to subject
-is not proper because it was not signed by a recognized officer,
+matter previously surrendered in the original application,
-this form paragraph should be used to point out one way to correct
+and recapture will exist. Accordingly, where
-the problem.
+claims are broadened in a reissue application, the
+examiner should review the prosecution history of the
-.While an indication of the person’s title is desirable, its inclusion
+original patent file for recapture, even where the
-is not mandatory when this option is employed.
+claims were never amended during the prosecution of
+the application which resulted in the patent.
-Where the submission establishes the assignee’s
-ownership as to the patent, ownership as to the reissue
-application will be presumed. Accordingly, a submission
-as to the ownership of the patent will be construed
-to satisfy the 37
-CFR1.172 (and 37 CFR
-.73(b)) requirements for establishing ownership of
-the application. Thus, a terminal disclaimer can be
-filed in a reissue application where ownership of the
-patent has been established, without the need for a
-separate submission under 37 CFR 3.73(b) showing
-ownership of the reissue application.
-Even if the submission states that it is establishing
+Note: The argument that the claim limitation
-ownership of the reissue application (rather than the
+defined over the rejection must have been specific as
-patent), the submission should be accepted by the
+to the limitation relied upon, rather than a general
-examiner as also establishing ownership in the patent.
+statement regarding the claims as a whole. A general
-The documentation in the submission establishing
+'boiler plate' sentence in the original application will
-ownership of the reissue application must, of necessity,
+not, by itself, be sufficient to establish surrender and
-include chain of title as to the patent.
+recapture.
-III.COMPARISON OF ASSIGNEE THAT
+An example of a general “boiler plate” sentence of
-CONSENTS TO ASSIGNEE SET FORTH
+argument is:
-IN SUBMISSION ESTABLISHING OWNERSHIP
-INTEREST
-The examiner must inspect both the consent and
+“In closing, it is argued that the limitations of claims 1-7
-documentary evidence of ownership to determine
+distinguish the claims from the teachings of the prior art,
-whether the requirements of 37 CFR 1.172 have been
+and claims 1-7 are thus patentable.”
-met. The assignee identified by the documentary evidence
-must be the same assignee which signed the
-consent. Also, the person who signs the consent for
-the assignee and the person who signs the submission
-of evidence of ownership for the assignee must both
-be persons having authority to do so. See also MPEP
-§ 324.
-The reissue patent will be granted to the original
+An argument that merely states that all the limitations
-patentee, his or her legal representatives or assigns as
+of the claims define over the prior art will also
-the interest may appear.
+not, by itself, be sufficient to establish surrender and
+recapture. An example is:
-Form of Specification [R-3]
+“Claims 1-5 set forth a power-train apparatus which comprises
+the combination of A+B+C+D+E. The prior art of
-CFR 1.173. Reissue specification, drawings, and
+record does not disclose or render obvious a motivation to
-amendments.
+provide for a material-transfer apparatus as defined by the
+limitations of claim 1, including an A member and a B
+member, both connected to a C member, with all three
+being aligned with the D and E members.”
-(a)Contents of a reissue application. An application for
+This statement is simply a restatement of the
-reissue must contain the entire specification, including the claims,
+entirety of claim 1 as allowed. No measure of surrender
-and the drawings of the patent. No new matter shall be introduced
+could be gleaned from such a statement of reasons
-into the application. No reissue patent shall be granted enlarging
+for allowance. See Ex parte Yamaguchi, 61 USPQ2d
-the scope of the claims of the original patent unless applied for
+(Bd. Pat. App. & Inter. 2001)(reported but
-within two years from the grant of the original patent, pursuant to
+unpublished, precedential).
-U.S.C. 251.
-(1)Specification, including claims. The entire specification,
+In both of the above examples, the argument does
-including the claims, of the patent for which reissue is
+not provide an indication of what specific limitations,
-requested must be furnished in the form of a copy of the printed
+e.g., specific element or step of the claims, cooperative
-patent, in double column format, each page on only one side of a
+effect, or other aspect of the claims, are being
-single sheet of paper. If an amendment of the reissue application is
+relied upon for patentability. Thus, applicant has not
-to be included, it must be made pursuant to paragraph (b) of this
+surrendered anything.
-section. The formal requirements for papers making up the reissue
-application other than those set forth in this section are set out in §
-.52. Additionally, a copy of any disclaimer (§ 1.321), certificate
-of correction (§§ 1.322 through 1.324), or reexamination certificate
-(§ 1.570) issued in the patent must be included. (See also
-§
-.178).
-(2)Drawings. Applicant must submit a clean copy of
+(B)Example (2) - Amendment of the claims without
-each drawing sheet of the printed patent at the time the reissue
+argument:
-application is filed. If such copy complies with § 1.84, no further
-drawings will be required. Where a drawing of the reissue application
-is to include any changes relative to the patent being reissued,
-the changes to the drawing must be made in accordance with
-paragraph (b)(3) of this section. The Office will not transfer the
-drawings from the patent file to the reissue application.
+The limitation omitted in the reissue claim(s) was
+added in the original application claims for the purpose
+of making the application claims allowable over
+a rejection or objection made in the application. Even
+though applicant made no argument on the record that
+the limitation was added to obviate the rejection, the
+nature of the addition to the claim can show that the
+limitation was added in direct reply to the rejection.
+This too will establish the omitted limitation as relating
+to subject matter previously surrendered. To illustrate
+this, note the following example:
+The original application claims recite limitations A+B+C,
+and the Office action rejection combines two references to
+show A+B+C. In the amendment replying to the Office
+action, applicant adds limitation D to A+B+C in the
+claims, but makes no argument as to that addition. The
+examiner then allows the claims. Even though there is no
+argument as to the addition of limitation D, it must be presumed
+that the D limitation was added to obviate the
+rejection. The subsequent deletion of (omission of) limitation
+D in the reissue claims would be presumed to be a
+broadening in an aspect of the reissue claims related to
+surrendered subject matter. Accordingly, the reissued
+claims would be barred by the recapture doctrine.
+The above result would be the same whether the
+addition of limitation D in the original application
+was by way of applicant’s amendment or by way of an
+examiner’s amendment with authorization by applicant.
-The file wrappers of all /08 and earlier series reissue
-applications are stamped “REISSUE” above the
-application number on the front of the file. “Reissue”
-also appears below the application number on the
-printed label on the file wrapper of the application
-with 08/ and earlier series.
-Reissue applications filed after July of 1998 (09/
-series and later) are placed in an orange and white
-striped file wrapper and can be easily identified as
-reissue applications. (For IFW Processing, see IFW
-Manual.)
-Reissue applications filed prior to November 7,
+(C)Example (3) - Who can make the surrendering
-should be furnished in the form of cut-up soft
+argument?
-copies of the original patent, with only a single column
-of the printed patent securely mounted on a separate
-sheet of paper.
-For reissue applications filed on or after November
+Assume that the limitation A omitted in the reissue
-, 2000, 37 CFR 1.173(a)(1) requires that the application
+claims was present in the claims of the original application.
-specification, including the claims, must be furnished
+The examiner’s reasons for allowance in the
-in the form of a copy of the printed patent in
+original application stated that it was that limitation A
-double column format (so that the patent can be simply
+which distinguished over a potential combination of
-copied without cutting). Applicants are required to
+references X and Y. Applicant did not present on the
-submit a clean copy of each drawing sheet of the
+record a counter statement or comment as to the
-printed patent at the time the reissue application is
+examiner’s reasons for allowance, and permitted the
-filed (37 CFR 1.173(a)(2)). Any changes to the draw
+claims to issue.
+Ex parte Yamaguchi, supra, held that a surrender of
+claimed subject matter cannot be based solely upon an
+applicant’s failure to respond to, or failure to challenge,
+an examiner’s statement made during the prosecution
+of an application. Applicant is bound only by
+applicant’s revision of the application claims or a positive
+argument/statement by applicant. An applicant’s
+failure to present on the record a counter statement or
@@ Line 1,478: / Line 1,560: @@
-ings must be made in accordance with 37 CFR
+comment as to an examiner’s reasons for allowance
-.173(b)(3). Thus, a full copy of the printed patent
+does not give rise to any implication that applicant
-(including the front page) is used to provide the
+agreed with or acquiesced in the examiner’s reasoning
-abstract, drawings, specification, and claims of the
+for allowance. Thus, the failure to present a counter
-patent for the reissue application. Each page of the
+statement or comment as to the examiner’s statement
-patent must appear on only one side of each individual
+of reasons for allowance does not give rise to any
-page of the specification of the reissue application;
+finding of surrender. The examiner’s statement of
-a two-sided copy of the patent is not proper. It
+reasons for allowance in the original application
-should be noted that a re-typed specification is not
+cannot, by itself, provide the basis for establishing
-acceptable in a reissue application; the full copy of the
+surrender and recapture.
-printed patent must be used. If, however, the changes
-to be made to the patent are so extensive/numerous
-that reading and understanding the specification is
-extremely difficult and error-prone, a clean copy of
-the specification may be submitted if accompanied by
-a grantable petition under 37 CFR 1.183 for waiver of
-CFR 1.125(d) and 37 CFR 1.173(a)(1).
-Pursuant to 37 CFR 1.173(b), amendments may be
+It is only in the situation where applicant does file
-made at the time of filing of a reissue application.
+comments on the statement of reasons for allowance,
-The amendment may be made either by:
+that surrender may have occurred. Note the following
+two scenarios in which an applicant files comments:
-(A)physically incorporating the changes within
+Scenario 1- There is Surrender: The examiner’s statement
-the specification by cutting the column of the printed
+of reasons for allowance in the original application stated
-patent and inserting the added material and rejoining
+that it was limitation C (of the combination of ABC)
-the remainder of the column and then joining the
+which distinguished over a potential combining of references
-resulting modified column to the other column of the
+X and Y, in that limitation C provided increased
-printed patent. Markings pursuant to 37 CFR 1.173(d)
+speed to the process. Applicant filed comments on the
-must be used to show the changes. The columnar
+examiner’s statement of reasons for allowance essentially
-structure of the printed patent must be preserved, and
+supporting the examiner’ s reasons. The limitation C is
-the physically modified page must comply with 37
+thus established as relating to subject matter previously
-CFR 1.52(a)(1). As to compliance with 37 CFR
+surrendered.
-.52(a)(1)(iv), the “written either by a typewriter or
-machine printer in permanent dark ink or its equivalent”
-requirement is deemed to be satisfied where a
-caret and line are drawn from a position within the
-text to a newly added phrase, clause, sentence, etc.
-typed legibly in the margin; or
-(B)providing a preliminary amendment (a separate
+Scenario 2- There is No Surrender: On the other hand, if
-amendment paper) directing that specified
+applicant’s comments on the examiner’s statement of reasons
-changes be made to the copy of the printed patent.
+for allowance contain a counter statement that it is limitation
+B (of the combination of ABC), rather than C, which
+distinguishes the claims over the art, then limitation B
+would constitute surrendered subject matter, and limitation
+C has not been surrendered.
- The presentation of the insertions or deletions as
+C.The Third Step - Were the reissued claims
-part of the original reissue specification is an amendment
+materially narrowed in other respects to
-under 37 CFR 1.173(b). An amendment of the
+compensate for the broadening in the area of
-reissue application made at the time of filing of the
+surrender, and thus avoid the recapture rule?
-reissue application must be made in accordance with
-CFR 1.173(b)-(e) and (g); see MPEP § 1453. Thus,
-as required by 37 CFR 1.173(c), an amendment of the
-claims made at the time of filing of a reissue application
-must include a separate paper setting forth the
-status of all claims (i.e., pending or canceled), and an
-explanation of the support in the disclosure of the
-patent for the changes made to the claims.
- If a chart, table, or chemical formula is amended
+As pointed out above, the third prong of the recapture
-and it spans two columns of the patent, it should not
+determination set forth in Pannu is directed to
-be split. Rather, the chart, table, or chemical formula
+analysis of the broadening and narrowing effected via
-should be provided in its entirety as part of the column
+the reissue claims, and of the significance of the claim
-of the patent to which it pertains, in order to provide
+limitations added and deleted, using the prosecution
-a continuity of the description. When doing so,
+history of the patent (to be reissued), to determine
-the chart, table, or chemical formula may extend
+whether the reissue claims should be barred as recapture.
-beyond the width of the column. Change in only a part
-of a word or chemical formula is not permitted. Entire
-words or chemical formulas must be shown as being
-changed. Deletion of a chemical formula should be
-shown by brackets which are substantially larger and
-darker than any in the formula.
-Where a terminal disclaimer was filed in the application
-for the patent to be reissued, a copy of that terminal
-disclaimer is not needed in the reissue
-application file. For a reissue application that is
-maintained in a paper file, the face of the file wrapper
-should be marked to indicate that a terminal disclaimer
-has been filed for the patent. For a reissue
-application that is maintained in IFW, the “Final
-SPRE Review” form will be filled in.
-Twice reissued patent:
+The following discussion addresses analyzing the
+reissue claims, and which claims are to be compared
+to the reissue claims in determining the issue of surrender
+(for reissue recapture).
-Examples of the form for a twice-reissued patent
+When analyzing a reissue claim for the possibility
-are found in Re. 23,558 and Re. 28,488. Double
+of impermissible recapture, there are two different
-underlining and double bracketing are used in the second
+types of analysis that must be performed. If the reissue
-reissue application, while bold-faced type and
+claim “fails” either analysis, recapture exists.
-double bracketing appear in the printed patent (the
-second reissue patent) to indicate further insertions
-and deletions, respectively, in the second reissue
-patent.
-When a copy of a first reissue patent is used as the
+First, the reissue claim must be compared to any
-specification of a second reissue application (filed as
+claims canceled or amended during prosecution of the
-a reissue of a reissue), additions made by the first reissue
+original application. It is impermissible recapture for
-will already be printed in italics, and should
+a reissue claim to be as broad or broader in scope than
-remain in such format. Thus, applicants need only
+any claim that was canceled or amended in the original
-present additions to the specification/claims in the
+prosecution to define over the art. Claim scope
-second reissue application as double underlined text.
+that was canceled or amended is deemed surrendered
-Subject matter to be deleted from the first reissue
+and therefore barred from reissue. In re Clement,
-patent should be presented in the second reissue application
+supra.
-within sets of double brackets.
+Second, it must be determined whether the reissue
+claim entirely omits any limitation that was added/
+argued during the original prosecution to overcome an
+art rejection. Such an omission in a reissue claim,
+even if it includes other limitations making the reissue
+claim narrower than the patent claim in other aspects,
+is impermissible recapture. Pannu v. Storz Instruments
+Inc., supra. However, if the reissue claim
+recites a broader form of the key limitation added/
+argued during original prosecution to overcome an art
+rejection (and therefore not entirely removing that key
+limitation), then the reissue claim may not be rejected
+under the recapture doctrine. Ex Parte Eggert,
+USPQ2d 1716 (Bd. Pat. App. & Inter. 2003) (precedential).
+For example, if the key limitation added to
+overcome an art rejection was “an orange peel,” and
+the reissue claim instead recites “a citrus fruit peel”,
+the reissue claim may not be rejected on recapture
+grounds.
+The following discussion is provided for analyzing
+the reissue claims.
+.Comparison of Reissue Claims Narrowed/
+Broadened Vis-à-vis the Canceled Claims
+DEFINITION: “Canceled claims,” in the context of
+recapture case law, are claims canceled from the original
+application to obtain the patent for which reissue
+is now being sought. The claims
+(A)can simply be canceled and not replaced by
+others, or
+(B)can be canceled and replaced by other claims
+which are more specific than the canceled claims in at
+least one aspect (to thereby define over the art of
+record). The “replacement claims” can be new claims
+which are narrower than the canceled claims, or can
@@ Line 1,585: / Line 1,675: @@
-.01Certificate of Correction or Disclaimer
+be the same claims amended to be narrower than the
-in Original Patent [R-2]
+canceled version of the claims.
-The applicant should include any changes, additions,
+(a)Reissue Claims are Same or Broader in
-or deletions that were made by a Certificate of
+Scope Than Canceled Claims in All Aspects:
-Correction to the original patent grant in the reissue
-application without underlining or bracketing. The
-examiner should  make certain that all Certificate of
-Correction changes in the patent have been properly
-incorporated into the reissue application.
-Certificate of Correction changes and disclaimer of
+The recapture rule bars the patentee from acquiring,
-claim(s) under 37 CFR 1.321(a) should be made without
+through reissue, claims that are in all aspects (A) of
-using underlining or brackets. Since these are part
+the same scope as, or (B) broader in scope than, those
-of the original patent and were made before the reissue
+claims canceled from the original application to
-was filed, they should show up in the printed reissue
+obtain a patent. In re Ball Corp. v. United States,
-patent document as part of the original patent,
-i.e., not in italics or bracketed. If the changes are
+F.2d at 1436, 221 USPQ at 295.
-extensive and/or applicant has submitted them
-improperly with underlining and brackets, a clean
-copy of the specification with the Certificate of Correction
-changes in it may be requested by the examiner.
-In order for the clean copy to be entered as a
-substitute specification, the reissue applicant must file
-a grantable petition under 37 CFR 1.183 for waiver of
-CFR 1.125(d) and 37 CFR 1.173(a)(1). The examiner’
-s request for the clean copy will generally serve
-as sufficient basis for granting the petition.
-.02New Matter
+(b)Reissue Claims are Narrower in Scope Than
+Canceled Claims in at Least One Aspect:
-New matter, that is, matter not present in the patent
+If the reissue claims are equal in scope to, or narrower
-sought to be reissued, is excluded from a reissue
+than, the claims of the original patent (as
-application in accordance with 35 U.S.C. 251.
+opposed to the claims “canceled from the application”)
+in all aspects, then there can never be recapture.
+The discussion that follows is not directed to that situation.
+It is rather directed to the situation where the
+reissue claims are narrower than the claims 'canceled'
+from the application in some aspect, but are broader
+than the claims of the original patent in some other
+aspect.
-The claims in the reissue application must be for
+If the reissue claims are narrower in scope than the
-subject matter which the applicant had the right to
+claims canceled from the original application by
-claim in the original patent. Any change in the patent
+inclusion of the limitation added to define the original
-made via the reissue application should be checked to
+application claims over the art, there will be no recapture,
-ensure that it does not introduce new matter. Note that
+even if the reissue claims are broader than the
-new matter may exist by virtue of the omission of a
+canceled claims in some other aspect (i.e., an aspect
-feature or of a step in a method. See United States
+not related to the surrender made in the original application).
-Industrial Chemicals, Inc. v. Carbide & Carbon
-Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942).
-Form paragraph 14.22.01 may be used where new
-matter has been added anywhere in “the application
-for reissue” as prohibited by 35 U.S.C. 251.
-¶ 14.22.01 Rejection, 35 U.S.C. 251, New Matter
+Assume combination AB was originally presented
+in the application, and was amended in response to an
-Claim [1] rejected under 35 U.S.C. 251 as being based upon
+art rejection to add element C and thus provide ABC
-new matter added to the patent for which reissue is sought. The
+(after which the patent issued). The reissue claims are
-added material which is not supported by the prior patent is as follows:
+then directed to combination ABbroadenedC. The
-[2]
+ABbroadenedC claims are narrower in scope when
+compared with the canceled claim subject matter AB
+in respect to the addition of C (which was added in the
+application to overcome the art), and there is no
+recapture.
+As another example, assume combination ABZ was
+originally presented in the application, and was
+amended in response to an art rejection to add element
+C and thus provide ABZC (after which the patent
+issued). The reissue claims are then directed to combination
+ABC (i.e., element Z is deleted from the canceled
+claims, while element C remains present). The
+ABC claims of the reissue are narrower in scope as
+compared to the canceled-from-the-original-application
+claim subject matter ABZ in respect to the addition
+of C (which was added in the application to
+overcome the art), and there is thus no recapture.
-Examiner Note:
+.Comparison of Reissue Claims Narrowed/
+Broadened Via-à-vis the Patent Claims
-.In bracket 2, fill in the applicable page and line numbers and
+The “patent claims,” in the context of recapture
-provide an explanation of your position, as appropriate.
+case law, are claims which issued in the original
+patent for which reissue is now being sought. As
+pointed out above, where the reissue claims are narrower
+than the claims of the original patent in all
+aspects, then there can never be recapture. If reissue
+claims are equal in scope to the patent claims, there is
+no recapture as to those reissue claims. Where, however,
+reissue claims are both broadened and narrowedas compared with the original patent claims, the
+nature of the broadening and narrowing must be
+examined to determine whether the reissue claims are
+barred as being recapture of surrendered subject matter.
+If the claims are 'broader than they are narrower in
+a manner directly pertinent to the subject matter... surrendered
+during prosecution' (Clement, 131 F.3d at
+, 45 USPQ2d at 1166), then recapture will bar the
+claims. This narrowing/broadening vis-à-vis the
+patent is broken down into four possibilities that will
+now be addressed.
-.A rejection under 35 U.S.C. 112, first paragraph, should also
+The “limitation” presented, argued, or stated to
-be made if the new matter is added to the claims or is added to the
+make the claims patentable over the art (in the application)
-specification and affects the claims. If new matter is added to the
+“generates” the surrender of claimed subject
-specification and does not affect the claims, an objection should
+matter. For the sake of simplification, this limitation
-be made based upon 35
+will be referred to throughout this section as the surrender-
-U.S.C. 132 using form paragraph 7.28.
+generating limitation. If a claim is presented in
+a reissue application that omits, in its entirety, the surrender-
+generating limitation, that claim impermissibly
+recaptures what was previously surrendered, and that
+claim is barred under 35 U.S.C. 251. This terminology
+will be used in the discussion of the four categories
+of narrowing/broadening vis-à-vis the patent that
+follows.
-Content of Claims
-The content of claims in a reissue application is
-somewhat limited, as is indicated in MPEP § 1412.01through MPEP § 1412.03.
-.01Reissue Claims Must Be for
-Same General Invention [R-2]
-The reissue claims must be for the same invention
-as that disclosed as being the invention in the
-original patent, as required by 35 U.S.C. 251. This
-does not mean that the invention claimed in the reissue
-must have been claimed in the original patent,
-although this is evidence that applicants considered it
-their invention. The entire disclosure, not just the
-claim(s), is considered in determining what the patentee
-objectively intended as his or her invention. The
-proper test as to whether reissue claims are for the
-same invention as that disclosed as being the invention
-in the original patent is “an essentially factual
-inquiry confined to the objective intent manifested by
-the original patent.” In re Amos, 953 F.2d 613, 618,
-USPQ2d 1271, 1274 (Fed. Cir. 1991) (quoting In
-re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489
-(CCPA 1975)) (emphasis added). See also In re Mead,
-F.2d 257, 198 USPQ 412 (CCPA 1978). The
-“original patent” requirement of 35 U.S.C. 251 must
-be understood in light of In re Amos, supra, where the
-Court of Appeals for the Federal Circuit stated:
-We conclude that, under both Mead and Rowand, a claim
+(a)Reissue Claims are Narrower in Scope Than
-submitted in reissue may be rejected under the “original
+Patent Claims, in Area Not Directed to
-patent” clause if the original specification demonstrates,
+Amendment/Argument Made to Overcome
-to one skilled in the art, an absence of disclosure sufficient
+Art Rejection in Original Prosecution; are
-to indicate that a patentee could have claimed the subject
+Broader in Scope by Omitting Limitation(s)
-matter. Merely finding that the subject matter was “not
+Added/Argued To Overcome Art Rejection
-originally claimed, not an object of the original patent,
+in Original Prosecution:
-and not depicted in the drawing,” does not answer the
-essential inquiry under the “original patent” clause of §
-, which is whether one skilled in the art, reading the
+In this case, there is recapture.
+This situation is where the patent claims are
+directed to combination ABC and the reissue claims
+are directed to ABD. Element C was either a limitation
+added to AB to obtain allowance of the original
+patent, or was argued by applicant to define over the
+art (or both). Thus, addition of C (and/or argument as
+to C) has resulted in the surrender of any combination
+of A & B that does not include C; this is the surrendered
+subject matter. Element D, on the other hand, is
+not related to the surrendered subject matter. Thus, the
+reissue claim, which no longer contains C, is broadened
+in an area related to the surrender, and the narrowing
+via the addition of D does not save the claim
+from recapture since D is not related to the surrendered
+subject matter.
+Reissue claims that are broader than the original
+patent claims by not including the surrender-generating
+limitation (element C, in the example given) will
+be barred by the recapture rule even though there is
+narrowing of the claims not related to the surrender-
+generating limitation. As stated in the decision of In re
+Clement, 131 F.3d at 1470, 45 USPQ2d at 1165, if the
+reissue claim is broader in an aspect germane to a
+prior art rejection, but narrower in another aspect
+completely unrelated to the rejection, the recapture
+rule bars the claim. Pannu v. Storz Instruments Inc.,
+supra, then brings home the point by providing an
+actual fact situation in which this scenario was held to
+be recapture.
+(b)Reissue Claims are Narrower or Equal in
+Scope, in Area Directed to Amendment/
-specification, would identify the subject matter of the new
+Argument Made to Overcome Art Rejection
-claims as invented and disclosed by the patentees. In
+in Original Prosecution; are Broader in
-short, the absence of an “intent,” even if objectively evident
+Scope in Area Not Directed to Amendment/
-from the earlier claims, the drawings, or the original
+Argument:
-objects of the invention is simply not enough to establish
-that the new claims are not drawn to the invention disclosed
-in the original patent.
-F.2d at 618-19, 21 USPQ2d at 1275. Claims presented
-in a reissue application are considered to satisfy
-the requirement of 35 U.S.C. 251 that the claims
-be “for the invention disclosed in the original patent”
-where:
-(A)the claims presented in the reissue application
+In this case, there is no recapture.
-are described in the original patent specification and
-enabled by the original patent specification such that
-U.S.C. 112 first paragraph is satisfied; and
-(B)nothing in the original patent specification
+This situation is where the patent claims are
-indicates an intent not to claim the subject matter of
+directed to combination ABCDE and the reissue
-the claims presented in the reissue application.
+claims are directed to ABDE (element C is omitted).
+Assume that the combination of ABCD was present in
+the original application as it was filed, and element E
+was later added to define over that art. No argument
+was ever presented as to elements A-C defining over
+the art.
-The presence of some disclosure (description
+In this situation, the ABCDE combination of the
-and enablement) in the original patent should evidence
+patent can be broadened (in the reissue application) to
-that applicant intended to claim or that applicant
+omit element C, and thereby claim the combination of
-considered the material now claimed to be his or
+ABDE, where element E (the surrender generating
-her invention.
+limitation) is not omitted. There would be no recapture
+in this instance. (If an argument had been presented
+as to element C defining over the art, in
+addition to the addition of element E, then the
+ABCDE combination could not be broadened to omit
+element C and thereby claim combination of ABDE.
+This would be recapture; see the above discussion as
+to surrender and recapture based upon argument.)
+Additionally, the reissue claims are certainly permitted
+to recite combination ABDEspecific (where surrender-
+generating element E is narrowed). The patent
+claims have been broadened in an area not directed to
+the surrender (by omitting element C) and narrowed
+in the area of surrender (by narrowing element E to
+Especific). This is clearly permitted.
+As another example, assume limitation C was
+added to application claims AB to obtain the patent to
+ABC, and now the reissue application presents claims
+to AC or ABbroadC. Such reissue claims avoid the
+effect of the recapture rule because they are broader in
+a way that does not attempt to reclaim what was surrendered
+earlier. Mentor Corp. v. Coloplast, Inc., 998
+F.2d 992, 994, 27 USPQ2d 1521, 1525 (Fed. Cir.
+). Such claims are considered to be broader in an
+aspect not 'germane to a prior art rejection,' and thus
+are not barred by recapture. Note In re Clement,
+F.3d at 1470, 45 USPQ2d at 1165.
+Reissue claims that are broader than the original
+patent claims by deletion of a limitation or claim
+requirement other than the “surrender-generating limitation”
+will avoid the effect of the recapture rule,
+regardless of the nature of the narrowing in the
+claims, and even if the claims are not narrowed at all
+from the scope of the patent claims.
-The original patent specification would indicate an
-intent not to claim the subject matter of the claims
-presented in the reissue application in a situation analogous
-to the following:
-The original patent specification discloses that
-composition X is not suitable (or not satisfactory) for
-molding an item because composition X fails to provide
-quick drying. After the patent issues, it is found
-that composition X would be desirable for the molding
-in spite of the failure to provide quick drying,
-because of some other newly recognized benefit from
-composition X. A claim to composition X or a method
-of use thereof would not be permitted in a reissue
-application, because the original patent specification
-contained an explicit statement of intent not to claim
-composition X or a method of use thereof.
-In most instances, however, the mere failure to
-claim a disclosed embodiment in the original patent
-(absent an explicit statement in the original patent
-specification of unsuitability of the embodiment)
-would not be grounds for prohibiting a claim to that
-embodiment in the reissue.
-FAILURE TO TIMELY FILE A DIVISIONAL
-APPLICATION PRIOR TO ISSUANCE OF
-ORIGINAL PATENT
-Where a restriction requirement was made in an
+(c)Reissue Claims are Narrower in Scope in
-application and applicant permitted the elected invention
+Area Not Directed to Amendment/Argument
-to issue as a patent without the filing of a divisional
+Made to Overcome Art Rejection in Original
-application on the non-elected invention(s), the
+Prosecution; are Broader in Scope in Area
-non-elected invention(s) cannot be recovered by filing
+Not Directed to the Amendment/Argument:
-a reissue application. A reissue applicant’ s failure to
-timely file a divisional application covering the non-
-elected invention(s) in response to a restriction
-requirement is not considered to be error causing a
-patent granted on the elected claims to be partially
-inoperative by reason of claiming less than the applicant
-had a right to claim. Accordingly, such error is
-not correctable by reissue of the original patent under
-U.S.C. 251. In re Watkinson, 900 F.2d 230, 14
-USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 550 F.2d
-, 1280, 193 USPQ 145, 148 (CCPA 1977). See
-also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA
-). In this situation, the reissue claims should be
-rejected under 35 U.S.C. 251 for lack of defect in the
-original patent and lack of error in obtaining the original
-patent. Compare with In re Doyle, 293 F.3d 1355,
-USPQ2d 1161 (Fed. Cir. 2002) where the court
-permitted the patentee to file a reissue application to
-present a so-called linking claim, a claim broad
-enough to read on or link the invention elected (and
-patented) together with the invention not elected. The
-non-elected invention(s) were inadvertently not filed
-as a divisional application.
-.02Recapture of Canceled SubjectMatter [R-5]
+In this instance, there is clearly no recapture. In the
+reissue application, there has been no change in the
+claims related to the matter surrendered in the original
+application for the patent.
-A reissue will not be granted to “recapture” claimed
+In this instance, element C was added to the AB
-subject matter which was surrendered in an application
+combination to provide ABC and define over the art,
-to obtain the original patent. North American
+and the patent was issued. The reissue omits element
-Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d
+B and adds element Z, to thus claim ACZ. There is no
-, 75 USPQ2d 1545 (Fed. Cir. 2005, Pannu v.
+recapture since the surrender generating element C
-Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d
+has not been modified in any way. (Note, however,
-(Fed. Cir. 2001); Hester Industries, Inc. v. Stein,
+that if, when element C was added to AB, applicant
-Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir.
+argued that the association of newly added C with B
-); In re Clement, 131 F.3d 1464, 45 USPQ2d
+provides a synergistic (unexpected) result to thus
-(Fed. Cir. 1997); Ball Corp. v. United States, 729
+define over the art, then neither B nor C could be
-F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir.
+omitted in the reissue application.)
-); In re Wadlinger, 496 F.2d 1200, 181 USPQ
-(CCPA 1974); In re Richman, 409 F.2d 269, 276,
+(d)Reissue Claims Broader in Scope in Area
+Directed to Amendment/Argument Made to
+Overcome Art Rejection in Original
+Prosecution; but Reissue Claims Retain, in
+Broadened Form, the Limitation(s) Argued/
+Added to Overcome Art Rejection in
+Original Prosecution:
+Assume the combination AB was originally
+claimed in the application, and was amended in reply
+to an art rejection to add element C and thus provide
+the combination ABC (after which the patent issued).
+A reissue application is then filed, and the reissue
+application claims are directed to the combination
+ABCbroadened. The ABCbroadened claims are narrowed
+in scope when compared with the canceled claim subject
+matter AB, because of the addition of Cbroadened.
+Thus, the claims retain, in broadened form, the limitation
+argued/added to overcome art rejection in original
+prosecution. There is no recapture, since
+ABCbroadened is narrower than canceled claim subject
+matter AB in an area related to the surrender. This is
+so, because it was element C that was added in the
+application to overcome the art. See Ex Parte Eggert,
+supra.
+II.REISSUE TO TAKE ADVANTAGE OF
+U.S.C. 103(b):
+A patentee may file a reissue application to permit
+consideration of process claims which qualify for
+U.S.C. 103(b) treatment if a patent is granted on an
+application entitled to the benefit of 35 U.S.C. 103(b),
+without an election having been made as a result of..
+error without deceptive intent. See MPEP
+§
+.02(n). This is not to be considered a recapture.
+The addition of process claims, however, will
+generally be considered to be a broadening of the
+invention (Ex parte Wikdahl, 10 USPQ2d 1546 (Bd.
+Pat. App. & Inter. 1989)), and such addition must be
+applied for within two years of the grant of the original
+patent. See also MPEP § 1412.03 as to broadened
+claims.
+III.REISSUE FOR ARTICLE CLAIMS
+WHICH ARE FUNCTIONAL DESCRIPTIVE
+MATERIAL STORED ON A COMPUTER-
+READABLE MEDIUM:
-USPQ 359, 363-364 (CCPA 1969); In re Willingham,
+A patentee may file a reissue application to permit
+consideration of article of manufacture claims which
-F.2d 353, 127 USPQ 211 (CCPA 1960).
+are functional descriptive material stored on a computer-
+readable medium, where these article claims
+correspond to the process or machine claims which
+have been patented. The error in not presenting claims
+to this statutory category of invention (the “article”
+claims) must have been made as a result of error without
+deceptive intent. The addition of these “article”
+claims will generally be considered to be a broadening
+of the invention (Ex parte Wikdahl, 10 USPQ2d
+(Bd. Pat. App. & Inter. 1989)), and such addition
+must be applied for within two years of the grant of
+the original patent. See also MPEP § 1412.03 as to
+broadened claims.
-I.THREE STEP TEST FOR RECAPTURE:
+IV.REJECTION BASED UPON RECAPTURE:
-In Clement, 131 F.3d at 1468-70, 45 USPQ2d at
--65, the Court of Appeals for the Federal Circuit
-set forth a three step test for recapture analysis. In
-Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600, the
-court restated this test as follows:
-Application of the recapture rule is a three-step process.
+Reissue claims which recapture surrendered subject
+matter should be rejected using form paragraph 14.17.
+¶ 14.17 Rejection, 35 U.S.C. 251, Recapture
-The first step is to ‘determine whether and in what aspect
+Claim[1] rejected under 35 U.S.C. 251 as being an improper
-the reissue claims are broader than the patent claims.’....
+recapture of broadened claimed subject matter surrendered in the
+application for the patent upon which the present reissue is based.
+See Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d
+(Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142
+F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131
-‘The second step is to determine whether the broader
-aspects of the reissued claim related to surrendered subject
-matter’ ....
-Finally, the court must determine whether the reissued
-claims were materially narrowed in other respects to avoid
-the recapture rule. [Emphasis added]
-A.The First Step - Was There Broadening?
-In every reissue application, the examiner must first
-review each claim for the presence of broadening, as
-compared with the scope of the claims of the patent to
-be reissued. A reissue claim is broadened where some
-limitation of the patent claims is no longer required in
-the reissue claim; see MPEP § 1412.03 for guidance
-as to the nature of a “broadening claim.” If the reissue
-claim is not broadened in any respect as compared to
-the patent claims, the analysis ends; there is no recapture.
+F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v.
+United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir.
+). A broadening aspect is present in the reissue which was not
+present in the application for patent. The record of the application
+for the patent shows that the broadening aspect (in the reissue)
+relates to claim subject matter that applicant previously surrendered
+during the prosecution of the application. Accordingly, the
+narrow scope of the claims in the patent was not an error within
+the meaning of 35 U.S.C. 251, and the broader scope of claim subject
+matter surrendered in the application for the patent cannot be
+recaptured by the filing of the present reissue application.
-B.The Second Step - Does Any Broadening
+[2]
-Aspect of the Reissued Claim Relate to
-Surrendered Subject Matter?
-Where a claim in a reissue application is broadened
+Examiner Note:
-in some respect as compared to the patent claims, the
-examiner must next determine whether the broadening
-aspect(s) of that reissue claim relate(s) to subject
-matter that applicant previously surrendered during
-the prosecution of the original application (which
-became the patent to be reissued). Each limitation of
-the patent claims, which is omitted or broadened in
-the reissue claim, must be reviewed for this determination.
-This involves two sub-steps:
-.The Two Sub-Steps:
+In bracket 2, the examiner should explain the specifics of why
+recapture exists, including an identification of the omitted/broadened
-(A)It must first be determined whether there was
+claim limitations in the reissue which provide the “broadening
-any surrender of subject matter made in the prosecution
+aspect” to the claim(s), and where in the original application
-of the original application which became the
+the narrowed claim scope was presented/argued to obviate a rejection/
-patent to be reissued.
+objection. See MPEP §
+.02.
-If an original patent claim limitation now being
+See the recapture-analysis flow chart which follows
-omitted or broadened in the present reissue application
+for assistance in determining whether recapture is
-was originally relied upon by applicant in the
+present, consistent with the case law discussed above.
-original application to make the claims allowable over
-the art, the omitted limitation relates to subject matter
-previously surrendered by applicant. The reliance by
-applicant to define the original patent claims over the
-art can be by way of presentation of new/amended
-claims to define over the art, or an argument/statement
-by applicant that a limitation of the claim(s)
-defines over the art. To determine whether such reliance
-occurred, the examiner must review the prosecution
-history of the original application file (of the
-patent to be reissued) for recapture. The prosecution
-history includes the rejections and applicant’s arguments
-made therein.
-If there was no surrender of subject matter made
-in the prosecution of the original application, again
-the analysis ends and there is no recapture.
-(B)If there was a surrender of subject matter in
-the original application prosecution, it must then be
-determined whether any of the broadening of the reissue
-claims is in the area of the surrendered subject
-matter. All of the broadening aspects of reissue claims
-must be analyzed to determine if any of the omitted/
-broadened limitation(s) are directed to limitations
-relied upon by applicant in the original application to
-make the claims allowable over the art.
-.Examples of the Pannu Second Step Analysis:
-(A)Example (1) - Argument without amendment:
-In Hester, supra, the Federal Circuit held that the
+Flowchart - Reissue Recapture - Determining its presence or absence
-surrender which forms the basis for impermissible
-recapture “can occur through arguments alone”.
-F.3d at 1482, 46 USPQ2d at 1649. For example,
-assume that limitation A of the patent claims is omitted
-in the reissue claims. This omission provides a
-broadening aspect in the reissue claims, as compared
-to the claims of the patent. If the omitted limitation A
-was argued in the original application to make the
-application claims allowable over the art in the appli
@@ Line 1,922: / Line 2,039: @@
-cation, then the omitted limitation relates to subject
+.03Broadening Reissue Claims
-matter previously surrendered in the original application,
+[R-3]
-and recapture will exist. Accordingly, where
-claims are broadened in a reissue application, the
+U.S.C. 251 prescribes a 2-year limit for filing
-examiner should review the prosecution history of the
+applications for broadening reissues:
-original patent file for recapture, even where the
-claims were never amended during the prosecution of
-the application which resulted in the patent.
-Note: The argument that the claim limitation
+No reissue patent shall be granted enlarging the scope of
-defined over the rejection must have been specific as
+the original patent unless applied for within two years
-to the limitation relied upon, rather than a general
+from the grant of the original patent.
-statement regarding the claims as a whole. A general
-'boiler plate' sentence in the original application will
-not, by itself, be sufficient to establish surrender and
-recapture.
-An example of a general “boiler plate” sentence of
-argument is:
-“In closing, it is argued that the limitations of claims 1-7
-distinguish the claims from the teachings of the prior art,
-and claims 1-7 are thus patentable.”
-An argument that merely states that all the limitations
+I. MEANING OF “BROADENED REISSUE
-of the claims define over the prior art will also
+CLAIM”
-not, by itself, be sufficient to establish surrender and
-recapture. An example is:
-“Claims 1-5 set forth a power-train apparatus which comprises
+A broadened reissue claim is a claim which
-the combination of A+B+C+D+E. The prior art of
+enlarges the scope of the claims of the patent, i.e., a
-record does not disclose or render obvious a motivation to
+claim which is greater in scope than each and every
-provide for a material-transfer apparatus as defined by the
+claim of the original patent. If a disclaimer is filed in
-limitations of claim 1, including an A member and a B
+the patent prior to the filing of a reissue application,
-member, both connected to a C member, with all three
+the disclaimed claims are not part of the “original
-being aligned with the D and E members.”
+patent” under 35 U.S.C. 251. The Court in Vectra Fitness
+Inc. v. TNWK Corp., 49 USPQ2d 1144, 1147,
+F.3d 1379, 1383 (Fed. Cir. 1998) held that a reissue
+application violated the statutory prohibition
+under 35 U.S.C. 251 against broadening the scope of
+the patent more than 2 years after its grant because the
+reissue claims are broader than the claims that remain
+after the disclaimer, even though the reissue claims
+are narrower than the claims that were disclaimed by
+the patentee before reissue. The reissue application
+was bounded by the claims remaining in the patent
+after a disclaimer is filed.A claim of a reissue application
+enlarges the scope of the claims of the patent if it
+is broader in at least one respect, even though it may
+be narrower in other respects.
+A claim in the reissue which includes subject matter
+not covered by the patent claims enlarges the scope
+of the patent claims. For example, if any amended or
+newly added claim in the reissue contains within its
+scope any conceivable product or process which
+would not have infringed the patent, then that reissue
+claim would be broader than the patent claims. Tillotson,
+Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2,
+USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re
+Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA
+); In re Rogoff, 261 F.2d 601, 603, 120 USPQ
+, 186 (CCPA 1958). A claim which reads on
+something which the original claims do not is a broadened
+claim. A claim would be considered a broadening
+claim if the patent owner would be able to sue any
+party for infringement who previously could not have
+been sued for infringement. Thus, where the original
+patent claims only the process, and the reissue application
+adds (for the first time) product claims, the
+scope of the claims has been broadened since a party
+could not be sued for infringement of the product
+based on the claims of the original patent.
+The addition of combination claims in a reissue
+application where only subcombination claims were
+present in the original patent could be a broadening of
+the invention. The question which must be resolved in
+this case is whether the combination claims added in
+the reissue would be for “the invention as claimed” in
+the original patent. See Ex parte Wikdahl, 10 USPQ2d
+at 1549. The newly added combination claims should
+be analyzed to determine whether they contain every
+limitation of the subcombination of any claim of the
+original patent. If the combination claims (added in
+the reissue) contain every limitation of the subcombination
+(which was claimed in the original application),
+then infringement of the combination must also
+result in infringement of the subcombination. Accordingly,
+the patent owner could not, if a reissue patent
+issues with the combination claims, sue any new
+party for infringement who could not have been sued
+for infringement of the original patent. Therefore,
+broadening does not exist, in spite of the addition of
+the combination.
-This statement is simply a restatement of the
-entirety of claim 1 as allowed. No measure of surrender
-could be gleaned from such a statement of reasons
-for allowance. See Ex parte Yamaguchi, 61 USPQ2d
-(Bd. Pat. App. & Inter. 2001)(reported but
-unpublished, precedential).
-In both of the above examples, the argument does
-not provide an indication of what specific limitations,
-e.g., specific element or step of the claims, cooperative
-effect, or other aspect of the claims, are being
-relied upon for patentability. Thus, applicant has not
-surrendered anything.
-(B)Example (2) - Amendment of the claims without
+II. SCOPE OF DEPENDENT CLAIM
-argument:
+ENLARGED-NOT BROADENING
-The limitation omitted in the reissue claim(s) was
+As pointed out above, a claim will be considered a
-added in the original application claims for the purpose
+broadened reissue claim when it is greater in scope
-of making the application claims allowable over
+than each and every claim of the patent to be reissued.
-a rejection or objection made in the application. Even
+A corollary of this is that a claim which has
-though applicant made no argument on the record that
+been broadened in a reissue as compared to its scope
-the limitation was added to obviate the rejection, the
+in the patent is not a broadened reissue claim if it is
-nature of the addition to the claim can show that the
+narrower than, or equal in scope to, any other claim
-limitation was added in direct reply to the rejection.
+which appears in the patent. A common example of
-This too will establish the omitted limitation as relating
+this is where dependent claim 2 is broadened via the
-to subject matter previously surrendered. To illustrate
+reissue (other than the addition of a process step to
-this, note the following example:
+convert an intermediate to a final product as discussed
+in the preceding subsection), but independent claim 1
-The original application claims recite limitations A+B+C,
+on which it is based is not broadened. Since a dependent
-and the Office action rejection combines two references to
+claim is construed to contain all the limitations of
-show A+B+C. In the amendment replying to the Office
+the claim upon which it depends, claim 2 must be at
-action, applicant adds limitation D to A+B+C in the
-claims, but makes no argument as to that addition. The
-examiner then allows the claims. Even though there is no
-argument as to the addition of limitation D, it must be presumed
-that the D limitation was added to obviate the
-rejection. The subsequent deletion of (omission of) limitation
-D in the reissue claims would be presumed to be a
-broadening in an aspect of the reissue claims related to
-surrendered subject matter. Accordingly, the reissued
-claims would be barred by the recapture doctrine.
-The above result would be the same whether the
-addition of limitation D in the original application
-was by way of applicant’s amendment or by way of an
-examiner’s amendment with authorization by applicant.
-(C)Example (3) - Who can make the surrendering
-argument?
-Assume that the limitation A omitted in the reissue
-claims was present in the claims of the original application.
-The examiner’s reasons for allowance in the
-original application stated that it was that limitation A
-which distinguished over a potential combination of
-references X and Y. Applicant did not present on the
-record a counter statement or comment as to the
-examiner’s reasons for allowance, and permitted the
-claims to issue.
-Ex parte Yamaguchi, supra, held that a surrender of
+least as narrow as claim 1 and is thus not a broadened
-claimed subject matter cannot be based solely upon an
+reissue claim.
-applicant’s failure to respond to, or failure to challenge,
-an examiner’s statement made during the prosecution
-of an application. Applicant is bound only by
-applicant’s revision of the application claims or a positive
-argument/statement by applicant. An applicant’s
-failure to present on the record a counter statement or
+III. NEW CATEGORY OF INVENTION
+ADDED IN REISSUE - GENERALLY
+IS BROADENING
+The addition of process claims as a new category of
+invention to be claimed in the patent (i.e., where there
+were no method claims present in the original patent)
+is generally considered as being a broadening of the
+invention. See Ex parte Wikdahl, 10 USPQ2d 1546
+(Bd. Pat. App. & Inter. 1989). A situation may arise,
+however, where the reissue application adds a limitation
+(or limitations) to process A of making the product
+A claimed in the original patent claims. For
+example:
-comment as to an examiner’s reasons for allowance
+(1)a process of using the product A (made by the
-does not give rise to any implication that applicant
+process of the original patent) to make a product B,
-agreed with or acquiesced in the examiner’s reasoning
+disclosed but not claimed in the original patent; or
-for allowance. Thus, the failure to present a counter
-statement or comment as to the examiner’s statement
-of reasons for allowance does not give rise to any
-finding of surrender. The examiner’s statement of
-reasons for allowance in the original application
-cannot, by itself, provide the basis for establishing
-surrender and recapture.
-It is only in the situation where applicant does file
+(2)a process of using the product A to carry out a
-comments on the statement of reasons for allowance,
+process B disclosed but not claimed in the original
-that surrender may have occurred. Note the following
+patent.
-two scenarios in which an applicant files comments:
-Scenario 1- There is Surrender: The examiner’s statement
+Although this amendment of the claims adds a
-of reasons for allowance in the original application stated
+method of making product B or adds a method of
-that it was limitation C (of the combination of ABC)
+using product A, this is not broadening (i.e., this is not
-which distinguished over a potential combining of references
+an enlargement of the scope of the original patent)
-X and Y, in that limitation C provided increased
+because the “newly claimed invention” contains all
-speed to the process. Applicant filed comments on the
+the limitations of the original patent claim(s).
-examiner’s statement of reasons for allowance essentially
-supporting the examiner’ s reasons. The limitation C is
-thus established as relating to subject matter previously
-surrendered.
-Scenario 2- There is No Surrender: On the other hand, if
-applicant’s comments on the examiner’s statement of reasons
-for allowance contain a counter statement that it is limitation
-B (of the combination of ABC), rather than C, which
-distinguishes the claims over the art, then limitation B
-would constitute surrendered subject matter, and limitation
-C has not been surrendered.
-C.The Third Step - Were the reissued claims
-materially narrowed in other respects to
-compensate for the broadening in the area of
-surrender, and thus avoid the recapture rule?
-As pointed out above, the third prong of the recapture
+IV. WHEN A BROADENED CLAIM CAN BE
-determination set forth in Pannu is directed to
+PRESENTED
-analysis of the broadening and narrowing effected via
-the reissue claims, and of the significance of the claim
-limitations added and deleted, using the prosecution
-history of the patent (to be reissued), to determine
-whether the reissue claims should be barred as recapture.
+A broadened claim can be presented within two
+years from the grant of the original patent in a reissue
+application. In addition, a broadened claim can be
+presented after two years from the grant of the original
+patent in a broadening reissue application
+which was filed within two years from the grant.
+Where any intent to broaden is indicated in the reissue
+application within the two years from the patent grant,
+a broadened claim can subsequently be presented in
+the reissue after the two year period. Thus, a broadened
+claim may be presented in a reissue application
+after the two years, even though the broadened claim
+presented after the two years is different than the
+broadened claim presented within the two years.
+Finally, if intent to broaden is indicated in a parent
+reissue application within the two years, a broadened
+claim can be presented in a continuing (continuation
+or divisional) reissue application after the two year
+period. In any other situation, a broadened claim cannot
+be presented, and the examiner should check carefully
+for the improper presentation of broadened
+claims.
-The following discussion addresses analyzing the
+A reissue application filed on the 2-year anniversary
-reissue claims, and which claims are to be compared
+date from the patent grant is considered to be
-to the reissue claims in determining the issue of surrender
+filed within 2 years of the patent grant. See Switzer v.
-(for reissue recapture).
+Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964)
+for a similar rule in interferences.
-When analyzing a reissue claim for the possibility
+See also the following cases which pertain to
-of impermissible recapture, there are two different
+broadened reissues:
-types of analysis that must be performed. If the reissue
-claim “fails” either analysis, recapture exists.
-First, the reissue claim must be compared to any
+In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471,
-claims canceled or amended during prosecution of the
+-74 (Fed. Cir. 1997) (Broadened claims in a continuing
-original application. It is impermissible recapture for
+reissue application were properly rejected
-a reissue claim to be as broad or broader in scope than
+under 35 U.S.C. 251 because the proposal for broadened
-any claim that was canceled or amended in the original
+claims was not made (in the parent reissue application)
-prosecution to define over the art. Claim scope
+within two years from the grant of the original
-that was canceled or amended is deemed surrendered
+patent and the public was not notified that broadened
-and therefore barred from reissue. In re Clement,
+claims were being sought until after the two-year
-supra.
+period elapsed.);
-Second, it must be determined whether the reissue
+In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed.
-claim entirely omits any limitation that was added/
+Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The
-argued during the original prosecution to overcome an
+failure by an applicant to include an oath or declaration
-art rejection. Such an omission in a reissue claim,
+indicating a desire to seek broadened claimswithin two years of the patent grant will bar a subsequent
-even if it includes other limitations making the reissue
+attempt to broaden the claims after the two year
-claim narrower than the patent claim in other aspects,
+limit. Under the former version of 37 CFR 1.175 (the
-is impermissible recapture. Pannu v. Storz Instruments
+former 37 CFR 1.175(a)(4)), applicant timely sought
-Inc., supra. However, if the reissue claim
+a “no-defect” reissue, but the Court did not permit an
-recites a broader form of the key limitation added/
+attempt made beyond the two year limit to convert the
-argued during original prosecution to overcome an art
+reissue into a broadening reissue. In this case, applicant
-rejection (and therefore not entirely removing that key
+did not indicate any intent to broaden within the
-limitation), then the reissue claim may not be rejected
+two years.);
-under the recapture doctrine. Ex Parte Eggert,
-USPQ2d 1716 (Bd. Pat. App. & Inter. 2003) (precedential).
-For example, if the key limitation added to
-overcome an art rejection was “an orange peel,” and
-the reissue claim instead recites “a citrus fruit peel”,
-the reissue claim may not be rejected on recapture
-grounds.
-The following discussion is provided for analyzing
+In re Bennett, 766 F.2d 524, 528, 226 USPQ 413,
-the reissue claims.
+(Fed. Cir. 1985) (en banc) (A reissue application
+with broadened claims was filed within two years of
+the patent grant; however, the declaration was executed
+by the assignee rather than the inventor. The
+Federal Circuit permitted correction of the improperly
+executed declaration to be made more than two years
+after the patent grant.);
-.Comparison of Reissue Claims Narrowed/
+In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220
-Broadened Vis-à-vis the Canceled Claims
+(CCPA 1970) (If the reissue application is timely filed
+within two years of the original patent grant and the
-DEFINITION: “Canceled claims,” in the context of
-recapture case law, are claims canceled from the original
-application to obtain the patent for which reissue
-is now being sought. The claims
-(A)can simply be canceled and not replaced by
-others, or
-(B)can be canceled and replaced by other claims
-which are more specific than the canceled claims in at
-least one aspect (to thereby define over the art of
-record). The “replacement claims” can be new claims
-which are narrower than the canceled claims, or can
@@ Line 2,150: / Line 2,261: @@
-be the same claims amended to be narrower than the
+applicant indicates in the oath or declaration that the
-canceled version of the claims.
+claims will be broadened, then applicant may subsequently
+broaden the claims in the pending reissue
+prosecution even if the additional broadening occurs
+beyond the two year limit.).
-(a)Reissue Claims are Same or Broader in
+Form paragraphs 14.12 and 14.13 may be used in
-Scope Than Canceled Claims in All Aspects:
+rejections based on improper broadened reissue
+claims.
-The recapture rule bars the patentee from acquiring,
+¶ 14.12 Rejection, 35 U.S.C. 251, Broadened Claims After
-through reissue, claims that are in all aspects (A) of
+Two Years
-the same scope as, or (B) broader in scope than, those
-claims canceled from the original application to
-obtain a patent. In re Ball Corp. v. United States,
-F.2d at 1436, 221 USPQ at 295.
-(b)Reissue Claims are Narrower in Scope Than
+Claim [1] rejected under 35 U.S.C. 251 as being broadened in
-Canceled Claims in at Least One Aspect:
+a reissue application filed outside the two year statutory period.
+[2] A claim is broader in scope than the original claims if it contains
+within its scope any conceivable product or process which
+would not have infringed the original patent. A claim is broadened
+if it is broader in any one respect even though it may be narrower
+in other respects.
-If the reissue claims are equal in scope to, or narrower
+Examiner Note:
-than, the claims of the original patent (as
-opposed to the claims “canceled from the application”)
-in all aspects, then there can never be recapture.
-The discussion that follows is not directed to that situation.
-It is rather directed to the situation where the
-reissue claims are narrower than the claims 'canceled'
-from the application in some aspect, but are broader
-than the claims of the original patent in some other
-aspect.
-If the reissue claims are narrower in scope than the
+The claim limitations that broaden the scope should be identified
-claims canceled from the original application by
+and explained in bracket 2. See MPEP §§ 706.03(x) and
-inclusion of the limitation added to define the original
+.03.
-application claims over the art, there will be no recapture,
-even if the reissue claims are broader than the
-canceled claims in some other aspect (i.e., an aspect
-not related to the surrender made in the original application).
+¶ 14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed
+by Assignee
-Assume combination AB was originally presented
+Claim [1] rejected under 35 U.S.C. 251 as being improperly
-in the application, and was amended in response to an
+broadened in a reissue application made and sworn to by the
-art rejection to add element C and thus provide ABC
+assignee and not the patentee. [2]A claim is broader in scope than
-(after which the patent issued). The reissue claims are
+the original claims if it contains within its scope any conceivable
-then directed to combination ABbroadenedC. The
+product or process which would not have infringed the original
-ABbroadenedC claims are narrower in scope when
+patent. A claim is broadened if it is broader in any one respecteven though it may be narrower in other respects.
-compared with the canceled claim subject matter AB
-in respect to the addition of C (which was added in the
-application to overcome the art), and there is no
-recapture.
-As another example, assume combination ABZ was
+Examiner Note:
-originally presented in the application, and was
-amended in response to an art rejection to add element
-C and thus provide ABZC (after which the patent
-issued). The reissue claims are then directed to combination
-ABC (i.e., element Z is deleted from the canceled
-claims, while element C remains present). The
-ABC claims of the reissue are narrower in scope as
-compared to the canceled-from-the-original-application
-claim subject matter ABZ in respect to the addition
-of C (which was added in the application to
-overcome the art), and there is thus no recapture.
-.Comparison of Reissue Claims Narrowed/
+The claim limitations that broaden the scope should be identified
-Broadened Via-à-vis the Patent Claims
+and explained in bracket 2. See MPEP §§ 706.03(x) and
+.03.
-The “patent claims,” in the context of recapture
-case law, are claims which issued in the original
-patent for which reissue is now being sought. As
-pointed out above, where the reissue claims are narrower
-than the claims of the original patent in all
-aspects, then there can never be recapture. If reissue
-claims are equal in scope to the patent claims, there is
-no recapture as to those reissue claims. Where, however,
-reissue claims are both broadened and narrowedas compared with the original patent claims, the
-nature of the broadening and narrowing must be
-examined to determine whether the reissue claims are
-barred as being recapture of surrendered subject matter.
-If the claims are 'broader than they are narrower in
-a manner directly pertinent to the subject matter... surrendered
-during prosecution' (Clement, 131 F.3d at
-, 45 USPQ2d at 1166), then recapture will bar the
-claims. This narrowing/broadening vis-à-vis the
-patent is broken down into four possibilities that will
-now be addressed.
-The “limitation” presented, argued, or stated to
-make the claims patentable over the art (in the application)
-“generates” the surrender of claimed subject
-matter. For the sake of simplification, this limitation
-will be referred to throughout this section as the surrender-
-generating limitation. If a claim is presented in
-a reissue application that omits, in its entirety, the surrender-
-generating limitation, that claim impermissibly
-recaptures what was previously surrendered, and that
-claim is barred under 35 U.S.C. 251. This terminology
-will be used in the discussion of the four categories
-of narrowing/broadening vis-à-vis the patent that
-follows.
+V. BROADENING REISSUE - OATH/
+DECLARATION REQUIREMENTS
+A broadening reissue application must be applied
+for by all of the inventors (patentees), that is, the original
+reissue oath or declaration must be signed by all
+of the inventors. See also MPEP § 1414. If a supplemental
+oath or declaration in a broadening reissue
+application is needed in the application in order to fulfill
+the requirements of 37 CFR 1.175, the supplemental
+reissue oath or declaration must be signed by all of
+the inventors. See In re Hayes, 53 USPQ2d 1222
+(Comm’r Pat. 1999) and MPEP § 1414.01.
+.04Correction of Inventorship [R-5]
+The correction of misjoinder of inventors has been
+held to be a ground for reissue. See Ex parte Scudder,
-(a)Reissue Claims are Narrower in Scope Than
+USPQ 814, 815 (Bd. App. 1971) wherein the
-Patent Claims, in Area Not Directed to
+Board held that 35 U.S.C. 251 authorizes reissue
-Amendment/Argument Made to Overcome
+applications to correct misjoinder of inventors where35 U.S.C. 256 is inadequate. See also A.F. Stoddard &
-Art Rejection in Original Prosecution; are
+Co. v. Dann, 564 F.2d 556, 567 n.16, 195 USPQ 97,
-Broader in Scope by Omitting Limitation(s)
+n.16 (D.C. Cir. 1977) wherein correction of
-Added/Argued To Overcome Art Rejection
+inventorship from sole inventor A to sole inventor B
-in Original Prosecution:
+was permitted in a reissue application. The court
+noted that reissue by itself is a vehicle for correcting
+inventorship in a patent.
-In this case, there is recapture.
+I.CERTIFICATE OF CORRECTION AS A
+VEHICLE FOR CORRECTING INVEN-
+TORSHIP
-This situation is where the patent claims are
+While reissue is a vehicle for correcting inventorship
-directed to combination ABC and the reissue claims
+in a patent, correction of inventorship should be
-are directed to ABD. Element C was either a limitation
+effected under the provisions of 35 U.S.C. 256 and
-added to AB to obtain allowance of the original
-patent, or was argued by applicant to define over the
+CFR 1.324 by filing a request for a Certificate of
-art (or both). Thus, addition of C (and/or argument as
+Correction if:
-to C) has resulted in the surrender of any combination
-of A & B that does not include C; this is the surrendered
-subject matter. Element D, on the other hand, is
-not related to the surrendered subject matter. Thus, the
-reissue claim, which no longer contains C, is broadened
-in an area related to the surrender, and the narrowing
-via the addition of D does not save the claim
-from recapture since D is not related to the surrendered
-subject matter.
-Reissue claims that are broader than the original
+(A)the only change being made in the patent is to
-patent claims by not including the surrender-generating
+correct the inventorship; and
-limitation (element C, in the example given) will
-be barred by the recapture rule even though there is
+(B)all parties are in agreement and the inventorship
-narrowing of the claims not related to the surrender-
+issue is not contested.
-generating limitation. As stated in the decision of In re
-Clement, 131 F.3d at 1470, 45 USPQ2d at 1165, if the
+ See MPEP § 1481 for the procedure to be followed
-reissue claim is broader in an aspect germane to a
+to obtain a Certificate of Correction for correction of
-prior art rejection, but narrower in another aspect
+inventorship.
-completely unrelated to the rejection, the recapture
-rule bars the claim. Pannu v. Storz Instruments Inc.,
-supra, then brings home the point by providing an
-actual fact situation in which this scenario was held to
-be recapture.
-(b)Reissue Claims are Narrower or Equal in
+II.REISSUE AS A VEHICLE FOR CORRECTING
-Scope, in Area Directed to Amendment/
+INVENTORSHIP
-Argument Made to Overcome Art Rejection
-in Original Prosecution; are Broader in
-Scope in Area Not Directed to Amendment/
-Argument:
-In this case, there is no recapture.
+ Where the provisions of 35 U.S.C. 256 and
-This situation is where the patent claims are
+CFR 1.324 do not apply, a reissue application is
-directed to combination ABCDE and the reissue
+the appropriate vehicle to correct inventorship. The
-claims are directed to ABDE (element C is omitted).
+failure to name the correct inventive entity is an error
-Assume that the combination of ABCD was present in
+in the patent which is correctable under 35 U.S.C.
-the original application as it was filed, and element E
+. The reissue oath or declaration pursuant to
-was later added to define over that art. No argument
-was ever presented as to elements A-C defining over
+CFR 1.175 must state that the applicant believes
-the art.
+the original patent to be wholly or partly inoperative
+or invalid through error of a person being incorrectly
-In this situation, the ABCDE combination of the
+named in an issued patent as the inventor, or through
-patent can be broadened (in the reissue application) to
+error of an inventor incorrectly not named in an
-omit element C, and thereby claim the combination of
+issued
-ABDE, where element E (the surrender generating
+patent, and that such error arose without any
-limitation) is not omitted. There would be no recapture
+deceptive intention on the part of the applicant. The
-in this instance. (If an argument had been presented
-as to element C defining over the art, in
-addition to the addition of element E, then the
-ABCDE combination could not be broadened to omit
-element C and thereby claim combination of ABDE.
-This would be recapture; see the above discussion as
-to surrender and recapture based upon argument.)
-Additionally, the reissue claims are certainly permitted
-to recite combination ABDEspecific (where surrender-
-generating element E is narrowed). The patent
-claims have been broadened in an area not directed to
-the surrender (by omitting element C) and narrowed
-in the area of surrender (by narrowing element E to
-Especific). This is clearly permitted.
-As another example, assume limitation C was
-added to application claims AB to obtain the patent to
-ABC, and now the reissue application presents claims
-to AC or ABbroadC. Such reissue claims avoid the
-effect of the recapture rule because they are broader in
-a way that does not attempt to reclaim what was surrendered
-earlier. Mentor Corp. v. Coloplast, Inc., 998
-F.2d 992, 994, 27 USPQ2d 1521, 1525 (Fed. Cir.
-). Such claims are considered to be broader in an
-aspect not 'germane to a prior art rejection,' and thus
-are not barred by recapture. Note In re Clement,
-F.3d at 1470, 45 USPQ2d at 1165.
-Reissue claims that are broader than the original
-patent claims by deletion of a limitation or claim
-requirement other than the “surrender-generating limitation”
-will avoid the effect of the recapture rule,
-regardless of the nature of the narrowing in the
-claims, and even if the claims are not narrowed at all
-from the scope of the patent claims.
@@ Line 2,360: / Line 2,380: @@
-(c)Reissue Claims are Narrower in Scope in
+reissue oath or declaration must, as stated in 37 CFR
-Area Not Directed to Amendment/Argument
+.175, also comply with 37CFR 1.63.
-Made to Overcome Art Rejection in Original
-Prosecution; are Broader in Scope in Area
-Not Directed to the Amendment/Argument:
-In this instance, there is clearly no recapture. In the
+ The correction of inventorship does not enlarge the
-reissue application, there has been no change in the
+scope of the patent claims. Where a reissue application
-claims related to the matter surrendered in the original
+does not seek to enlarge the scope of the claims of
-application for the patent.
+the original patent, the reissue oath may be made and
+sworn to, or the declaration made, by the assignee of
-In this instance, element C was added to the AB
+the entire interest under 37 CFR 1.172. An assignee of
-combination to provide ABC and define over the art,
+part interest may not file a reissue application to correct
-and the patent was issued. The reissue omits element
+inventorship where the other co-owner did not
-B and adds element Z, to thus claim ACZ. There is no
+join in the reissue application and has not consented
-recapture since the surrender generating element C
+to the reissue proceeding. See Baker Hughes Inc. v.
-has not been modified in any way. (Note, however,
+Kirk, 921 F. Supp. 801, 809, 38 USPQ2d 1885, 1892
-that if, when element C was added to AB, applicant
+(D.D.C. 1995). See 35 U.S.C. 251, third paragraph.
-argued that the association of newly added C with B
+Thus, the signatures of the inventors are not needed
-provides a synergistic (unexpected) result to thus
+on the reissue oath or declaration where the assignee
-define over the art, then neither B nor C could be
+of the entire interest signs the reissue oath/declaration.
-omitted in the reissue application.)
+Accordingly, an assignee of the entire interest can add
+or delete the name of an inventor by reissue (e.g., correct
+inventorship from inventor A to inventors A and
+B) without the original inventor’s consent. See also 37
+CFR 3.71(a) (“One or more assignees as defined in
+paragraph (b) of this section may, after becoming of
+record pursuant to paragraph (c) of this section, conduct
+prosecution of a national patent application or
+reexamination proceeding to the exclusion of either
+the inventive entity, or the assignee(s) previously
+entitled to conduct prosecution.” Emphasis added).
+Thus, the assignee of the entire interest can file a reissue
+to change the inventorship to one which the
+assignee believes to be correct, even though an inventor
+might disagree. The protection of the assignee’s
+property rights in the application and patent are statutorily
+based in 35 U.S.C. 118.
-(d)Reissue Claims Broader in Scope in Area
+Where the name of an inventor X is to be deleted in
-Directed to Amendment/Argument Made to
+a reissue application to correct inventorship in a
-Overcome Art Rejection in Original
+patent, and inventor X has not assigned his/her rights
-Prosecution; but Reissue Claims Retain, in
+to the patent, inventor X has an ownership interest in
-Broadened Form, the Limitation(s) Argued/
+the patent. Inventor X must consent to the reissue
-Added to Overcome Art Rejection in
+(37
-Original Prosecution:
+CFR 1.172(a)), even though inventor X’s name is
+being deleted as an inventor and need not sign the
-Assume the combination AB was originally
+reissue oath or declaration. If inventor X has assigned
-claimed in the application, and was amended in reply
+his/her rights to the patent, then inventor X’s assignee
-to an art rejection to add element C and thus provide
+must consent. In addition to providing the consent,
-the combination ABC (after which the patent issued).
+even though inventor X does not sign the reissue oath
-A reissue application is then filed, and the reissue
+or declaration as an inventor (since the correction of
-application claims are directed to the combination
+inventorship does not enlarge the scope of the patent
-ABCbroadened. The ABCbroadened claims are narrowed
+claims), the assignee of the entire interest must sign
-in scope when compared with the canceled claim subject
+the reissue oath or declaration as assignee (37 CFR
-matter AB, because of the addition of Cbroadened.
+.172(a)). Thus, if inventor X has not assigned his/her
-Thus, the claims retain, in broadened form, the limitation
+patent rights, inventor X’s signature must be included
-argued/added to overcome art rejection in original
+in the reissue oath or declaration as the assignee. If
-prosecution. There is no recapture, since
+inventor X has assigned his/her patent rights, inventor
-ABCbroadened is narrower than canceled claim subject
+X’s assignee must sign the reissue oath or declaration
-matter AB in an area related to the surrender. This is
+as the assignee. For example, a patent to inventors X
-so, because it was element C that was added in the
+and Y has no assignee. A reissue application is filed
-application to overcome the art. See Ex Parte Eggert,
+by inventor Y to delete the name of inventor X as an
-supra.
+inventor. 37 CFR 1.172(a) provides that a reissue oath
+or declaration may be made by the assignee/owners of
-II.REISSUE TO TAKE ADVANTAGE OF
+the entire interest, rather than by the inventors, where
+the scope of the claims is not to be enlarged. However,
-U.S.C. 103(b):
+since inventor X has not assigned his/her patent
+rights, inventor X must sign the reissue oath or declaration
-A patentee may file a reissue application to permit
+as one of the owners, and consent to the filing
-consideration of process claims which qualify for
+of the reissue application by inventor Y. See MPEP
-U.S.C. 103(b) treatment if a patent is granted on an
-application entitled to the benefit of 35 U.S.C. 103(b),
-without an election having been made as a result of..
-error without deceptive intent. See MPEP
 §
-.02(n). This is not to be considered a recapture.
+.01.
-The addition of process claims, however, will
-generally be considered to be a broadening of the
-invention (Ex parte Wikdahl, 10 USPQ2d 1546 (Bd.
-Pat. App. & Inter. 1989)), and such addition must be
-applied for within two years of the grant of the original
-patent. See also MPEP § 1412.03 as to broadened
-claims.
-III.REISSUE FOR ARTICLE CLAIMS
+ Where a reissue to correct inventorship also
-WHICH ARE FUNCTIONAL DESCRIPTIVE
+changes the claims to enlarge the scope of the patent
-MATERIAL STORED ON A COMPUTER-
+claims, the signature of all the inventors is needed.
-READABLE MEDIUM:
+However, if an inventor refuses to sign the reissue
+oath or declaration because he or she believes the
-A patentee may file a reissue application to permit
+change in inventorship (to be effected) is not correct,
-consideration of article of manufacture claims which
+the reissue application can still be filed with a petition
-are functional descriptive material stored on a computer-
+under 37 CFR 1.47 without that inventor’s signature
-readable medium, where these article claims
+provided the written consent of all owners/assignees
-correspond to the process or machine claims which
+as required by 37 CFR 1.172(a) is also submitted. In
-have been patented. The error in not presenting claims
+the situation where a patent to inventors X and Y has
-to this statutory category of invention (the “article”
+no assignee and a reissue application is filed by inventor
-claims) must have been made as a result of error without
+Y to delete the name of inventor X as an inventor
-deceptive intent. The addition of these “article”
+and to broaden the patent. Inventor X refuses to sign
-claims will generally be considered to be a broadening
+the reissue oath or declaration and refuses to provide
-of the invention (Ex parte Wikdahl, 10 USPQ2d
+the consent as required by 37 CFR 1.172(a). In this
-(Bd. Pat. App. & Inter. 1989)), and such addition
+instance, a 37 CFR 1.47 petition would not be appropriate
-must be applied for within two years of the grant of
+to permit the filing of the reissue application
-the original patent. See also MPEP § 1412.03 as to
+since the consent requirement of 37 CFR 1.172(a) for
-broadened claims.
+each owner/assignee is not met. Resort to the courts
+would be required to delete the name of inventor X as
+an inventor where X will not consent to the filing of a
+reissue application. As stated in the second paragraph
+of 35 U.S.C. 256, “[t]he court before which such matter
+is called in question may order correction of the
+patent on notice and hearing of all parties concerned
+and the Director shall issue a certificate accordingly.”
-IV.REJECTION BASED UPON RECAPTURE:
+ The reissue application with its reissue oath or declaration
+under 37 CFR 1.175 provides a complete
+mechanism to correct inventorship. See A.F. Stoddard
-Reissue claims which recapture surrendered subject
-matter should be rejected using form paragraph 14.17.
-¶ 14.17 Rejection, 35 U.S.C. 251, Recapture
-Claim[1] rejected under 35 U.S.C. 251 as being an improper
-recapture of broadened claimed subject matter surrendered in the
-application for the patent upon which the present reissue is based.
-See Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d
-(Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142
-F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131
@@ Line 2,472: / Line 2,489: @@
-F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v.
+& Co. v. Dann, 564 F.2d at 567, 195 USPQ at 106. A
-United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir.
+request under 37
-). A broadening aspect is present in the reissue which was not
+CFR 1.48 or a petition under 37 CFR
-present in the application for patent. The record of the application
+.324 cannot be used to correct the inventorship of a
-for the patent shows that the broadening aspect (in the reissue)
+reissue application. If a request under 37 CFR 1.48 or
-relates to claim subject matter that applicant previously surrendered
+a petition under 37 CFR 1.324 is filed in a reissue
-during the prosecution of the application. Accordingly, the
+application, the request or petition should be dismissed
-narrow scope of the claims in the patent was not an error within
+and the processing or petition fee refunded.
-the meaning of 35 U.S.C. 251, and the broader scope of claim subject
+The material submitted with the request or petition
-matter surrendered in the application for the patent cannot be
+should then be considered to determine if it complies
-recaptured by the filing of the present reissue application.
+with 37 CFR 1.175. If the material submitted with the
+request or petition does comply with the requirements
+of 37 CFR 1.175 (and the reissue application is otherwise
+in order), the correction of inventorship will be
+permitted as a correction of an error in the patent
+under 35 U.S.C. 251.
-[2]
+Where a reissue application seeks to correct inventorship
+in the patent and the inventors are required to
+sign the reissue oath or declaration (rather than an
+assignee of the entire interest under 37 CFR 1.172)
+due to a broadening of any claims of the original
+patent, the correct inventive entity must sign the reissue
+oath or declaration. Where an inventor is being
+added in a reissue application to correct inventorship
+in a patent, the inventor being added must sign the
+reissue oath or declaration together with the inventors
+previously designated on the patent. For example, a
+reissue application is filed to correct the inventorship
+from inventors A and B (listed as inventors on the
+patent) to inventors A, B, and C. Inventor C is the
+inventor being added. In such a case, A, B, and C are
+the correct inventors, and accordingly, each of A, B,
+and C must sign the reissue oath or declaration.
+Where an inventor is being deleted in a reissue application
+to correct inventorship in a patent and the
+inventors are required to sign the oath or declaration
+due to a broadening of any claims of the original
+patent, the inventor being deleted need not sign the
+reissue oath or declaration. The reissue oath or declaration
+must be signed by the correct inventive entity.
+For example, a reissue application is filed to correct
+inventorship from inventors A, B, and C (listed as
+inventors on the patent) to inventors A and B. Inventor
+C is being deleted as a named inventor. In such a
+case, A and B are the correct inventors, and accordingly,
+inventors A and B must sign the reissue oath or
+declaration but inventor C need not sign the reissue
+oath or declaration.
-Examiner Note:
+==1413 Drawings==
-In bracket 2, the examiner should explain the specifics of why
+CFR 1.173. Reissue specification, drawings, and
-recapture exists, including an identification of the omitted/broadened
+amendments.
-claim limitations in the reissue which provide the “broadening
-aspect” to the claim(s), and where in the original application
-the narrowed claim scope was presented/argued to obviate a rejection/
-objection. See MPEP §
-.02.
-See the recapture-analysis flow chart which follows
-for assistance in determining whether recapture is
-present, consistent with the case law discussed above.
+(a)(2) Drawings. Applicant must submit a clean copy of each
+drawing sheet of the printed patent at the time the reissue application
+is filed. If such copy complies with § 1.84, no further drawings
+will be required. Where a drawing of the reissue application
+is to include any changes relative to the patent being reissued, the
+changes to the drawing must be made in accordance with paragraph
+(b)(3) of this section. The Office will not transfer the drawings
+from the patent file to the reissue application.
-Flowchart - Reissue Recapture - Determining its presence or absence
+A clean copy (e.g., good quality photocopies free of
+any extraneous markings) of each drawing sheet of
+the printed patent must be supplied by the applicant at
+the time of filing of the reissue application. If the copies
+meet the requirements of 37 CFR 1.84, no further
+formal drawings will be required. New drawing sheets
+are not to be submitted, unless some change is made
+in the original patent drawings. Such changes must be
+made in accordance with 37 CFR 1.173(b)(3).
+The prior reissue practice of transferring drawings
+from the patent file has been eliminated, since clean
+photocopies of the printed patent drawings are acceptable
+for use in the printing of the reissue patent.
+AMENDMENT OF DRAWINGS
+CFR 1.173. Reissue specification, drawings, and
+amendments.
+(b)(3) Drawings. One or more patent drawings shall be
+amended in the following manner: Any changes to a patent drawing
+must be submitted as a replacement sheet of drawings which
+shall be an attachment to the amendment document. Any replacement
+sheet of drawings must be in compliance with § 1.84 and
+shall include all of the figures appearing on the original version of
+the sheet, even if only one figure is amended. Amended figures
+must be identified as “Amended,” and any added figure must be
+identified as “New.” In the event that a figure is canceled, the figure
+must be surrounded by brackets and identified as “Canceled.”
+All changes to the drawing(s) shall be explained, in detail, beginning
+on a separate sheet accompanying the papers including the
+amendment to the drawings.
-.03Broadening Reissue Claims
+The provisions of 37 CFR
-[R-3]
+.173(b)(3) govern the
+manner of making amendments (changes) to the
-U.S.C. 251 prescribes a 2-year limit for filing
-applications for broadening reissues:
-No reissue patent shall be granted enlarging the scope of
-the original patent unless applied for within two years
-from the grant of the original patent.
-I. MEANING OF “BROADENED REISSUE
+drawings in a reissue application. The following guidance
-CLAIM”
+is provided as to the procedure for amending
+drawings:
-A broadened reissue claim is a claim which
+(A)Amending the original or printed patent drawing
-enlarges the scope of the claims of the patent, i.e., a
+sheets by physically changing or altering them is
-claim which is greater in scope than each and every
+not permitted. Any request to do so should be denied.
-claim of the original patent. If a disclaimer is filed in
-the patent prior to the filing of a reissue application,
-the disclaimed claims are not part of the “original
-patent” under 35 U.S.C. 251. The Court in Vectra Fitness
-Inc. v. TNWK Corp., 49 USPQ2d 1144, 1147,
-F.3d 1379, 1383 (Fed. Cir. 1998) held that a reissue
-application violated the statutory prohibition
-under 35 U.S.C. 251 against broadening the scope of
-the patent more than 2 years after its grant because the
-reissue claims are broader than the claims that remain
-after the disclaimer, even though the reissue claims
-are narrower than the claims that were disclaimed by
-the patentee before reissue. The reissue application
-was bounded by the claims remaining in the patent
-after a disclaimer is filed.A claim of a reissue application
-enlarges the scope of the claims of the patent if it
-is broader in at least one respect, even though it may
-be narrower in other respects.
-A claim in the reissue which includes subject matter
+(B)Where a change to the drawings is desired,
-not covered by the patent claims enlarges the scope
+applicant must submit a replacement sheet for each
-of the patent claims. For example, if any amended or
+sheet of drawings containing a Figure to be revised.
-newly added claim in the reissue contains within its
+Any replacement sheet must comply with 37 CFR
-scope any conceivable product or process which
+.84 and include all of the figures appearing on the
-would not have infringed the patent, then that reissue
+original version of the sheet, even if only one figure is
-claim would be broader than the patent claims. Tillotson,
+being amended. Each figure that is amended must be
-Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2,
+identified by placing the word “Amended” at the bottom
+of that figure. Any added figure must be identified
-USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re
+as “New.” In the event that a figure is canceled,
-Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA
+the figure must be identified as “Canceled” and also
-); In re Rogoff, 261 F.2d 601, 603, 120 USPQ
+surrounded by brackets. All changes to the figure(s)
-, 186 (CCPA 1958). A claim which reads on
+must be explained, in detail, beginning on a separate
-something which the original claims do not is a broadened
+sheet which accompanies the papers including the
-claim. A claim would be considered a broadening
+amendment to the drawings.
-claim if the patent owner would be able to sue any
-party for infringement who previously could not have
-been sued for infringement. Thus, where the original
-patent claims only the process, and the reissue application
-adds (for the first time) product claims, the
-scope of the claims has been broadened since a party
-could not be sued for infringement of the product
-based on the claims of the original patent.
-The addition of combination claims in a reissue
+(C)If desired, applicant may include a marked-up
-application where only subcombination claims were
+copy of any amended drawing figure, including annotations
-present in the original patent could be a broadening of
+indicating the changes made. Such a marked-
-the invention. The question which must be resolved in
+up copy must be clearly labeled as “Annotated
-this case is whether the combination claims added in
+Marked-up Drawings”, and it must be presented in the
-the reissue would be for “the invention as claimed” in
+amendment or remarks section that explains the
-the original patent. See Ex parte Wikdahl, 10 USPQ2d
+change to the drawings.
-at 1549. The newly added combination claims should
-be analyzed to determine whether they contain every
-limitation of the subcombination of any claim of the
-original patent. If the combination claims (added in
-the reissue) contain every limitation of the subcombination
-(which was claimed in the original application),
-then infringement of the combination must also
-result in infringement of the subcombination. Accordingly,
-the patent owner could not, if a reissue patent
-issues with the combination claims, sue any new
-party for infringement who could not have been sued
-for infringement of the original patent. Therefore,
-broadening does not exist, in spite of the addition of
-the combination.
+In addition, the examiner may desire a marked-up
+copy of any amended drawing figure, and so state in
+an Office action. A marked-up copy of any amended
+drawing figure, including annotations indicating the
+changes made, must be provided when required by the
+examiner.
+(D)For each proper new drawing sheet being
+added, the new sheet should be inserted after the
+existing drawing sheets. For each proper  drawing
+sheet being added which replaces an existing drawing
+sheet, the existing sheet should be canceled by
+placing the sheet face down in the file and placing a
+large “X” on the back of the sheet. The new sheet
+should be inserted in place of the turned over existing
+sheet.
-II. SCOPE OF DEPENDENT CLAIM
+(E)If any drawing change  is not  approved,
-ENLARGED-NOT BROADENING
+or if any submitted sheet of formal drawings is not
+entered, the examiner will so inform the reissue applicant
+in the next Office action, and the examiner will
+set forth the reasons for same.
-As pointed out above, a claim will be considered a
+==1414 Content of Reissue Oath/Declaration==
-broadened reissue claim when it is greater in scope
-than each and every claim of the patent to be reissued.
-A corollary of this is that a claim which has
-been broadened in a reissue as compared to its scope
-in the patent is not a broadened reissue claim if it is
-narrower than, or equal in scope to, any other claim
-which appears in the patent. A common example of
-this is where dependent claim 2 is broadened via the
-reissue (other than the addition of a process step to
-convert an intermediate to a final product as discussed
-in the preceding subsection), but independent claim 1
-on which it is based is not broadened. Since a dependent
-claim is construed to contain all the limitations of
-the claim upon which it depends, claim 2 must be at
+CFR 1.175. Reissue oath or declaration.
+(a)The reissue oath or declaration in addition to complying
+with the requirements of § 1.63, must also state that:
+(1)The applicant believes the original patent to be wholly
+or partly inoperative or invalid by reason of a defective specification
+or drawing, or by reason of the patentee claiming more or less
+than the patentee had the right to claim in the patent, stating at
+least one error being relied upon as the basis for reissue; and
+(2)All errors being corrected in the reissue application up
+to the time of filing of the oath or declaration under this paragraph
-least as narrow as claim 1 and is thus not a broadened
+arose without any deceptive intention on the part of the applicant.
-reissue claim.
+(b)(1) For any error corrected, which is not covered by the
+oath or declaration submitted under paragraph (a) of this section,
+applicant must submit a supplemental oath or declaration stating
+that every such error arose without any deceptive intention on the
+part of the applicant. Any supplemental oath or declaration
+required by this paragraph must be submitted before allowance
+and may be submitted:
+(i) With any amendment prior to allowance; or
-III. NEW CATEGORY OF INVENTION
+(ii) In order to overcome a rejection under 35
-ADDED IN REISSUE - GENERALLY
+U.S.C. 251
-IS BROADENING
+made by the examiner where it is indicated that the submission of
+a supplemental oath or declaration as required by this paragraph
+will overcome the rejection.
-The addition of process claims as a new category of
+(2)For any error sought to be corrected after allowance, a
-invention to be claimed in the patent (i.e., where there
+supplemental oath or declaration must accompany the requested
-were no method claims present in the original patent)
+correction stating that the error(s) to be corrected arose without
-is generally considered as being a broadening of the
+any deceptive intention on the part of the applicant.
-invention. See Ex parte Wikdahl, 10 USPQ2d 1546
-(Bd. Pat. App. & Inter. 1989). A situation may arise,
-however, where the reissue application adds a limitation
-(or limitations) to process A of making the product
-A claimed in the original patent claims. For
-example:
-(1)a process of using the product A (made by the
+(c)Having once stated an error upon which the reissue is
-process of the original patent) to make a product B,
+based, as set forth in paragraph (a)(1), unless all errors previously
-disclosed but not claimed in the original patent; or
+stated in the oath or declaration are no longer being corrected, a
+subsequent oath or declaration under paragraph (b) of this section
+need not specifically identify any other error or errors being corrected.
-(2)a process of using the product A to carry out a
-process B disclosed but not claimed in the original
-patent.
-Although this amendment of the claims adds a
+(d)The oath or declaration required by paragraph (a) of this
-method of making product B or adds a method of
+section may be submitted under the provisions of § 1.53(f).
-using product A, this is not broadening (i.e., this is not
-an enlargement of the scope of the original patent)
+(e)The filing of any continuing reissue application which
-because the “newly claimed invention” contains all
+does not replace its parent reissue application must include an
-the limitations of the original patent claim(s).
+oath or declaration which, pursuant to paragraph (a)(1) of this section,
+identifies at least one error in the original patent which has
+not been corrected by the parent reissue application or an earlier
+reissue application. All other requirements relating to oaths or
+declarations must also be met.
+The reissue oath/declaration is an essential part of a
+reissue application and must be filed with the application,
+or within the time period set under 37 CFR
+.53(f) along with the required surcharge as set forth
+in 37 CFR 1.16(f) in order to avoid abandonment.
+The question of the sufficiency of the reissue oath/
+declaration filed under 37 CFR 1.175 must in each
+case be reviewed and decided personally by the primary
+examiner.
-IV. WHEN A BROADENED CLAIM CAN BE
-PRESENTED
-A broadened claim can be presented within two
-years from the grant of the original patent in a reissue
-application. In addition, a broadened claim can be
-presented after two years from the grant of the original
-patent in a broadening reissue application
-which was filed within two years from the grant.
-Where any intent to broaden is indicated in the reissue
-application within the two years from the patent grant,
-a broadened claim can subsequently be presented in
-the reissue after the two year period. Thus, a broadened
-claim may be presented in a reissue application
-after the two years, even though the broadened claim
-presented after the two years is different than the
-broadened claim presented within the two years.
-Finally, if intent to broaden is indicated in a parent
-reissue application within the two years, a broadened
-claim can be presented in a continuing (continuation
-or divisional) reissue application after the two year
-period. In any other situation, a broadened claim cannot
-be presented, and the examiner should check carefully
-for the improper presentation of broadened
-claims.
-A reissue application filed on the 2-year anniversary
-date from the patent grant is considered to be
-filed within 2 years of the patent grant. See Switzer v.
-Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964)
-for a similar rule in interferences.
-See also the following cases which pertain to
-broadened reissues:
-In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471,
+Reissue oaths or declarations must contain the following:
--74 (Fed. Cir. 1997) (Broadened claims in a continuing
-reissue application were properly rejected
-under 35 U.S.C. 251 because the proposal for broadened
-claims was not made (in the parent reissue application)
-within two years from the grant of the original
-patent and the public was not notified that broadened
-claims were being sought until after the two-year
-period elapsed.);
-In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed.
-Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The
-failure by an applicant to include an oath or declaration
-indicating a desire to seek broadened claimswithin two years of the patent grant will bar a subsequent
-attempt to broaden the claims after the two year
-limit. Under the former version of 37 CFR 1.175 (the
-former 37 CFR 1.175(a)(4)), applicant timely sought
-a “no-defect” reissue, but the Court did not permit an
-attempt made beyond the two year limit to convert the
-reissue into a broadening reissue. In this case, applicant
-did not indicate any intent to broaden within the
-two years.);
-In re Bennett, 766 F.2d 524, 528, 226 USPQ 413,
+(A)A statement that the applicant believes the
-(Fed. Cir. 1985) (en banc) (A reissue application
+original patent to be wholly or partly inoperative or
-with broadened claims was filed within two years of
+invalid—
-the patent grant; however, the declaration was executed
-by the assignee rather than the inventor. The
+(1)by reason of a defective specification or
-Federal Circuit permitted correction of the improperly
+drawing, or
-executed declaration to be made more than two years
-after the patent grant.);
+(2)by reason of the patentee claiming more or
+less than patentee had the right to claim in the patent;
-In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220
+(B)A statement of at least one error which is
-(CCPA 1970) (If the reissue application is timely filed
+relied upon to support the reissue application, i.e., as
-within two years of the original patent grant and the
+the basis for the reissue;
+(C)A statement that all errors which are being
+corrected in the reissue application up to the time of
+filing of the oath/declaration arose without any deceptive
+intention on the part of the applicant; and
+(D)The information required by 37 CFR 1.63.
+These elements will now be discussed:
+I.A STATEMENT THAT THE APPLICANT
+BELIEVES THE ORIGINAL PATENT TO
+BE WHOLLY OR PARTLY INOPERATIVE
+OR INVALID BY REASON OF A DEFECTIVE
+SPECIFICATION OR DRAWING,
+OR BY REASON OF THE PATENTEE
+CLAIMING MORE OR LESS THAN PATENTEE
+HAD THE RIGHT TO CLAIM IN
+THE PATENT.
-applicant indicates in the oath or declaration that the
+In order to satisfy this requirement, a declaration
-claims will be broadened, then applicant may subsequently
+can state as for example:
-broaden the claims in the pending reissue
-prosecution even if the additional broadening occurs
-beyond the two year limit.).
-Form paragraphs 14.12 and 14.13 may be used in
-rejections based on improper broadened reissue
-claims.
-¶ 14.12 Rejection, 35 U.S.C. 251, Broadened Claims After
-Two Years
-Claim [1] rejected under 35 U.S.C. 251 as being broadened in
+. “Applicant believes the original patent to be
-a reissue application filed outside the two year statutory period.
+partly inoperative or invalid by reason of a defective
-[2] A claim is broader in scope than the original claims if it contains
+specification or drawing.”
-within its scope any conceivable product or process which
-would not have infringed the original patent. A claim is broadened
-if it is broader in any one respect even though it may be narrower
-in other respects.
-Examiner Note:
-The claim limitations that broaden the scope should be identified
-and explained in bracket 2. See MPEP §§ 706.03(x) and
-.03.
-¶ 14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed
+. “Applicant believes the original patent to be
-by Assignee
+partly inoperative or invalid by reason of the patentee
+claiming more than patentee had a right to claim in
+the patent.”
-Claim [1] rejected under 35 U.S.C. 251 as being improperly
-broadened in a reissue application made and sworn to by the
-assignee and not the patentee. [2]A claim is broader in scope than
-the original claims if it contains within its scope any conceivable
-product or process which would not have infringed the original
-patent. A claim is broadened if it is broader in any one respecteven though it may be narrower in other respects.
-Examiner Note:
-The claim limitations that broaden the scope should be identified
+. “Applicant believes the original patent to be
-and explained in bracket 2. See MPEP §§ 706.03(x) and
+partly inoperative or invalid by reason of the patentee
-.03.
+claiming less than patentee had a right to claim in the
+patent.”
+Where the specification or drawing is defective andpatentee claimed both more and less than patentee had
+the right to claim in the patent, then all three statements
+should be included in the reissue oath/declaration.
+A statement that the original patent is “wholly
+or partly inoperative or invalid” (emphasis added) by
+reason of the patentee “claiming more or less than the
+patentee had the right to claim in the patent” (emphasis
+added) is improper since a claim cannot claim
+“more or less” at the same time. Where, however, a
+given independent claim is considered to be overly
+broad, and another independent claim is considered to
+be overly narrow, patentee has claimed both more andless than he or she had a right to claim. In such an
+instance, both the second and third above-quoted
+statements would be used. See MPEP § 1412.04 for
+an exemplary declaration statement when the error
+being corrected is an error in inventorship.
+The above examples will be sufficient to satisfy this
+requirement without any further statement.
-V. BROADENING REISSUE - OATH/
+It should be noted that the reissue oath/declaration
-DECLARATION REQUIREMENTS
+must also satisfy the requirement for a statement of at
+least one error being relied upon as the basis for reissue,
+in the manner set forth in subsection II. below.
-A broadening reissue application must be applied
+Form paragraph 14.01 may be used where the reissue
-for by all of the inventors (patentees), that is, the original
+oath/declaration does not provide the required
-reissue oath or declaration must be signed by all
+statement as to applicant’s belief that the original
-of the inventors. See also MPEP § 1414. If a supplemental
+patent is wholly or partly inoperative or invalid.
-oath or declaration in a broadening reissue
-application is needed in the application in order to fulfill
+¶ 14.01 Defective Reissue Oath/Declaration, 37 CFR
-the requirements of 37 CFR 1.175, the supplemental
+.175(a)(1) - No Statement of Defect in the Patent
-reissue oath or declaration must be signed by all of
-the inventors. See In re Hayes, 53 USPQ2d 1222
-(Comm’r Pat. 1999) and MPEP § 1414.01.
-.04Correction of Inventorship [R-5]
+The reissue oath/declaration filed with this application is
+defective because it fails to contain the statement required under
+CFR 1.175(a)(1) as to applicant’s belief that the original patent
+is wholly or partly inoperative or invalid. See 37 CFR 1.175(a)(1)
+and see MPEP §
+. [1]
-The correction of misjoinder of inventors has been
+Examiner Note:
-held to be a ground for reissue. See Ex parte Scudder,
-USPQ 814, 815 (Bd. App. 1971) wherein the
-Board held that 35 U.S.C. 251 authorizes reissue
-applications to correct misjoinder of inventors where35 U.S.C. 256 is inadequate. See also A.F. Stoddard &
-Co. v. Dann, 564 F.2d 556, 567 n.16, 195 USPQ 97,
-n.16 (D.C. Cir. 1977) wherein correction of
-inventorship from sole inventor A to sole inventor B
-was permitted in a reissue application. The court
-noted that reissue by itself is a vehicle for correcting
-inventorship in a patent.
-I.CERTIFICATE OF CORRECTION AS A
+.Use this form paragraph when applicant: (a) fails to allege
-VEHICLE FOR CORRECTING INVEN-
+that the original patent is inoperative or invalid and/or (b) fails to
-TORSHIP
+state the reason of a defective specification or drawing, or of patentee
+claiming more or less than patentee had the right to claim in
+the patent . In bracket 1, point out the specific defect to applicant
+by using the language of (a) and/or (b), as it is appropriate.
-While reissue is a vehicle for correcting inventorship
+.Form paragraph 14.14 must follow this form paragraph.
-in a patent, correction of inventorship should be
-effected under the provisions of 35 U.S.C. 256 and
-CFR 1.324 by filing a request for a Certificate of
-Correction if:
-(A)the only change being made in the patent is to
+II.A STATEMENT OF AT LEAST ONE ERROR
-correct the inventorship; and
+WHICH IS RELIED UPON TO SUPPORT
+THE REISSUE APPLICATION (I.E.,
+THE BASIS FOR THE REISSUE).
-(B)all parties are in agreement and the inventorship
+(A)A reissue applicant must acknowledge the
-issue is not contested.
+existence of an error in the specification, drawings, or
+claims, which error causes the original patent to be
- See MPEP § 1481 for the procedure to be followed
-to obtain a Certificate of Correction for correction of
-inventorship.
-II.REISSUE AS A VEHICLE FOR CORRECTING
-INVENTORSHIP
- Where the provisions of 35 U.S.C. 256 and
-CFR 1.324 do not apply, a reissue application is
-the appropriate vehicle to correct inventorship. The
-failure to name the correct inventive entity is an error
-in the patent which is correctable under 35 U.S.C.
-. The reissue oath or declaration pursuant to
-CFR 1.175 must state that the applicant believes
-the original patent to be wholly or partly inoperative
-or invalid through error of a person being incorrectly
-named in an issued patent as the inventor, or through
-error of an inventor incorrectly not named in an
-issued
-patent, and that such error arose without any
-deceptive intention on the part of the applicant. The
+defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369
+(Fed. Cir. 1984). A change or departure from the original
+specification or claims represents an “error” in
+the original patent under 35 U.S.C. 251. See MPEP
+§
+for a discussion of grounds for filing a reissue
+that may constitute the “error” required by 35 U.S.C.
+. Not all changes with respect to the patent constitute
+the “error” required by 35 U.S.C. 251.
+(B)Applicant need only specify in the reissue
+oath/declaration one of the errors upon which reissue
+is based. Where applicant specifies one such error,
+this requirement of a reissue oath/declaration is satisfied.
+Applicant may specify more than one error.
+Where more than one error is specified in the
+oath/declaration and some of the designated “errors”
+are found to not be “errors” under 35 U.S.C. 251, any
+remaining error which is an error under 35 U.S.C. 251will still support the reissue.
-reissue oath or declaration must, as stated in 37 CFR
+The “at least one error” which is relied upon to
-.175, also comply with 37CFR 1.63.
+support the reissue application must be set forth in the
+oath/declaration. It is not necessary, however, to point
+out how (or when) the error arose or occurred. Further,
+it is not necessary to point out how (or when) the
+error was discovered. If an applicant chooses to point
+out these matters, the statements directed to these
+matters will not be reviewed by the examiner, and the
+applicant should be so informed in the next Office
+action. All that is needed for the oath/declaration
+statement as to error is the identification of “at least
+one error” relied upon.
- The correction of inventorship does not enlarge the
+In identifying the error, it is sufficient that the
-scope of the patent claims. Where a reissue application
+reissue oath/declaration identify a single word,
-does not seek to enlarge the scope of the claims of
+phrase, or expression in the specification or in an original
-the original patent, the reissue oath may be made and
+claim, and how it renders the original patent
-sworn to, or the declaration made, by the assignee of
+wholly or partly inoperative or invalid. The corresponding
-the entire interest under 37 CFR 1.172. An assignee of
+corrective action which has been taken to
-part interest may not file a reissue application to correct
+correct the original patent need not be identified in the
-inventorship where the other co-owner did not
+oath/declaration. If the initial reissue oath/declaration
-join in the reissue application and has not consented
+“states at least one error” in the original patent, and, in
-to the reissue proceeding. See Baker Hughes Inc. v.
+addition, recites the specific corrective action taken in
-Kirk, 921 F. Supp. 801, 809, 38 USPQ2d 1885, 1892
+the reissue application, the oath/declaration would be
-(D.D.C. 1995). See 35 U.S.C. 251, third paragraph.
+considered acceptable, even though the corrective
-Thus, the signatures of the inventors are not needed
+action statement is not required.
-on the reissue oath or declaration where the assignee
-of the entire interest signs the reissue oath/declaration.
+(C)It is not sufficient for an oath/declaration to
-Accordingly, an assignee of the entire interest can add
+merely state “this application is being filed to correct
-or delete the name of an inventor by reissue (e.g., correct
+errors in the patent which may be noted from the
-inventorship from inventor A to inventors A and
+changes made in the disclosure.” Rather, the oath/declaration
-B) without the original inventor’s consent. See also 37
+must specifically identify an error. In addition,
-CFR 3.71(a) (“One or more assignees as defined in
+it is not sufficient to merely reproduce the claims
-paragraph (b) of this section may, after becoming of
+with brackets and underlining and state that such will
-record pursuant to paragraph (c) of this section, conduct
+identify the error. See In re Constant, 827 F.2d 728,
-prosecution of a national patent application or
+, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484
-reexamination proceeding to the exclusion of either
+U.S. 894 (1987). Any error in the claims must be
-the inventive entity, or the assignee(s) previously
+identified by reference to the specific claim(s) and the
-entitled to conduct prosecution.” Emphasis added).
+specific claim language wherein lies the error.
-Thus, the assignee of the entire interest can file a reissue
-to change the inventorship to one which the
-assignee believes to be correct, even though an inventor
-might disagree. The protection of the assignee’s
-property rights in the application and patent are statutorily
-based in 35 U.S.C. 118.
-Where the name of an inventor X is to be deleted in
+A statement of “…failure to include a claim
-a reissue application to correct inventorship in a
+directed to…” and then presenting a newly added
-patent, and inventor X has not assigned his/her rights
+claim, would not be considered a sufficient “error”
-to the patent, inventor X has an ownership interest in
+statement since applicant has not pointed out what the
-the patent. Inventor X must consent to the reissue
+other claims lacked that the newly added claim has, or
-(37
+vice versa. Such a statement would be no better than
-CFR 1.172(a)), even though inventor X’s name is
+saying in the reissue oath or declaration that “this
-being deleted as an inventor and need not sign the
+application is being filed to correct errors in the patent
-reissue oath or declaration. If inventor X has assigned
+which may be noted from the change made by adding
-his/her rights to the patent, then inventor X’s assignee
+new claim 10.” In both cases, the error has not been
-must consent. In addition to providing the consent,
+identified.
-even though inventor X does not sign the reissue oath
-or declaration as an inventor (since the correction of
-inventorship does not enlarge the scope of the patent
-claims), the assignee of the entire interest must sign
-the reissue oath or declaration as assignee (37 CFR
-.172(a)). Thus, if inventor X has not assigned his/her
-patent rights, inventor X’s signature must be included
-in the reissue oath or declaration as the assignee. If
-inventor X has assigned his/her patent rights, inventor
-X’s assignee must sign the reissue oath or declaration
-as the assignee. For example, a patent to inventors X
-and Y has no assignee. A reissue application is filed
-by inventor Y to delete the name of inventor X as an
-inventor. 37 CFR 1.172(a) provides that a reissue oath
-or declaration may be made by the assignee/owners of
-the entire interest, rather than by the inventors, where
-the scope of the claims is not to be enlarged. However,
-since inventor X has not assigned his/her patent
-rights, inventor X must sign the reissue oath or declaration
-as one of the owners, and consent to the filing
-of the reissue application by inventor Y. See MPEP
-§
-.01.
- Where a reissue to correct inventorship also
+(D)Where a continuation reissue application is
-changes the claims to enlarge the scope of the patent
+filed with a copy of the reissue oath/declaration from
-claims, the signature of all the inventors is needed.
+the parent reissue application, and the parent reissue
-However, if an inventor refuses to sign the reissue
+application is not to be abandoned, the reissue oath/
-oath or declaration because he or she believes the
+declaration should be accepted by the Office of Initial
-change in inventorship (to be effected) is not correct,
+Patent Examination without further evaluation, since
-the reissue application can still be filed with a petition
+it is an oath/declaration, albeit improper under
-under 37 CFR 1.47 without that inventor’s signature
-provided the written consent of all owners/assignees
+U.S.C. 251. The examiner should, however, reject
-as required by 37 CFR 1.172(a) is also submitted. In
+the claims of the continuation reissue application
-the situation where a patent to inventors X and Y has
+under 35 U.S.C. 251 as being based on an oath/declaration
-no assignee and a reissue application is filed by inventor
+that does not identify an error being corrected
-Y to delete the name of inventor X as an inventor
+by the continuation reissue application, and should
-and to broaden the patent. Inventor X refuses to sign
+require a new oath/declaration. 37 CFR 1.175(e)
-the reissue oath or declaration and refuses to provide
+states that “the filing of any continuing reissue application
-the consent as required by 37 CFR 1.172(a). In this
+which does not replace its parent reissue application
-instance, a 37 CFR 1.47 petition would not be appropriate
+must include an oath or declaration, which
-to permit the filing of the reissue application
+pursuant to [37 CFR 1.175(a)(1)], identifies at least
-since the consent requirement of 37 CFR 1.172(a) for
+one error in the original patent which has not been
-each owner/assignee is not met. Resort to the courts
+corrected by the parent reissue application or an earlier
-would be required to delete the name of inventor X as
+reissue application.” One of form paragraphs
-an inventor where X will not consent to the filing of a
+.01.01 through 14.01.03 may be used.
-reissue application. As stated in the second paragraph
-of 35 U.S.C. 256, “[t]he court before which such matter
-is called in question may order correction of the
-patent on notice and hearing of all parties concerned
-and the Director shall issue a certificate accordingly.”
- The reissue application with its reissue oath or declaration
+Where a continuation reissue application is filed
-under 37 CFR 1.175 provides a complete
+with a copy of the reissue oath/declaration from the
-mechanism to correct inventorship. See A.F. Stoddard
+parent reissue application, and the parent reissue
+application is, or will be abandoned, the copy of the
+reissue oath/declaration should be accepted by OIPE,
+and the examiner should check to ensure that the oath/
+declaration identifies an error which is still being corrected
+in the continuation application. If a preliminary
+amendment was filed with the continuation reissue
@@ Line 2,964: / Line 2,970: @@
-& Co. v. Dann, 564 F.2d at 567, 195 USPQ at 106. A
+application, the examiner should check for the need of
-request under 37
+a supplemental reissue oath/declaration. Pursuant to
-CFR 1.48 or a petition under 37 CFR
+CFR 1.175 (b)(1), for any error corrected via the
-.324 cannot be used to correct the inventorship of a
+preliminary amendment which is not covered by the
-reissue application. If a request under 37 CFR 1.48 or
+oath or declaration submitted in the parent reissue
-a petition under 37 CFR 1.324 is filed in a reissue
+application, applicant must submit a supplemental
-application, the request or petition should be dismissed
+oath/declaration stating that such error arose without
-and the processing or petition fee refunded.
+any deceptive intention on the part of the applicant.
-The material submitted with the request or petition
+See MPEP § 1414.01.
-should then be considered to determine if it complies
-with 37 CFR 1.175. If the material submitted with the
-request or petition does comply with the requirements
-of 37 CFR 1.175 (and the reissue application is otherwise
-in order), the correction of inventorship will be
-permitted as a correction of an error in the patent
-under 35 U.S.C. 251.
-Where a reissue application seeks to correct inventorship
+Where a divisional reissue application is filed
-in the patent and the inventors are required to
+with a copy of the reissue oath/declaration from
-sign the reissue oath or declaration (rather than an
+the
-assignee of the entire interest under 37 CFR 1.172)
+parent reissue application, the reissue oath/declaration
-due to a broadening of any claims of the original
+should be accepted by OIPE, since it is an oath/
-patent, the correct inventive entity must sign the reissue
+declaration, though it may be improper under
-oath or declaration. Where an inventor is being
-added in a reissue application to correct inventorship
+U.S.C. 251. The examiner should check the copy
-in a patent, the inventor being added must sign the
+of the oath/declaration to ensure that it identifies an
-reissue oath or declaration together with the inventors
+error being corrected by the divisional reissue application.
-previously designated on the patent. For example, a
+The copy of the oath/declaration from the parent
-reissue application is filed to correct the inventorship
+reissue application may or may not cover an error
-from inventors A and B (listed as inventors on the
+being corrected by the divisional reissue application
-patent) to inventors A, B, and C. Inventor C is the
+since the divisional reissue application is (by definition)
-inventor being added. In such a case, A, B, and C are
+directed to a new invention. If it does not, the
-the correct inventors, and accordingly, each of A, B,
+examiner should reject the claims of the divisional
-and C must sign the reissue oath or declaration.
+reissue application under 35 U.S.C. 251 as being
-Where an inventor is being deleted in a reissue application
+based on an oath/declaration that does not identify an
-to correct inventorship in a patent and the
+error being corrected by the divisional reissue application,
-inventors are required to sign the oath or declaration
+and require a new oath/declaration. If the copy of
-due to a broadening of any claims of the original
+the reissue oath/declaration from the parent reissue
-patent, the inventor being deleted need not sign the
+application does in fact cover an error being corrected
-reissue oath or declaration. The reissue oath or declaration
+in the divisional reissue application, no such rejection
-must be signed by the correct inventive entity.
+should be made. However, since a new invention is
-For example, a reissue application is filed to correct
+being added by the filing of the divisional reissue
-inventorship from inventors A, B, and C (listed as
+application, a supplemental reissue oath/declaration
-inventors on the patent) to inventors A and B. Inventor
+pursuant to 37 CFR 1.175 (b)(1) will be required. See
-C is being deleted as a named inventor. In such a
+MPEP § 1414.01.
-case, A and B are the correct inventors, and accordingly,
-inventors A and B must sign the reissue oath or
-declaration but inventor C need not sign the reissue
-oath or declaration.
-Drawings [R-2]
+Form paragraph 14.01.01 may be used where the
+reissue oath/declaration does not identify an error.
-CFR 1.173. Reissue specification, drawings, and
-amendments.
+¶ 14.01.01 Defective Reissue Oath/Declaration, 37 CFR
+.175(a)(1) - No Statement of a Specific Error
+The reissue oath/declaration filed with this application is
+defective because it fails to identify at least one error which is
+relied upon to support the reissue application. See 37 CFR
+.175(a)(1) and MPEP § 1414.
-(a)(2) Drawings. Applicant must submit a clean copy of each
+Examiner Note:
-drawing sheet of the printed patent at the time the reissue application
-is filed. If such copy complies with § 1.84, no further drawings
-will be required. Where a drawing of the reissue application
-is to include any changes relative to the patent being reissued, the
-changes to the drawing must be made in accordance with paragraph
-(b)(3) of this section. The Office will not transfer the drawings
-from the patent file to the reissue application.
+.Use this form paragraph when the reissue oath or declaration
+does not contain any statement of an error which is relied upon to
+support the reissue application.
+.This form paragraph can be used where the reissue oath or
+declaration does not even mention error. It can also can be used
+where the reissue oath or declaration contains some discussion of
+the concept of error but never in fact identifies a specific error to
+be relied upon. For example, it is not sufficient for an oath or declaration
+to merely state “this application is being filed to correct
+errors in the patent which may be noted from the changes made in
+the disclosure.”
-A clean copy (e.g., good quality photocopies free of
+.Form paragraph 14.14 must follow this form paragraph.
-any extraneous markings) of each drawing sheet of
-the printed patent must be supplied by the applicant at
-the time of filing of the reissue application. If the copies
-meet the requirements of 37 CFR 1.84, no further
-formal drawings will be required. New drawing sheets
-are not to be submitted, unless some change is made
-in the original patent drawings. Such changes must be
-made in accordance with 37 CFR 1.173(b)(3).
-The prior reissue practice of transferring drawings
+Where the reissue oath/declaration does identify an
-from the patent file has been eliminated, since clean
+error or errors, the oath/declaration must be checked
-photocopies of the printed patent drawings are acceptable
+carefully to ensure that at least one of the errors identified
-for use in the printing of the reissue patent.
+is indeed an “error” which will support the filing
+of a reissue, i.e., an “error” that will provide
+grounds for reissue of the patent. See MPEP § 1402.
+If the error identified in the oath/declaration is not an
+appropriate error upon which a reissue can be based,
+then the oath/declaration must be indicated to be
+defective in the examiner’s Office action.
-AMENDMENT OF DRAWINGS
+Form paragraphs 14.01.02 and 14.01.03 may be
+used where the reissue oath/declaration fails to provide
+at least one error upon which a reissue can be
+based.
-CFR 1.173. Reissue specification, drawings, and
+¶ 14.01.02 Defective Reissue Oath/Declaration, 37 CFR
-amendments.
+.175(a)(1)-The Identified “Error” Is Not Appropriate
+Error
+The reissue oath/declaration filed with this application is
+defective because the error which is relied upon to support the
+reissue application is not an error upon which a reissue can be
+based. See 37 CFR 1.175(a)(1) and MPEP § 1414.
+Examiner Note:
+.Use this form paragraph when the reissue oath/declaration
+identifies only one error which is relied upon to support the reissue
+application, and that one error is not an appropriate error upon
+which a reissue can be based.
+.Form paragraph 14.14 must follow this form paragraph.
+¶ 14.01.03 Defective Reissue Oath/Declaration, 37 CFR
+.175(a)(1) - Multiple Identified “Errors” Not Appropriate
+Errors
-(b)(3) Drawings. One or more patent drawings shall be
+The reissue oath/declaration filed with this application is
-amended in the following manner: Any changes to a patent drawing
+defective because none of the errors which are relied upon to support
-must be submitted as a replacement sheet of drawings which
+the reissue application are errors upon which a reissue can be
-shall be an attachment to the amendment document. Any replacement
+based. See 37 CFR 1.175(a)(1) and MPEP § 1414.
-sheet of drawings must be in compliance with § 1.84 and
-shall include all of the figures appearing on the original version of
-the sheet, even if only one figure is amended. Amended figures
-must be identified as “Amended,” and any added figure must be
-identified as “New.” In the event that a figure is canceled, the figure
-must be surrounded by brackets and identified as “Canceled.”
-All changes to the drawing(s) shall be explained, in detail, beginning
-on a separate sheet accompanying the papers including the
-amendment to the drawings.
+Examiner Note:
+.Use this form paragraph when the reissue oath/declaration
+identifies more than one error relied upon to support the reissue
+application, and none of the errors are appropriate errors upon
+which a reissue can be based.
-The provisions of 37 CFR
+.Note that if the reissue oath/declaration identifies more than
-.173(b)(3) govern the
+one error relied upon, and at least one of the errors is an error
-manner of making amendments (changes) to the
+upon which reissue can be based, this form paragraph should not
+be used, despite the additional reliance by applicant on “errors”
@@ Line 3,081: / Line 3,097: @@
-drawings in a reissue application. The following guidance
+which do not support the reissue. Only one appropriate error is
-is provided as to the procedure for amending
+needed to support a reissue.
-drawings:
+.Form paragraph 14.14 must follow this form paragraph.
-(A)Amending the original or printed patent drawing
+III.A STATEMENT THAT ALL ERRORS
-sheets by physically changing or altering them is
+WHICH ARE BEING CORRECTED IN
-not permitted. Any request to do so should be denied.
+THE REISSUE APPLICATION UP TO
+THE TIME OF SIGNING OF THE OATH/
+DECLARATION AROSE WITHOUT ANY
+DECEPTIVE INTENTION ON THE PART
+OF THE APPLICANT.
-(B)Where a change to the drawings is desired,
+In order to satisfy this requirement, the following
-applicant must submit a replacement sheet for each
+statement may be included in an oath or declaration:
-sheet of drawings containing a Figure to be revised.
-Any replacement sheet must comply with 37 CFR
-.84 and include all of the figures appearing on the
-original version of the sheet, even if only one figure is
-being amended. Each figure that is amended must be
-identified by placing the word “Amended” at the bottom
-of that figure. Any added figure must be identified
-as “New.” In the event that a figure is canceled,
-the figure must be identified as “Canceled” and also
-surrounded by brackets. All changes to the figure(s)
-must be explained, in detail, beginning on a separate
-sheet which accompanies the papers including the
-amendment to the drawings.
-(C)If desired, applicant may include a marked-up
+“All errors in the present reissue application up to the time
-copy of any amended drawing figure, including annotations
+of signing of this oath/declaration, or errors which are
-indicating the changes made. Such a marked-
+being corrected by a paper filed concurrently with this
-up copy must be clearly labeled as “Annotated
+oath/declaration which correction of errors I/we have
-Marked-up Drawings”, and it must be presented in the
+reviewed, arose without any deceptive intention on the
-amendment or remarks section that explains the
+part of the applicant.”
-change to the drawings.
-In addition, the examiner may desire a marked-up
+Nothing more is required. The examiner will determine
-copy of any amended drawing figure, and so state in
+only whether the reissue oath/declaration contains
-an Office action. A marked-up copy of any amended
+the required averment; the examiner will not
-drawing figure, including annotations indicating the
+make any comment as to whether it appears that there
-changes made, must be provided when required by the
+was in fact deceptive intention (see MPEP § 2022.05).
-examiner.
+It is noted that a reissue oath/declaration will not be
+effective for any errors which are corrected by a filing
+made after the execution of the reissue oath/declaration,
+unless it is clear from the record that the parties
+executing the document were aware of the nature of
+the correction when they executed the document. Further,
+a reissue oath/declaration with an early date of
+execution cannot be filed after a correction made later
+in time, to cover the correction made after the execution
+date. This is so, even if the reissue oath/declaration
+states that all errors up to the filing of the oath/
+declaration arose without any deceptive intention on
+the part of the applicant.
-(D)For each proper new drawing sheet being
+Form paragraph 14.01.04 may be used where the
-added, the new sheet should be inserted after the
+reissue oath/declaration does not provide the required
-existing drawing sheets. For each proper  drawing
+statement as to “without any deceptive intention on
-sheet being added which replaces an existing drawing
+the part of the applicant.”
-sheet, the existing sheet should be canceled by
-placing the sheet face down in the file and placing a
-large “X” on the back of the sheet. The new sheet
-should be inserted in place of the turned over existing
-sheet.
-(E)If any drawing change  is not  approved,
+¶ 14.01.04 Defective Reissue Oath/Declaration, 37 CFR
-or if any submitted sheet of formal drawings is not
+.175- Lack of Statement of “Without Any Deceptive
-entered, the examiner will so inform the reissue applicant
+Intention”
-in the next Office action, and the examiner will
-set forth the reasons for same.
-Content of Reissue Oath/Declaration
+The reissue oath/declaration filed with this application is
-[R-5]
+defective because it fails to contain a statement that all errors
+which are being corrected in the reissue application up to the time
+of filing of the oath/declaration arose without any deceptive intention
+on the part of the applicant. See 37 CFR 1.175 and MPEP §
+.
-CFR 1.175. Reissue oath or declaration.
+Examiner Note:
-(a)The reissue oath or declaration in addition to complying
+.Use this form paragraph when the reissue oath/declaration
-with the requirements of § 1.63, must also state that:
+does not contain the statement required by 37 CFR 1.175 that all
+errors being corrected in the reissue application arose without any
+deceptive intention on the part of the applicant.
-(1)The applicant believes the original patent to be wholly
+.This form paragraph is appropriate to use for a failure by
-or partly inoperative or invalid by reason of a defective specification
+applicant to comply with the requirement, as to any of 37 CFR
-or drawing, or by reason of the patentee claiming more or less
+.175(a)(2), 37 CFR 1.175(b)(1), or 37 CFR 1.175(b)(2).
-than the patentee had the right to claim in the patent, stating at
-least one error being relied upon as the basis for reissue; and
-(2)All errors being corrected in the reissue application up
+.Form paragraph 14.14 must follow.
-to the time of filing of the oath or declaration under this paragraph
-arose without any deceptive intention on the part of the applicant.
-(b)(1) For any error corrected, which is not covered by the
+IV.THE REISSUE OATH/DECLARATION
-oath or declaration submitted under paragraph (a) of this section,
+MUST COMPLY WITH 37 CFR 1.63.
-applicant must submit a supplemental oath or declaration stating
-that every such error arose without any deceptive intention on the
-part of the applicant. Any supplemental oath or declaration
-required by this paragraph must be submitted before allowance
-and may be submitted:
-(i) With any amendment prior to allowance; or
+The reissue oath/declaration must include the averments
+required by 37 CFR 1.63(a) and (b), e.g., that
+applicants for reissue
-(ii) In order to overcome a rejection under 35
+(A)have reviewed and understand the contents of
-U.S.C. 251
+the specification, including the claims, as amended by
-made by the examiner where it is indicated that the submission of
+any amendment specifically referred to in the oath/
-a supplemental oath or declaration as required by this paragraph
+declaration;
-will overcome the rejection.
-(2)For any error sought to be corrected after allowance, a
+(B)believe the named inventor or inventors to be
-supplemental oath or declaration must accompany the requested
+the original and the first inventor or inventors of the
-correction stating that the error(s) to be corrected arose without
+subject matter which is claimed and for which a
-any deceptive intention on the part of the applicant.
+patent is sought; and
-(c)Having once stated an error upon which the reissue is
+(C)acknowledge the duty to disclose to the
-based, as set forth in paragraph (a)(1), unless all errors previously
+Office all information known to the person to be
-stated in the oath or declaration are no longer being corrected, a
+material to patentability as defined in 37 CFR 1.56.
-subsequent oath or declaration under paragraph (b) of this section
+See also the discussion regarding the requirements of
-need not specifically identify any other error or errors being corrected.
+an oath/declaration beginning at MPEP § 602.
+The examiner should check carefully to ensure that
+all the requirements of 37 CFR 1.63 are met. Form
+paragraph 14.01.05 should be used in conjunction
+with the content of form paragraphs 6.05 through
+.05.20 as appropriate, where the reissue oath/declaration
+fails to comply with the requirements of 37
+CFR 1.63.
+¶ 14.01.05 Defective Reissue Oath/Declaration, 37 CFR
+.175 - General
-(d)The oath or declaration required by paragraph (a) of this
+The reissue oath/declaration filed with this application is
-section may be submitted under the provisions of § 1.53(f).
+defective (see 37 CFR 1.175 and MPEP § 1414) because of the
+following:
-(e)The filing of any continuing reissue application which
+Examiner Note:
-does not replace its parent reissue application must include an
-oath or declaration which, pursuant to paragraph (a)(1) of this section,
-identifies at least one error in the original patent which has
-not been corrected by the parent reissue application or an earlier
-reissue application. All other requirements relating to oaths or
-declarations must also be met.
-The reissue oath/declaration is an essential part of a
+.Use this form paragraph when the reissue oath/declaration
-reissue application and must be filed with the application,
+does not comply with 37 CFR 1.175, and none of form paragraphs
-or within the time period set under 37 CFR
+.01 - 14.01.04 or 14.05.02 apply.
-.53(f) along with the required surcharge as set forth
-in 37 CFR 1.16(f) in order to avoid abandonment.
-The question of the sufficiency of the reissue oath/
+.This form paragraph must be followed by an explanation of
-declaration filed under 37 CFR 1.175 must in each
+why the reissue oath/declaration is defective.
-case be reviewed and decided personally by the primary
-examiner.
@@ Line 3,209: / Line 3,220: @@
-Reissue oaths or declarations must contain the following:
+.Form paragraph 14.14 must follow the explanation of the
+defect.
+See MPEP § 1414.01 for a discussion of the
+requirements for a supplemental reissue oath/declaration.
-(A)A statement that the applicant believes the
+ Depending on the circumstances, either form PTO/
-original patent to be wholly or partly inoperative or
+SB/51, Reissue Application Declaration By The
-invalid—
+Inventor, or form PTO/SB/52, Reissue Application
+Declaration By The Assignee may be used to prepare
+a declaration in a reissue application.
-(1)by reason of a defective specification or
-drawing, or
-(2)by reason of the patentee claiming more or
-less than patentee had the right to claim in the patent;
-(B)A statement of at least one error which is
-relied upon to support the reissue application, i.e., as
-the basis for the reissue;
-(C)A statement that all errors which are being
-corrected in the reissue application up to the time of
-filing of the oath/declaration arose without any deceptive
-intention on the part of the applicant; and
-(D)The information required by 37 CFR 1.63.
-These elements will now be discussed:
+Reissue Application Declaration by the Inventor
-I.A STATEMENT THAT THE APPLICANT
-BELIEVES THE ORIGINAL PATENT TO
-BE WHOLLY OR PARTLY INOPERATIVE
-OR INVALID BY REASON OF A DEFECTIVE
-SPECIFICATION OR DRAWING,
-OR BY REASON OF THE PATENTEE
-CLAIMING MORE OR LESS THAN PATENTEE
-HAD THE RIGHT TO CLAIM IN
-THE PATENT.
-In order to satisfy this requirement, a declaration
-can state as for example:
-. “Applicant believes the original patent to be
-partly inoperative or invalid by reason of a defective
-specification or drawing.”
+Reissue Application Declaration by the Inventor (page 2)
-. “Applicant believes the original patent to be
-partly inoperative or invalid by reason of the patentee
-claiming more than patentee had a right to claim in
-the patent.”
-. “Applicant believes the original patent to be
-partly inoperative or invalid by reason of the patentee
-claiming less than patentee had a right to claim in the
-patent.”
-Where the specification or drawing is defective andpatentee claimed both more and less than patentee had
+Privacy Act Statment
-the right to claim in the patent, then all three statements
-should be included in the reissue oath/declaration.
-A statement that the original patent is “wholly
-or partly inoperative or invalid” (emphasis added) by
-reason of the patentee “claiming more or less than the
-patentee had the right to claim in the patent” (emphasis
-added) is improper since a claim cannot claim
-“more or less” at the same time. Where, however, a
-given independent claim is considered to be overly
-broad, and another independent claim is considered to
-be overly narrow, patentee has claimed both more andless than he or she had a right to claim. In such an
-instance, both the second and third above-quoted
-statements would be used. See MPEP § 1412.04 for
-an exemplary declaration statement when the error
-being corrected is an error in inventorship.
-The above examples will be sufficient to satisfy this
-requirement without any further statement.
-It should be noted that the reissue oath/declaration
-must also satisfy the requirement for a statement of at
-least one error being relied upon as the basis for reissue,
-in the manner set forth in subsection II. below.
-Form paragraph 14.01 may be used where the reissue
-oath/declaration does not provide the required
-statement as to applicant’s belief that the original
-patent is wholly or partly inoperative or invalid.
-¶ 14.01 Defective Reissue Oath/Declaration, 37 CFR
-.175(a)(1) - No Statement of Defect in the Patent
-The reissue oath/declaration filed with this application is
-defective because it fails to contain the statement required under
-CFR 1.175(a)(1) as to applicant’s belief that the original patent
-is wholly or partly inoperative or invalid. See 37 CFR 1.175(a)(1)
-and see MPEP §
-. [1]
-Examiner Note:
+Reissue Application Declaration by the Assognee
-.Use this form paragraph when applicant: (a) fails to allege
-that the original patent is inoperative or invalid and/or (b) fails to
-state the reason of a defective specification or drawing, or of patentee
-claiming more or less than patentee had the right to claim in
-the patent . In bracket 1, point out the specific defect to applicant
-by using the language of (a) and/or (b), as it is appropriate.
-.Form paragraph 14.14 must follow this form paragraph.
-II.A STATEMENT OF AT LEAST ONE ERROR
+Reissue Application Declaration by the Assognee (page 2)
-WHICH IS RELIED UPON TO SUPPORT
-THE REISSUE APPLICATION (I.E.,
-THE BASIS FOR THE REISSUE).
-(A)A reissue applicant must acknowledge the
-existence of an error in the specification, drawings, or
-claims, which error causes the original patent to be
@@ Line 3,334: / Line 3,280: @@
-defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369
+Privacy Act Statment
-(Fed. Cir. 1984). A change or departure from the original
-specification or claims represents an “error” in
-the original patent under 35 U.S.C. 251. See MPEP
-§
-for a discussion of grounds for filing a reissue
-that may constitute the “error” required by 35 U.S.C.
-. Not all changes with respect to the patent constitute
-the “error” required by 35 U.S.C. 251.
-(B)Applicant need only specify in the reissue
-oath/declaration one of the errors upon which reissue
-is based. Where applicant specifies one such error,
-this requirement of a reissue oath/declaration is satisfied.
-Applicant may specify more than one error.
-Where more than one error is specified in the
-oath/declaration and some of the designated “errors”
-are found to not be “errors” under 35 U.S.C. 251, any
-remaining error which is an error under 35 U.S.C. 251will still support the reissue.
-The “at least one error” which is relied upon to
+.01Supplemental Reissue Oath/
-support the reissue application must be set forth in the
+Declaration [R-5]
-oath/declaration. It is not necessary, however, to point
-out how (or when) the error arose or occurred. Further,
+If additional defects or errors are corrected in the
-it is not necessary to point out how (or when) the
+reissue after the filing of the application and the original
-error was discovered. If an applicant chooses to point
+reissue oath or declaration, a supplemental reissue
-out these matters, the statements directed to these
+oath/declaration must be filed, unless all additional
-matters will not be reviewed by the examiner, and the
+errors corrected are spelling, grammar, typographical,
-applicant should be so informed in the next Office
+editorial or clerical errors which are not errors under
-action. All that is needed for the oath/declaration
+U.S.C. 251 (see MPEP § 1402). In other words, a
-statement as to error is the identification of “at least
+supplemental oath/declaration is required where any
-one error” relied upon.
+“error” under 35 U.S.C. 251 has been corrected and
+the error was not identified in the original reissue
+oath/declaration.
-In identifying the error, it is sufficient that the
+ The supplemental reissue oath/declaration must
-reissue oath/declaration identify a single word,
+state that every error which was corrected in the reissue
-phrase, or expression in the specification or in an original
+application not covered by the prior oath(s)/declaration(
-claim, and how it renders the original patent
+s) submitted in the application arose without
-wholly or partly inoperative or invalid. The corresponding
+any deceptive intention on the part of the applicant.
-corrective action which has been taken to
-correct the original patent need not be identified in the
-oath/declaration. If the initial reissue oath/declaration
-“states at least one error” in the original patent, and, in
-addition, recites the specific corrective action taken in
-the reissue application, the oath/declaration would be
-considered acceptable, even though the corrective
-action statement is not required.
-(C)It is not sufficient for an oath/declaration to
+An example of acceptable language is as follows:
-merely state “this application is being filed to correct
-errors in the patent which may be noted from the
-changes made in the disclosure.” Rather, the oath/declaration
-must specifically identify an error. In addition,
-it is not sufficient to merely reproduce the claims
-with brackets and underlining and state that such will
-identify the error. See In re Constant, 827 F.2d 728,
-, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484
-U.S. 894 (1987). Any error in the claims must be
-identified by reference to the specific claim(s) and the
-specific claim language wherein lies the error.
-A statement of “…failure to include a claim
+“Every error in the patent which was corrected in the
-directed to…” and then presenting a newly added
+present reissue application, and is not covered by the prior
-claim, would not be considered a sufficient “error”
+declaration submitted in this application, arose without
-statement since applicant has not pointed out what the
+any deceptive intention on the part of the applicant.”
-other claims lacked that the newly added claim has, or
-vice versa. Such a statement would be no better than
-saying in the reissue oath or declaration that “this
-application is being filed to correct errors in the patent
-which may be noted from the change made by adding
-new claim 10.” In both cases, the error has not been
-identified.
-(D)Where a continuation reissue application is
+A supplemental reissue oath/declaration will not be
-filed with a copy of the reissue oath/declaration from
+effective for any errors which are corrected by a filing
-the parent reissue application, and the parent reissue
+made after the execution of the supplemental reissue
-application is not to be abandoned, the reissue oath/
+oath/declaration, unless it is clear from the record that
-declaration should be accepted by the Office of Initial
+the parties executing the document were aware of the
-Patent Examination without further evaluation, since
+nature of the correction when they executed the document.
-it is an oath/declaration, albeit improper under
+Further, a supplemental reissue oath/declaration
+with an early date of execution cannot be filed after a
-U.S.C. 251. The examiner should, however, reject
+correction made later in time, to cover the correction
-the claims of the continuation reissue application
+made after the execution date. This is so, even if the
-under 35 U.S.C. 251 as being based on an oath/declaration
+supplemental reissue oath/declaration states that all
-that does not identify an error being corrected
+errors up to the filing of the supplemental reissue
-by the continuation reissue application, and should
+oath/declaration oath or declaration arose without
-require a new oath/declaration. 37 CFR 1.175(e)
+any deceptive intention on the part of the applicant.
-states that “the filing of any continuing reissue application
-which does not replace its parent reissue application
-must include an oath or declaration, which
-pursuant to [37 CFR 1.175(a)(1)], identifies at least
-one error in the original patent which has not been
-corrected by the parent reissue application or an earlier
-reissue application.” One of form paragraphs
-.01.01 through 14.01.03 may be used.
-Where a continuation reissue application is filed
-with a copy of the reissue oath/declaration from the
-parent reissue application, and the parent reissue
+Form PTO/SB/51S, “Supplemental Declaration For
-application is, or will be abandoned, the copy of the
+Reissue Patent Application To Correct ‘Errors’ Statement
-reissue oath/declaration should be accepted by OIPE,
+(37 CFR 1.175),” may be used to prepare a supplemental
-and the examiner should check to ensure that the oath/
+reissue declaration. Form PTO/SB/51S
-declaration identifies an error which is still being corrected
+serves to indicate that every error in the patent that
-in the continuation application. If a preliminary
+was corrected in the reissue application, but was not
-amendment was filed with the continuation reissue
+covered by a prior reissue oath/declaration submitted
+in the reissue application, arose without any deceptive
+intention on the part of the applicant.
+In the event that the applicant for a reissue applicant
+is required to file a supplemental reissue oath/
+declaration that also includes a specific statement of
+the error being corrected by reissue in accordance
+with 37 CFR 1.175(c), as discussed in subsection I.
+below, applicant must also include in the supplemental
+declaration language equivalent to the “Every error
+…” language in the example of acceptable language
+set forth above. Therefore, if either form PTO/SB/51,
+“Reissue Application Declaration By The Inventor,”
+or form PTO/SB/52, “Declaration By The Assignee”
+(see MPEP § 1414) is used for the purpose of filing
+such supplemental reissue oath/declaration, the form
+must be completed so that it is clear that the supplemental
+reissue oath/declaration addresses all errors
+corrected subsequent to the date upon which the last
+previously reissue oath/declaration (whether original
+or supplemental) was filed. For example, the form
+could be completed by specifying the date upon
+which the reissue application was originally filed, the
+reissue application number, and the date(s) of every
+amendment filed subsequent to the date upon which
+the last reissue oath/declaration (whether original or
+supplemental) was filed. Any manner of completing
+the form so that affiant/declarant unambiguously
+states that every error corrected subsequent to the filing
+of the last filed reissue oath/declaration (whether
+original or supplemental) arose without deceptive
+intent will be acceptable. It will not be acceptable for
+the new (“catch-up”) oath/declaration to simply refer
+to the reissue application as filed, even though the
+new oath/declaration may be submitted after an
+amendment.
+I.WHEN AN ERROR MUST BE STATED IN
+THE SUPPLEMENTAL OATH/
+DECLARATION
+In the supplemental reissue oath/declaration, there
+is no need to state an error which is relied upon to
+support the reissue application if:
+(A)an error to support a reissue has been previously
+and properly stated in a reissue oath/declaration
+in the application; and
+(B)that error is still being corrected in the reissue
+application.
@@ Line 3,446: / Line 3,399: @@
-application, the examiner should check for the need of
+If applicant chooses to state any further error at this
-a supplemental reissue oath/declaration. Pursuant to
+point (even though such is not needed), the examiner
-CFR 1.175 (b)(1), for any error corrected via the
+should not review the statement of the further error.
-preliminary amendment which is not covered by the
-oath or declaration submitted in the parent reissue
-application, applicant must submit a supplemental
-oath/declaration stating that such error arose without
-any deceptive intention on the part of the applicant.
-See MPEP § 1414.01.
-Where a divisional reissue application is filed
+The supplemental reissue oath/declaration muststate an error which is relied upon to support the reissue
-with a copy of the reissue oath/declaration from
+application only where one of the following is
-the
+true:
-parent reissue application, the reissue oath/declaration
-should be accepted by OIPE, since it is an oath/
-declaration, though it may be improper under
-U.S.C. 251. The examiner should check the copy
-of the oath/declaration to ensure that it identifies an
-error being corrected by the divisional reissue application.
-The copy of the oath/declaration from the parent
-reissue application may or may not cover an error
-being corrected by the divisional reissue application
-since the divisional reissue application is (by definition)
-directed to a new invention. If it does not, the
-examiner should reject the claims of the divisional
-reissue application under 35 U.S.C. 251 as being
-based on an oath/declaration that does not identify an
-error being corrected by the divisional reissue application,
-and require a new oath/declaration. If the copy of
-the reissue oath/declaration from the parent reissue
-application does in fact cover an error being corrected
-in the divisional reissue application, no such rejection
-should be made. However, since a new invention is
-being added by the filing of the divisional reissue
-application, a supplemental reissue oath/declaration
-pursuant to 37 CFR 1.175 (b)(1) will be required. See
-MPEP § 1414.01.
-Form paragraph 14.01.01 may be used where the
+(A)the prior reissue oath/declaration failed to
-reissue oath/declaration does not identify an error.
+state an error;
-¶ 14.01.01 Defective Reissue Oath/Declaration, 37 CFR
+(B)the prior reissue oath/declaration attempted to
-.175(a)(1) - No Statement of a Specific Error
+state an error but did not do so properly; or
-The reissue oath/declaration filed with this application is
+(C)all errors under 35 U.S.C. 251 stated in the
-defective because it fails to identify at least one error which is
+prior reissue oath(s)/declaration(s) are no longer being
-relied upon to support the reissue application. See 37 CFR
+corrected in the reissue application.
-.175(a)(1) and MPEP § 1414.
-Examiner Note:
+II.WHEN A SUPPLEMENTAL OATH/DE-
+CLARATION MUST BE SUBMITTED
-.Use this form paragraph when the reissue oath or declaration
+The supplemental oath/declaration in accordance
-does not contain any statement of an error which is relied upon to
+with 37 CFR 1.175(b)(1) must be submitted before
-support the reissue application.
+allowance. See MPEP § 1444 for a discussion of the
+action to be taken by the examiner to obtain the supplemental
+oath/declaration in accordance with 37
+CFR 1.175(b)(1), where such is needed.
-.This form paragraph can be used where the reissue oath or
+Where applicant seeks to correct an error after
-declaration does not even mention error. It can also can be used
+allowance of the reissue application, a supplemental
-where the reissue oath or declaration contains some discussion of
+reissue oath/declaration must accompany the
-the concept of error but never in fact identifies a specific error to
+requested correction stating that the error(s) to be corrected
-be relied upon. For example, it is not sufficient for an oath or declaration
+arose without any deceptive intention on the
-to merely state “this application is being filed to correct
+part of the applicant. The supplemental reissue oath/
-errors in the patent which may be noted from the changes made in
+declaration submitted after allowance will be directed
-the disclosure.”
+to the error applicant seeks to correct after allowance.
+This supplemental oath/declaration need not cover
+any earlier errors, since all earlier errors should have
+been covered by a reissue oath/declaration submitted
+prior to allowance.
-.Form paragraph 14.14 must follow this form paragraph.
+III.SUPPLEMENTAL OATH/DECLARA-
+TION IN BROADENING REISSUE
-Where the reissue oath/declaration does identify an
+A broadening reissue application must be applied
-error or errors, the oath/declaration must be checked
+for by all of the inventors (patentees), that is, the original
-carefully to ensure that at least one of the errors identified
+reissue oath/declaration must be signed by all of
-is indeed an “error” which will support the filing
+the inventors. See MPEP § 1414. If a supplemental
-of a reissue, i.e., an “error” that will provide
+oath/declaration in a broadening reissue application is
-grounds for reissue of the patent. See MPEP § 1402.
+subsequently needed in the application in order to fulfill
-If the error identified in the oath/declaration is not an
+the requirements of 37 CFR 1.175, the supplemental
-appropriate error upon which a reissue can be based,
+reissue oath/declaration must be signed by all of
-then the oath/declaration must be indicated to be
+the inventors. In re Hayes, 53 USPQ2d 1222, 1224
-defective in the examiner’s Office action.
+(Comm’r Pat. 1999) (“37 CFR 1.175(b)(1), taken in
+conjunction with Section 1.172, requires a supplemental
+declaration be signed by all of the inventors.
+This is because all oaths or declarations necessary to
+fulfill the rule requirements in a reissue application
+are taken together collectively as a single oath or declaration.
+Thus, each oath and declaration must bear
+the appropriate signatures of all the inventors.”).
-Form paragraphs 14.01.02 and 14.01.03 may be
+ If a joint inventor refuses or cannot be found or
-used where the reissue oath/declaration fails to provide
+reached to sign a supplemental oath/declaration, a
-at least one error upon which a reissue can be
+supplemental oath/declaration listing all the inventors,
-based.
+and signed by all the available inventors may be filed
+provided it is accompanied by a petition under 37
+CFR 1.183 along with the petition fee, requesting
+waiver of the signature requirement of the nonsigning
+inventor.
-¶ 14.01.02 Defective Reissue Oath/Declaration, 37 CFR
-.175(a)(1)-The Identified “Error” Is Not Appropriate
-Error
-The reissue oath/declaration filed with this application is
-defective because the error which is relied upon to support the
-reissue application is not an error upon which a reissue can be
-based. See 37 CFR 1.175(a)(1) and MPEP § 1414.
-Examiner Note:
-.Use this form paragraph when the reissue oath/declaration
-identifies only one error which is relied upon to support the reissue
-application, and that one error is not an appropriate error upon
-which a reissue can be based.
-.Form paragraph 14.14 must follow this form paragraph.
-¶ 14.01.03 Defective Reissue Oath/Declaration, 37 CFR
-.175(a)(1) - Multiple Identified “Errors” Not Appropriate
-Errors
-The reissue oath/declaration filed with this application is
-defective because none of the errors which are relied upon to support
-the reissue application are errors upon which a reissue can be
-based. See 37 CFR 1.175(a)(1) and MPEP § 1414.
-Examiner Note:
-.Use this form paragraph when the reissue oath/declaration
-identifies more than one error relied upon to support the reissue
-application, and none of the errors are appropriate errors upon
-which a reissue can be based.
-.Note that if the reissue oath/declaration identifies more than
-one error relied upon, and at least one of the errors is an error
-upon which reissue can be based, this form paragraph should not
-be used, despite the additional reliance by applicant on “errors”
@@ Line 3,573: / Line 3,477: @@
-which do not support the reissue. Only one appropriate error is
-needed to support a reissue.
-.Form paragraph 14.14 must follow this form paragraph.
-III.A STATEMENT THAT ALL ERRORS
+SUPPLEMENTAL DECLARATION FOR REISSUE PATENT APPLICATION TO CORRECT “ERRORS” STATEMENT (37 CFR 1.175)
-WHICH ARE BEING CORRECTED IN
+PTO/SB/51S (09-04)
-THE REISSUE APPLICATION UP TO
+Approved for use through 04/30/2007. OMB 0651-0033
-THE TIME OF SIGNING OF THE OATH/
+U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
-DECLARATION AROSE WITHOUT ANY
+Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
-DECEPTIVE INTENTION ON THE PART
+Attorney Docket Number
-OF THE APPLICANT.
+First Named Inventor
+COMPLETE if known
-In order to satisfy this requirement, the following
+Application Number
-statement may be included in an oath or declaration:
+Filing Date
+Art Unit
-“All errors in the present reissue application up to the time
+SUPPLEMENTAL DECLARATION
-of signing of this oath/declaration, or errors which are
+FOR REISSUE
-being corrected by a paper filed concurrently with this
+PATENT APPLICATION
-oath/declaration which correction of errors I/we have
+TO CORRECT “ERRORS” STATEMENT
-reviewed, arose without any deceptive intention on the
+(37 CFR 1.175)
-part of the applicant.”
+Examiner Name
+I/We hereby declare that:
+Every error in the patent which was corrected in the present reissue application, and which is not covered by the
+prior oath(s) and/or declaration(s) submitted in this application, arose without any deceptive intention on the part of
+the applicant.
+I/We hereby declare that all statements made herein of my/our own knowledge are true and that all statements made
+on information and belief are believed to be true; and further that these statements were made with the knowledge
+that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C.
+and that such willful false statements may jeopardize the validity of the application or any patent issued
+thereon.
+Name of Sole or First Inventor: A petition has been filed for this unsigned inventor
+Given Name (first and middle [if any]) Family Name or Surname
+Inventor’s
+SignatureDate
+Name of Second Inventor: A petition has been filed for this unsigned inventor
+Given Name (first and middle [if any]) Family Name or Surname
+Inventor’s
+SignatureDate
+Name of Third Inventor: A petition has been filed for this unsigned inventor
+Given Name (first and middle [if any]) Family Name or Surname
+Inventor’s
+SignatureDate
+Name of Fourth Inventor: A petition has been filed for this unsigned inventor
+Given Name (first and middle [if any]) Family Name or SurnameInventor’s
+SignatureDate
+Additional inventors or legal representatives(s) are being named on the __________ supplemental sheets PTO/SB/02A or 02LR attached hereto.
+This collection of information is required by 37 CFR 1.175. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
+to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1.8 minutes to complete,
+including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
+the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
+Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
+ADDRESS. SEND TO:Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
+If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
+Doc Code:
-Nothing more is required. The examiner will determine
-only whether the reissue oath/declaration contains
-the required averment; the examiner will not
-make any comment as to whether it appears that there
-was in fact deceptive intention (see MPEP § 2022.05).
-It is noted that a reissue oath/declaration will not be
-effective for any errors which are corrected by a filing
-made after the execution of the reissue oath/declaration,
-unless it is clear from the record that the parties
-executing the document were aware of the nature of
-the correction when they executed the document. Further,
-a reissue oath/declaration with an early date of
-execution cannot be filed after a correction made later
-in time, to cover the correction made after the execution
-date. This is so, even if the reissue oath/declaration
-states that all errors up to the filing of the oath/
-declaration arose without any deceptive intention on
-the part of the applicant.
-Form paragraph 14.01.04 may be used where the
-reissue oath/declaration does not provide the required
-statement as to “without any deceptive intention on
-the part of the applicant.”
-¶ 14.01.04 Defective Reissue Oath/Declaration, 37 CFR
-.175- Lack of Statement of “Without Any Deceptive
-Intention”
-The reissue oath/declaration filed with this application is
-defective because it fails to contain a statement that all errors
-which are being corrected in the reissue application up to the time
-of filing of the oath/declaration arose without any deceptive intention
-on the part of the applicant. See 37 CFR 1.175 and MPEP §
-.
-Examiner Note:
-.Use this form paragraph when the reissue oath/declaration
-does not contain the statement required by 37 CFR 1.175 that all
-errors being corrected in the reissue application arose without any
-deceptive intention on the part of the applicant.
-.This form paragraph is appropriate to use for a failure by
+==1415 Reissue Application and Issue Fees==
-applicant to comply with the requirement, as to any of 37 CFR
-.175(a)(2), 37 CFR 1.175(b)(1), or 37 CFR 1.175(b)(2).
-.Form paragraph 14.14 must follow.
+I.BASIC REISSUE APPLICATION FILING,
+SEARCH, AND EXAMINATION FEES
-IV.THE REISSUE OATH/DECLARATION
+The Consolidated Appropriations Act, 2005 (Consolidated
-MUST COMPLY WITH 37 CFR 1.63.
+Appropriations Act), effective December 8,
+, provides for a separate reissue application filing
+fee, search fee, and examination fee during fiscal
+years 2005 and 2006. For reissue applications filed on
+or after December 8, 2004, the following fees are
+required: basic filing fee as set forth in 37 CFR
+.16(e)(1); search fee as set forth in 37 CFR 1.16(n);
+examination fee as set forth in 37 CFR 1.16(r); application
+size fee, if applicable (see subsection II.
+below); and excess claims fees, if applicable (see subsection
+III. below).
-The reissue oath/declaration must include the averments
+For reissue applications filed prior to December 8,
-required by 37 CFR 1.63(a) and (b), e.g., that
+, the following fees are required: basic filing fee
-applicants for reissue
+as set forth in 37 CFR 1.16(e)(2); and excess claims
+fees, if applicable (see subsection III below). No
+search and examination fees are required for reissue
+applications filed before December 8, 2004.
-(A)have reviewed and understand the contents of
+The basic filing, search and examination fees are
-the specification, including the claims, as amended by
+due on filing of the reissue application. These fees
-any amendment specifically referred to in the oath/
+may be paid on a date later than the filing date of the
-declaration;
+reissue application provided they are paid within the
+time period set forth in 37 CFR 1.53(f) and include
-(B)believe the named inventor or inventors to be
+the surcharge set forth in 37 CFR 1.16(f). For reissue
-the original and the first inventor or inventors of the
+applications filed on or after December 8, 2004 but
-subject matter which is claimed and for which a
+prior to July 1, 2005, which have been accorded a filing
-patent is sought; and
+date under 37 CFR 1.53(b), if the search and/or
+examination fees are paid on a date later than the filing
+date of the reissue application, the surcharge
+under 37 CFR 1.16(f) is not required. For reissue
+applications filed on or after July 1, 2005, which have
+been accorded a filing date under 37 CFR 1.53(b), if
+any of the basic filing fee, the search fee, or the examination
+fee are paid on a date later than the filing date
+of the reissue application, the surcharge under 37 CFR
+.16(f) is required.
-(C)acknowledge the duty to disclose to the
+For reissue applications filed on or after December
-Office all information known to the person to be
+, 2004, in which a petition under 37 CFR
-material to patentability as defined in 37 CFR 1.56.
+.138(d) to expressly abandon the application was
-See also the discussion regarding the requirements of
+filed on or after March 10, 2006, applicant may file a
-an oath/declaration beginning at MPEP § 602.
+request for refund of the search fee and excess claims
+fee paid in the application. See MPEP § 711.01.
-The examiner should check carefully to ensure that
+II.APPLICATION SIZE FEE
-all the requirements of 37 CFR 1.63 are met. Form
-paragraph 14.01.05 should be used in conjunction
-with the content of form paragraphs 6.05 through
-.05.20 as appropriate, where the reissue oath/declaration
-fails to comply with the requirements of 37
-CFR 1.63.
-¶ 14.01.05 Defective Reissue Oath/Declaration, 37 CFR
+The Consolidated Appropriations Act also provides
-.175 - General
+for an application size fee. 37 CFR 1.16(s) sets forth
+the application size fee for reissue applications filed
+on or after December 8, 2004, the specification and
+drawings of which, excluding a sequence listing or
+computer program listing filed in an electronic
+medium in compliance with the rules (see 37 CFR
+.52(f)), exceed 100 sheets of paper. The application
+size fee does not apply to reissue applications filed
+before December 8, 2004. The application size fee
+applies for each additional 50 sheets or fraction
+thereof over 100 sheets of paper. Any sequence listing
+in an electronic medium in compliance with 37 CFR
+.52(e) and 37 CFR 1.821(c) or (e), and any computer
+program listing filed in an electronic medium in compliance
+with 37 CFR 1.52(e) and 1.96, will be
+excluded when determining the application size fee
+required by 37 CFR 1.16(s). See also MPEP § 607.
-The reissue oath/declaration filed with this application is
+III.EXCESS CLAIMS FEES
-defective (see 37 CFR 1.175 and MPEP § 1414) because of the
-following:
-Examiner Note:
+CFR 1.16(h) sets forth the excess claims fee for
+each independent claim in excess of three. 37 CFR
-.Use this form paragraph when the reissue oath/declaration
+.16(i) sets forth the excess claims fee for each claim
-does not comply with 37 CFR 1.175, and none of form paragraphs
+(whether independent or dependent) in excess of
-.01 - 14.01.04 or 14.05.02 apply.
+twenty. The access claims fees specified in 37 CFR
+.16(h) and (i) apply to all reissue applications pending
+on or after December 8, 2004. The excess claims
+fees specified in 37 CFR 1.16(h) and (i) apply to any
+excess claims fee paid on or after December 8, 2004,
+regardless of the filing date of the reissue application
+and regardless of the date on which the claim necessitating
+the excess claims fee payment was added to the
+reissue application.
-.This form paragraph must be followed by an explanation of
+For reissue applications filed on or after December
-why the reissue oath/declaration is defective.
+, 2004, in which a petition under 37 CFR
+.138(d) to expressly abandon the application was
+filed on or after March 10, 2006, applicant may file a
+request for refund of the search fee and excess claims
+fee paid in the application. See MPEP § 711.01.
+Under 35 U.S.C. 41(a)(2) as amended by the Consolidated
+Appropriations Act, the claims in the original
+patent are not taken into account in determining
+the excess claims fee for a reissue application.
+Example 1:
+Applicant filed a reissue application before
+December 8, 2004, with the same number of
-.Form paragraph 14.14 must follow the explanation of the
-defect.
-See MPEP § 1414.01 for a discussion of the
-requirements for a supplemental reissue oath/declaration.
- Depending on the circumstances, either form PTO/
-SB/51, Reissue Application Declaration By The
-Inventor, or form PTO/SB/52, Reissue Application
-Declaration By The Assignee may be used to prepare
-a declaration in a reissue application.
@@ Line 3,714: / Line 3,648: @@
+claims as in the patent. The patent has more than 3
+independent claims and more than 20 total claims.
+If applicant added one more independent claim in
+the reissue application by filing an amendment
+before December 8, 2004, but did not pay for the
+excess claims fees prior to December 8, 2004, on
+or after December 8, 2004, applicant will have to
+pay for one additional independent claim per the
+fee set forth in 37 CFR 1.16(h) and one additional
+total claim per the fee set forth in 37 CFR 1.16(i).
+Example 2:
-Reissue Application Declaration by the Inventor
+Applicant filed a reissue application on or after
+December 8, 2004, with the same number of
+claims as in the patent. The patent has 4 independent
+claims and 21 total claims. Excess claims fees
+for the 4th independent claim (one additional independent
+claim per the fee set forth in 37 CFR
+.16(h)) and the 21st claim (one additional total
+claim per the fee set forth in 37 CFR 1.16(i)) are
+required. Under 35 U.S.C. 41(a)(2) as amended by
+the Consolidated Appropriations Act, the claims in
+the original patent are not taken into account in
+determining the excess claims fees for a reissue
+application.
+The excess claims fees, if any, due with an amendment
+are required prior to any consideration of the
+amendment by the examiner. Upon submission of an
+amendment (whether entered or not) affecting the
+claims, payment of fees for those claims in excess of
+the number previously paid for is required. The additional
+fees, if any, due with an amendment are calculated
+on the basis of the claims (total and
+independent) which would be present, if the amendment
+were entered. If an amendment is limited to
+revising the existing claims and it does not result in
+the addition of any new claim, there is no excess
+claim fee. Excess claims fees apply only to the addition
+of claims. It is to be noted that where excess
+claims fees have been previously paid, a later amendment
+affecting the claims cannot serve as the basis for
+granting any refund. See 37 CFR 1.26(a).
+Amendments filed before a first Office action, or
+otherwise not filed in reply to an Office action, presenting
+additional claims in excess of the number
+already paid for, not accompanied by the full additional
+claims fee due, will not be entered in whole or
+in part and applicant will be so notified. Such amendments
+filed in reply to an Office action will be
+regarded as being non-responsive to the Office action
+and the practice set forth in MPEP § 714.03 will be
+followed.
-Reissue Application Declaration by the Inventor (page 2)
+An amendment canceling claims accompanying the
+papers constituting the reissue application will be
+effective to diminish the number of claims to be considered
+in calculating the filing fees to be paid. A preliminary
+amendment filed concurrently with a reply to
+a Notice To File Missing Parts of Application that
+required the filing fees, which preliminary amendment
+cancels or adds claims, will be taken into
+account in determining the appropriate filing fees due
+in response to the Notice To File Missing Parts of
+Application. However, no refund will be made for
+claims being canceled in the reply that have already
+been paid for.
+After a requirement for restriction, non-elected
+claims will be included in determining the fees due in
+connection with a subsequent amendment unless such
+claims are canceled.
+IV.ISSUE FEE
+The issue fee for issuing each reissue patent is set
+forth in 37 CFR 1.18(a).
+V.REISSUE APPLICATION FEE TRANS-
+MITTAL FORM
+The Office has prepared Form PTO/SB/56, Reissue
+Application Fee Transmittal Form which is designed
-Privacy Act Statment
+to assist in the correct calculation of reissue filing
+fees.
@@ Line 3,740: / Line 3,741: @@
-Reissue Application Declaration by the Assognee
+Reissue Application Fee Transmittal Form
@@ Line 3,748: / Line 3,749: @@
-Reissue Application Declaration by the Assognee (page 2)
+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:
+. 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.
+. 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.
+. 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.
+. 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).
+. 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.
+. 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)).
+. 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.
+. 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.
+. 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.
@@ Line 3,756: / Line 3,806: @@
-Privacy Act Statment
+.01Maintenance Fees on the Original
+Patent [R-5]
+The filing of a reissue application does not alter the
+schedule of payments of maintenance fees on the
+original patent. If maintenance fees have not been
+paid on the original patent as required by 35 U.S.C.
+(b) and 37 CFR 1.20, and the patent has expired, no
+reissue patent can be granted. 35 U.S.C. 251, first
+paragraph, only authorizes the granting of a reissue
+patent for the unexpired term of the original patent.
+Once a patent has expired, the Director of the USPTO
+no longer has the authority under 35 U.S.C. 251 to
+reissue the patent. See In re Morgan, 990 F.2d 1230,
+USPQ2d 1392 (Fed. Cir. 1993).
+The examiner should determine whether all
+required maintenance fees have been paid prior to
+conducting an examination of a reissue application. In
+addition, during the process of preparing the reissue
+application for issue, the examiner should again determine
+whether all required maintenance fees have been
+paid up to date.
+The history of maintenance fees is determined by
+the following, all of which should be used (to provide
+a check on the search made):
+(A)Go to the USPTO Intranet (http://ptoweb/ptointranet/
+index.htm) and select the PALM screen, then
+the “General Information” screen, type in the patent
+number and then select the “Fees” screen.
+(B)Go to the USPTO Intranet and then the “Revenue
+Accounting and Management” screen, then the
+“File History” screen. Then type in the patent number.
+(C)Go to the USPTO Internet Site (http://
+www.uspto.gov) and select “eBusiness”, then the
+“Patent Electronic Business Center” screen, then the
+“Patent Application Information Retrieval (PAIR)”
+screen (http://pair.uspto.gov/cgi-bin/final/home.pl),
+and type in the patent number and select the “view
+Maint. Statement” screen.
+If the window for the maintenance fee due has
+closed (maintenance fees are due by the day of the
+th, 8th and 12th year anniversary of the grant of the
+patent), but the maintenance fee has not been paid,
+the Office of Patent Legal Administration (OPLA)
+should be contacted by the Technology Center
+(TC) Special Program Examiner (SPRE) for instructions
+as to what appropriate action to take.
+PAYMENT OF MAINTENANCE FEES WHERE
+THE PATENT HAS BEEN REISSUED
-.01Supplemental Reissue Oath/
+Pursuant to 37 CFR 1.362(b), maintenance fees are
-Declaration [R-5]
+not required for a reissue patent if the original patent
+that was reissued did not require maintenance fees.
-If additional defects or errors are corrected in the
+Where the original patent that was reissued did
-reissue after the filing of the application and the original
+require maintenance fees, the schedule of payments of
-reissue oath or declaration, a supplemental reissue
+maintenance fees on the original patent will continue
-oath/declaration must be filed, unless all additional
+for the reissue patent. 37 CFR 1.362(h). Once an original
-errors corrected are spelling, grammar, typographical,
+patent reissues, maintenance fees are no longer
-editorial or clerical errors which are not errors under
+due in the original patent, but rather the maintenance
-U.S.C. 251 (see MPEP § 1402). In other words, a
+fees are due in the reissue patent. This is because upon
-supplemental oath/declaration is required where any
+the issuance of the reissue patent, the original patent is
-“error” under 35 U.S.C. 251 has been corrected and
+surrendered and ceases to exist.
-the error was not identified in the original reissue
-oath/declaration.
- The supplemental reissue oath/declaration must
+In some instances, more than one reissue patents
-state that every error which was corrected in the reissue
+will be granted to replace a single original patent. The
-application not covered by the prior oath(s)/declaration(
+issuance of more than one reissue patent does not alter
-s) submitted in the application arose without
+the schedule of payments of maintenance fees on the
-any deceptive intention on the part of the applicant.
+original patent. The existence of multiple reissue patents
+for one original patent can arise where multiple
+divisional reissue applications are filed for the same
+patent, and the multiple applications issue as reissue
+patents (all to replace the same original patent). In
+addition, a divisional application or continuation
+application of an existing reissue application may be
+filed, and both may then issue as reissue patents. In
+such instances, 35 U.S.C. 41 does not provide for the
+charging of more than one maintenance fee for the
+multiple reissues. Thus, no payment of additional
+maintenance fees is required for the second or subsequent
+reissue patents, i.e., continuation or divisional
+reissues, which are derived from a first reissue patent
+which has issued. The maintenance fee must be
+directed to the first reissue patent that has issued. This
+is unlike the instance where there is a reissue of a reissue
+patent, and the maintenance fee must be directed
+to the reissue of the reissue patent.
-An example of acceptable language is as follows:
+See MPEP Chapter 2500 for additional information
+pertaining to maintenance fees.
-“Every error in the patent which was corrected in the
+==1416 No Physical Surrender of Original Patent==
-present reissue application, and is not covered by the prior
-declaration submitted in this application, arose without
-any deceptive intention on the part of the applicant.”
-A supplemental reissue oath/declaration will not be
+CFR 1.178. Original patent; continuing duty of
-effective for any errors which are corrected by a filing
+applicant.
-made after the execution of the supplemental reissue
-oath/declaration, unless it is clear from the record that
-the parties executing the document were aware of the
-nature of the correction when they executed the document.
-Further, a supplemental reissue oath/declaration
-with an early date of execution cannot be filed after a
-correction made later in time, to cover the correction
-made after the execution date. This is so, even if the
-supplemental reissue oath/declaration states that all
-errors up to the filing of the supplemental reissue
-oath/declaration oath or declaration arose without
-any deceptive intention on the part of the applicant.
+(a)The application for reissue of a patent shall constitute
+an offer to surrender that patent, and the surrender shall take effect
-Form PTO/SB/51S, “Supplemental Declaration For
-Reissue Patent Application To Correct ‘Errors’ Statement
-(37 CFR 1.175),” may be used to prepare a supplemental
-reissue declaration. Form PTO/SB/51S
-serves to indicate that every error in the patent that
-was corrected in the reissue application, but was not
-covered by a prior reissue oath/declaration submitted
-in the reissue application, arose without any deceptive
-intention on the part of the applicant.
-In the event that the applicant for a reissue applicant
-is required to file a supplemental reissue oath/
-declaration that also includes a specific statement of
-the error being corrected by reissue in accordance
-with 37 CFR 1.175(c), as discussed in subsection I.
-below, applicant must also include in the supplemental
-declaration language equivalent to the “Every error
-…” language in the example of acceptable language
-set forth above. Therefore, if either form PTO/SB/51,
-“Reissue Application Declaration By The Inventor,”
-or form PTO/SB/52, “Declaration By The Assignee”
-(see MPEP § 1414) is used for the purpose of filing
-such supplemental reissue oath/declaration, the form
-must be completed so that it is clear that the supplemental
-reissue oath/declaration addresses all errors
-corrected subsequent to the date upon which the last
-previously reissue oath/declaration (whether original
-or supplemental) was filed. For example, the form
-could be completed by specifying the date upon
-which the reissue application was originally filed, the
-reissue application number, and the date(s) of every
-amendment filed subsequent to the date upon which
-the last reissue oath/declaration (whether original or
-supplemental) was filed. Any manner of completing
-the form so that affiant/declarant unambiguously
-states that every error corrected subsequent to the filing
-of the last filed reissue oath/declaration (whether
-original or supplemental) arose without deceptive
-intent will be acceptable. It will not be acceptable for
-the new (“catch-up”) oath/declaration to simply refer
-to the reissue application as filed, even though the
-new oath/declaration may be submitted after an
-amendment.
-I.WHEN AN ERROR MUST BE STATED IN
-THE SUPPLEMENTAL OATH/
-DECLARATION
-In the supplemental reissue oath/declaration, there
-is no need to state an error which is relied upon to
-support the reissue application if:
-(A)an error to support a reissue has been previously
-and properly stated in a reissue oath/declaration
-in the application; and
-(B)that error is still being corrected in the reissue
+upon reissue of the patent. Until a reissue application is granted,
-application.
+the original patent shall remain in effect.
+CFR 1.178(a) was amended, effective October
+, 2004, to eliminate the requirement for physical
+surrender of the original letters patent (i.e., the
+“ribbon copy” of the original patent) in a reissue
+application, and to make surrender of the original
+patent automatic upon the grant of the reissue patent.
+Amended 37 CFR 1.178(a) applies retroactively to
+all pending applications. For those applications with
+an outstanding requirement for the physical surrender
+of the original letters patent, a reissue applicant must
+timely reply that the requirement is moot in view of
+the implementation of the amended rule. Such a reply
+will be considered a complete reply to any requirement
+directed toward the surrender of the original letters
+patent. It is to be noted that the Office will not
+conduct a search to withdraw Office actions where the
+only outstanding requirement is compliance with the
+physical surrender of the original letters patent.
-If applicant chooses to state any further error at this
+Example 1:
-point (even though such is not needed), the examiner
-should not review the statement of the further error.
-The supplemental reissue oath/declaration muststate an error which is relied upon to support the reissue
+An Office action issues prior to the effective date
-application only where one of the following is
+of the amendment to 37 CFR 1.178 with only a
-true:
+requirement for a return of the original letters
+patent to the Office. A two-month period for reply
+is set in the Office action. Applicant fails to timely
+reply to the Office action, relying on the amendment
+to 37 CFR 1.178 as mooting the requirement
+for physical surrender of the original letters patent.
+The six-month full statutory period for reply
+expires. In this instance, the reissue application
+would be abandoned (as of the day after the last
+day of the two-month period set in the Office
+action) for failure to timely reply to the Office
+action, because no reply was timely filed.
-(A)the prior reissue oath/declaration failed to
+Example 2:
-state an error;
-(B)the prior reissue oath/declaration attempted to
+An Office action issues prior to the effective date
-state an error but did not do so properly; or
+of the amendment to 37 CFR 1.178 with the only
+requirement for a return of the original letters
+patent to the Office. Applicant fails to reply to the
+Office action within the two-month period set in
+the Office action, relying on the amendment to
+CFR 1.178 as mooting the requirement for
+physical surrender of the original letters patent. In
+reviewing the reissue application in connection
+with a related application, the examiner notes the
+omission prior to the expiration of the six-month
+full statutory period for reply. In this instance, the
+examiner may telephone the applicant, and remind
+the applicant of the need to file a timely reply.
-(C)all errors under 35 U.S.C. 251 stated in the
+Example 3:
-prior reissue oath(s)/declaration(s) are no longer being
-corrected in the reissue application.
-II.WHEN A SUPPLEMENTAL OATH/DE-
+An Office action issues prior to the effective date
-CLARATION MUST BE SUBMITTED
+of the amendment to 37 CFR 1.178 with the only
+requirement being a return of the original letters
+patent to the Office. Applicant timely replies to the
+Office that it should vacate/withdraw the requirement,
+or otherwise indicates that return of the original
+letters patent is now unnecessary. In this
+instance, a complete reply would have been filed,
+and the requirement would be withdrawn and the
+application passed to issue.
-The supplemental oath/declaration in accordance
+Example 4:
-with 37 CFR 1.175(b)(1) must be submitted before
-allowance. See MPEP § 1444 for a discussion of the
-action to be taken by the examiner to obtain the supplemental
-oath/declaration in accordance with 37
-CFR 1.175(b)(1), where such is needed.
-Where applicant seeks to correct an error after
+An Office action issues prior to the effective date
-allowance of the reissue application, a supplemental
+of the amendment to 37 CFR 1.178 with both (a) a
-reissue oath/declaration must accompany the
+requirement to return the original letters patent to
-requested correction stating that the error(s) to be corrected
+the Office, and (b) a rejection of the claims under
-arose without any deceptive intention on the
+U.S.C. 103. Applicant timely replies to the
-part of the applicant. The supplemental reissue oath/
+Office action addressing only the rejection under
-declaration submitted after allowance will be directed
+U.S.C. 103 (but not the need for physical surrender
-to the error applicant seeks to correct after allowance.
+of the original letters patent). In this
-This supplemental oath/declaration need not cover
+instance, the reply would be accepted as complete,
-any earlier errors, since all earlier errors should have
+and the Office would withdraw the requirement for
-been covered by a reissue oath/declaration submitted
+physical surrender of the original letters patent.
-prior to allowance.
+(The requirement was proper when made, so the
+Office would not vacate the action in regard to
+submission of the original letters patent.).
-III.SUPPLEMENTAL OATH/DECLARA-
+Where the patentee has submitted the original letters
-TION IN BROADENING REISSUE
+patent in a reissue application subject to
-A broadening reissue application must be applied
+CFR 1.178 as it is now amended, the Office
-for by all of the inventors (patentees), that is, the original
+may, in response to a timely request, return the
-reissue oath/declaration must be signed by all of
+original letters patent, when it can be readily
-the inventors. See MPEP § 1414. If a supplemental
+retrieved from where it is stored, namely, the paper
-oath/declaration in a broadening reissue application is
+application file, or the artifact storage area for an
-subsequently needed in the application in order to fulfill
+Image File Wrapper (IFW) file. Any request for
-the requirements of 37 CFR 1.175, the supplemental
+return of the letters patent which is submitted after
-reissue oath/declaration must be signed by all of
+the issue fee has been paid will require a petition
-the inventors. In re Hayes, 53 USPQ2d 1222, 1224
+pursuant to 37 CFR 1.59(b) to expunge from the
-(Comm’r Pat. 1999) (“37 CFR 1.175(b)(1), taken in
+file and return the original letters patent. Where
-conjunction with Section 1.172, requires a supplemental
+the original letters patent cannot be readily
-declaration be signed by all of the inventors.
+retrieved, or in the rare instance that it has been
-This is because all oaths or declarations necessary to
+subsequently misplaced, the Office will not be able
-fulfill the rule requirements in a reissue application
-are taken together collectively as a single oath or declaration.
-Thus, each oath and declaration must bear
-the appropriate signatures of all the inventors.”).
- If a joint inventor refuses or cannot be found or
-reached to sign a supplemental oath/declaration, a
-supplemental oath/declaration listing all the inventors,
-and signed by all the available inventors may be filed
-provided it is accompanied by a petition under 37
-CFR 1.183 along with the petition fee, requesting
-waiver of the signature requirement of the nonsigning
-inventor.
+to return the original letters patent and will not create
+a new one.
+Example 5:
+In an application filed after the effective date of
+the amendment to 37 CFR 1.178, applicant has
+mistakenly submitted the original letters patent
+and later seeks its return. In this instance, provided
+applicant timely requests the return of the original
+letters patent, the Office would return the patent,
+provided it can be readily retrieved.
+Example 6:
-SUPPLEMENTAL DECLARATION FOR REISSUE PATENT APPLICATION TO CORRECT “ERRORS” STATEMENT (37 CFR 1.175)
+A reissue application was pending at the time of
-PTO/SB/51S (09-04)
+the effective date of the amendment to 37 CFR
-Approved for use through 04/30/2007. OMB 0651-0033
+.178, and an original letters patent was submitted.
-U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
+Applicant requests return of the original letters
-Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
+patent, although the application is abandoned at
-Attorney Docket Number
+the time the request for return is made. In this
-First Named Inventor
+instance, the Office would return the original letters
-COMPLETE if known
+patent if it is readily retrievable. Even where
-Application Number
+the reissue application was already abandoned at
-Filing Date
+the time of the effective date of the amendment to
-Art Unit
+CFR 1.178, the Office would also return the
-SUPPLEMENTAL DECLARATION
+original letters patent.
-FOR REISSUE
-PATENT APPLICATION
-TO CORRECT “ERRORS” STATEMENT
-(37 CFR 1.175)
-Examiner Name
-I/We hereby declare that:
-Every error in the patent which was corrected in the present reissue application, and which is not covered by the
-prior oath(s) and/or declaration(s) submitted in this application, arose without any deceptive intention on the part of
-the applicant.
-I/We hereby declare that all statements made herein of my/our own knowledge are true and that all statements made
-on information and belief are believed to be true; and further that these statements were made with the knowledge
-that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C.
-and that such willful false statements may jeopardize the validity of the application or any patent issued
-thereon.
-Name of Sole or First Inventor: A petition has been filed for this unsigned inventor
-Given Name (first and middle [if any]) Family Name or Surname
-Inventor’s
-SignatureDate
-Name of Second Inventor: A petition has been filed for this unsigned inventor
-Given Name (first and middle [if any]) Family Name or Surname
-Inventor’s
-SignatureDate
-Name of Third Inventor: A petition has been filed for this unsigned inventor
-Given Name (first and middle [if any]) Family Name or Surname
-Inventor’s
-SignatureDate
-Name of Fourth Inventor: A petition has been filed for this unsigned inventor
-Given Name (first and middle [if any]) Family Name or SurnameInventor’s
-SignatureDate
-Additional inventors or legal representatives(s) are being named on the __________ supplemental sheets PTO/SB/02A or 02LR attached hereto.
-This collection of information is required by 37 CFR 1.175. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
-to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1.8 minutes to complete,
-including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
-the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
-Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
-ADDRESS. SEND TO:Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
-If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
-Doc Code:
+Example 7:
+A reissue application is pending at the time of the
+effective date of the amendment to 37 CFR 1.178.
+An original letters patent was submitted, and the
+issue fee has been paid for the reissue application
+at the time the request for return of the original letters
+patent is made. In this instance, the Office may
+similarly return the original letters patent, but only
+if the request is accompanied by a grantable petition
+under 37 CFR 1.59(b).
+Example 8:
+A reissue application was pending at the time of
+the effective date of the amendment to 37 CFR
+.178. An original letters patent was submitted,
+and the reissue application then issued as a reissue
+patent. After the reissue patent issues, the request
+for return of the original letters patent is made.
+Once again, the Office may return the original letters
+patent, but only if the request is accompanied
+by a grantable petition under 37 CFR 1.59(b).
+Example 9:
+A reissue application issued as a reissue patent
+prior to the effective date of the amendment to
+CFR 1.178. The reissue applicant, now the patentee,
+requests return of the original letters patent
+that was submitted in the reissue application. In
+this instance, the Office will not return the original
+letters patent. The original letters patent was submitted
+in reply to a requirement that was in effect
+throughout the pendency of the reissue application.
-Reissue Application and Issue Fees
-[R-5]
-I.BASIC REISSUE APPLICATION FILING,
-SEARCH, AND EXAMINATION FEES
-The Consolidated Appropriations Act, 2005 (Consolidated
+==1417 Claim for Benefit Under 35 U.S.C. 119(a)-(d)==
-Appropriations Act), effective December 8,
-, provides for a separate reissue application filing
-fee, search fee, and examination fee during fiscal
-years 2005 and 2006. For reissue applications filed on
-or after December 8, 2004, the following fees are
-required: basic filing fee as set forth in 37 CFR
-.16(e)(1); search fee as set forth in 37 CFR 1.16(n);
-examination fee as set forth in 37 CFR 1.16(r); application
-size fee, if applicable (see subsection II.
-below); and excess claims fees, if applicable (see subsection
-III. below).
-For reissue applications filed prior to December 8,
+PRIORITY UNDER 35 U.S.C. 119(a)-(d) WAS
-, the following fees are required: basic filing fee
+PERFECTED IN THE ORIGINAL PATENT
-as set forth in 37 CFR 1.16(e)(2); and excess claims
-fees, if applicable (see subsection III below). No
-search and examination fees are required for reissue
-applications filed before December 8, 2004.
-The basic filing, search and examination fees are
+A “claim” for the benefit of an earlier filing date in
-due on filing of the reissue application. These fees
+a foreign country under 35 U.S.C. 119(a)-(d) must be
-may be paid on a date later than the filing date of the
+made in a reissue application, even though such a
-reissue application provided they are paid within the
+claim was previously made in the application for the
-time period set forth in 37 CFR 1.53(f) and include
+original patent to be reissued. However, no additional
-the surcharge set forth in 37 CFR 1.16(f). For reissue
+certified copy of the foreign application is necessary.
-applications filed on or after December 8, 2004 but
+The procedure is similar to that for “Continuing
-prior to July 1, 2005, which have been accorded a filing
+Applications” in MPEP § 201.14(b).
-date under 37 CFR 1.53(b), if the search and/or
-examination fees are paid on a date later than the filing
-date of the reissue application, the surcharge
-under 37 CFR 1.16(f) is not required. For reissue
-applications filed on or after July 1, 2005, which have
-been accorded a filing date under 37 CFR 1.53(b), if
-any of the basic filing fee, the search fee, or the examination
-fee are paid on a date later than the filing date
-of the reissue application, the surcharge under 37 CFR
-.16(f) is required.
-For reissue applications filed on or after December
+In addition, 37 CFR 1.63 requires that in any application
-, 2004, in which a petition under 37 CFR
+in which a claim for foreign priority is made
-.138(d) to expressly abandon the application was
+pursuant to 37 CFR 1.55, the oath or declaration must
-filed on or after March 10, 2006, applicant may file a
+identify the foreign application for patent or inventors’
-request for refund of the search fee and excess claims
+certificate on which priority is claimed unless
-fee paid in the application. See MPEP § 711.01.
+supplied on an application data sheet (37 CFR 1.76),
+and any foreign applications having a filing date
+before that of the application on which priority is
+claimed, by specifying:
-II.APPLICATION SIZE FEE
+(A)the application number of the foreign application;
-The Consolidated Appropriations Act also provides
-for an application size fee. 37 CFR 1.16(s) sets forth
-the application size fee for reissue applications filed
-on or after December 8, 2004, the specification and
-drawings of which, excluding a sequence listing or
-computer program listing filed in an electronic
-medium in compliance with the rules (see 37 CFR
-.52(f)), exceed 100 sheets of paper. The application
-size fee does not apply to reissue applications filed
-before December 8, 2004. The application size fee
-applies for each additional 50 sheets or fraction
-thereof over 100 sheets of paper. Any sequence listing
-in an electronic medium in compliance with 37 CFR
-.52(e) and 37 CFR 1.821(c) or (e), and any computer
-program listing filed in an electronic medium in compliance
-with 37 CFR 1.52(e) and 1.96, will be
-excluded when determining the application size fee
-required by 37 CFR 1.16(s). See also MPEP § 607.
-III.EXCESS CLAIMS FEES
+(B)the foreign country or intellectual property
+authority; and
-CFR 1.16(h) sets forth the excess claims fee for
+(C)the day, month, and year of the filing of the
-each independent claim in excess of three. 37 CFR
+foreign application.
-.16(i) sets forth the excess claims fee for each claim
-(whether independent or dependent) in excess of
-twenty. The access claims fees specified in 37 CFR
-.16(h) and (i) apply to all reissue applications pending
-on or after December 8, 2004. The excess claims
-fees specified in 37 CFR 1.16(h) and (i) apply to any
-excess claims fee paid on or after December 8, 2004,
-regardless of the filing date of the reissue application
-and regardless of the date on which the claim necessitating
-the excess claims fee payment was added to the
-reissue application.
-For reissue applications filed on or after December
-, 2004, in which a petition under 37 CFR
-.138(d) to expressly abandon the application was
-filed on or after March 10, 2006, applicant may file a
-request for refund of the search fee and excess claims
-fee paid in the application. See MPEP § 711.01.
-Under 35 U.S.C. 41(a)(2) as amended by the Consolidated
-Appropriations Act, the claims in the original
-patent are not taken into account in determining
-the excess claims fee for a reissue application.
-Example 1:
-Applicant filed a reissue application before
-December 8, 2004, with the same number of
+The examiner should note that the heading on
+printed copies of the patent will not be carried forward
+to the reissue from the original patent. Therefore,
+it is important that the bibliographic data sheet
+(or the front face of the reissue file wrapper for series
+/ and earlier paper applications) be endorsed by the
+examiner under “FOREIGN APPLICATIONS.” For
+an IFW reissue file, a copy of the bibliographic data
+sheet should be printed from the IFW file history. The
+printed copy should be annotated by the examiner and
+then the annotated copy should be scanned into the
+IFW.
+PRIORITY UNDER 35 U.S.C. 119(a)-(d) IS
+NEWLY PERFECTED IN THE REISSUE APPLICATION
+A reissue was granted in Brenner v. State of Israel,
+F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where
+the only ground urged was failure to file a certified
+copy of the original foreign application to obtain the
+right of foreign priority under 35 U.S.C. 119(a)-(d)
+before the patent was granted. In Brenner, the claim
+for priority had been made in the prosecution of the
+original patent, and it was only necessary to submit a
+certified copy of the priority document in the reissue
+application to perfect priority (the claim for priority
+must be repeated in the reissue application). Reissue
+is also available to correct the “error” in failing to take
+any steps to obtain the right of foreign priority under
+U.S.C. 119(a)-(d) before the original patent was
+granted. See Fontijn v. Okamoto, 518 F.2d 610, 622,
+USPQ 97, 106 (CCPA 1975) (“a patent may be
+reissued for the purpose of establishing a claim to priority
+which was not asserted, or which was not perfected
+during the prosecution of the original
+application”) In a situation where it is necessary to
+submit for the first time both the claim for priority and
+the certified copy of the priority document in the reissue
+application and the patent to be reissued resulted
+from a utility or plant application filed on or after
+November 29, 2000, the reissue applicant will have to
+file a petition for an unintentionally delayed priority
+claim under 37 CFR 1.55(c) in addition to filing a
+reissue application. See MPEP §
+.14(a).
+==1418 Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known to be Material to Patentability==
+CFR 1.178. Original patent; continuing duty of
+applicant.
-claims as in the patent. The patent has more than 3
-independent claims and more than 20 total claims.
-If applicant added one more independent claim in
-the reissue application by filing an amendment
-before December 8, 2004, but did not pay for the
-excess claims fees prior to December 8, 2004, on
-or after December 8, 2004, applicant will have to
-pay for one additional independent claim per the
-fee set forth in 37 CFR 1.16(h) and one additional
-total claim per the fee set forth in 37 CFR 1.16(i).
-Example 2:
-Applicant filed a reissue application on or after
+(b)In any reissue application before the Office, the applicant
-December 8, 2004, with the same number of
+must call to the attention of the Office any prior or concurrent proceedings
-claims as in the patent. The patent has 4 independent
+in which the patent (for which reissue is requested) is or
-claims and 21 total claims. Excess claims fees
+was involved, such as interferences, reissues, reexaminations, or
-for the 4th independent claim (one additional independent
+litigations and the results of such proceedings (see also
-claim per the fee set forth in 37 CFR
+§
-.16(h)) and the 21st claim (one additional total
-claim per the fee set forth in 37 CFR 1.16(i)) are
+.173(a)(1)).
-required. Under 35 U.S.C. 41(a)(2) as amended by
-the Consolidated Appropriations Act, the claims in
-the original patent are not taken into account in
-determining the excess claims fees for a reissue
-application.
-The excess claims fees, if any, due with an amendment
+CFR 1.178(b) requires reissue applicants to call
-are required prior to any consideration of the
+to the attention of the Office any prior or concurrent
-amendment by the examiner. Upon submission of an
+proceeding in which the patent (for which reissue is
-amendment (whether entered or not) affecting the
+requested) is or was involved and the results of such
-claims, payment of fees for those claims in excess of
+proceedings. These proceedings would include interferences,
-the number previously paid for is required. The additional
+reissues, reexaminations, and litigations.
-fees, if any, due with an amendment are calculated
+Litigation would encompass any papers filed in the
-on the basis of the claims (total and
+court or issued by the court, which may include, for
-independent) which would be present, if the amendment
+example, motions, pleadings, and court decisions.
-were entered. If an amendment is limited to
+This duty to submit information is continuing, and
-revising the existing claims and it does not result in
+runs from the time the reissue application is filed until
-the addition of any new claim, there is no excess
+the reissue application is abandoned or issues as a
-claim fee. Excess claims fees apply only to the addition
+reissue patent.
-of claims. It is to be noted that where excess
-claims fees have been previously paid, a later amendment
-affecting the claims cannot serve as the basis for
-granting any refund. See 37 CFR 1.26(a).
-Amendments filed before a first Office action, or
+In addition, a reissue application is subject to the
-otherwise not filed in reply to an Office action, presenting
+same duty of disclosure requirements as is any other
-additional claims in excess of the number
+nonprovisional application. The provisions of 37 CFR
-already paid for, not accompanied by the full additional
+.63 require acknowledgment in the reissue oath or
-claims fee due, will not be entered in whole or
+declaration of the “duty to disclose to the Office all
-in part and applicant will be so notified. Such amendments
+information known to the [applicants] to be material
-filed in reply to an Office action will be
+to patentability as defined in §
-regarded as being non-responsive to the Office action
-and the practice set forth in MPEP § 714.03 will be
+.56.” Note that the
-followed.
+Office imposes no responsibility on a reissue applicant
+to resubmit, in a reissue application, all the “References
+Cited” in the patent for which reissue is
+sought. Rather, applicant has a continuing duty under
+CFR 1.56 to timely apprise the Office of any information
+which is material to the patentability of the
+claims under consideration in the reissue application.
-An amendment canceling claims accompanying the
+CFR 1.97 and 37 CFR 1.98 provide a mechanism
-papers constituting the reissue application will be
+to submit information known to applicants to be
-effective to diminish the number of claims to be considered
+material to patentability. Information submitted in
-in calculating the filing fees to be paid. A preliminary
+compliance with 37 CFR 1.97 and 37 CFR 1.98 will
-amendment filed concurrently with a reply to
+be considered by the Office. See MPEP § 609.
-a Notice To File Missing Parts of Application that
+Although a reissue applicant may utilize 37 CFR 1.97and 37 CFR 1.98 to comply with the duty of disclo
-required the filing fees, which preliminary amendment
-cancels or adds claims, will be taken into
-account in determining the appropriate filing fees due
-in response to the Notice To File Missing Parts of
-Application. However, no refund will be made for
-claims being canceled in the reply that have already
-been paid for.
-After a requirement for restriction, non-elected
-claims will be included in determining the fees due in
-connection with a subsequent amendment unless such
-claims are canceled.
-IV.ISSUE FEE
-The issue fee for issuing each reissue patent is set
-forth in 37 CFR 1.18(a).
-V.REISSUE APPLICATION FEE TRANS-
-MITTAL FORM
-The Office has prepared Form PTO/SB/56, Reissue
-Application Fee Transmittal Form which is designed
-to assist in the correct calculation of reissue filing
-fees.
@@ Line 4,218: / Line 4,244: @@
-Reissue Application Fee Transmittal Form
+sure required by 37 CFR 1.56, this does not relieve
+applicant of the duties under 37 CFR 1.175 of, for
+example, stating “at least one error being relied
+upon.”
+While 37 CFR 1.97(b) provides for the filing of an
+information disclosure statement within 3 months of
+the filing of an application or before the mailing date
+of a first Office action, reissue applicants are encouraged
+to file information disclosure statements at the
+time of filing of the reissue application so that such
+statements will be available to the public during the 2-
+month period provided in MPEP § 1441. Form paragraph
+.11.01 may be used to remind applicant of the
+duties to timely make the Office aware of (A) any
+prior or concurrent proceeding (e.g., litigation or
+Office proceedings) in which the patent to be reissued
+is or was involved, and (B) any information which is
+material to patentability of the claims in the reissue
+application.
+¶ 14.11.01 Reminder of Duties Imposed by 37 CFR
+.178(b) and 37 CFR 1.56
+Applicant is reminded of the continuing obligation under 37
+CFR 1.178(b), to timely apprise the Office of any prior or concurrent
+proceeding in which Patent No. [1] is or was involved. These
+proceedings would include interferences, reissues, reexaminations,
+and litigation.
+Applicant is further reminded of the continuing obligation
+under 37 CFR 1.56, to timely apprise the Office of any information
+which is material to patentability of the claims under consideration
+in this reissue application.
+These obligations rest with each individual associated with the
+filing and prosecution of this application for reissue. See also
+MPEP §§ 1404, 1442.01 and 1442.04.
+Examiner Note:
+.This form paragraph is to be used in the first action in a reissue
+application.
+.In bracket [1], insert the patent number of the original patent
+for which reissue is requested.
+==1430 Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette==
+CFR 1.11. Files open to the public.
-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:
-. 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.
-. 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.
-. 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.
-. 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).
-. 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.
-. 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)).
-. 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.
-. 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.
-. 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.
-.01Maintenance Fees on the Original
-Patent [R-5]
-The filing of a reissue application does not alter the
+(b)All reissue applications, all applications in which the
-schedule of payments of maintenance fees on the
+Office has accepted a request to open the complete application to
-original patent. If maintenance fees have not been
+inspection by the public, and related papers in the application file,
-paid on the original patent as required by 35 U.S.C.
+are open to inspection by the public, and copies may be furnished
-(b) and 37 CFR 1.20, and the patent has expired, no
+upon paying the fee therefor. The filing of reissue applications,
-reissue patent can be granted. 35 U.S.C. 251, first
+other than continued prosecution applications under § 1.53(d) of
-paragraph, only authorizes the granting of a reissue
+reissue applications, will be announced in the Official Gazette.
-patent for the unexpired term of the original patent.
+The announcement shall include at least the filing date, reissue
-Once a patent has expired, the Director of the USPTO
+application and original patent numbers, title, class and subclass,
-no longer has the authority under 35 U.S.C. 251 to
+name of the inventor, name of the owner of record, name of the
-reissue the patent. See In re Morgan, 990 F.2d 1230,
+attorney or agent of record, and examining group to which the
+reissue application is assigned.
-USPQ2d 1392 (Fed. Cir. 1993).
-The examiner should determine whether all
-required maintenance fees have been paid prior to
-conducting an examination of a reissue application. In
-addition, during the process of preparing the reissue
-application for issue, the examiner should again determine
-whether all required maintenance fees have been
-paid up to date.
-The history of maintenance fees is determined by
-the following, all of which should be used (to provide
-a check on the search made):
-(A)Go to the USPTO Intranet (http://ptoweb/ptointranet/
+Under 37 CFR 1.11(b) all reissue applications filed
-index.htm) and select the PALM screen, then
+after March 1, 1977, are open to inspection by the
-the “General Information” screen, type in the patent
+general public, and copies may be furnished upon
-number and then select the “Fees” screen.
+paying the fee therefor. The filing of reissue applications
+(except for continued prosecution applications
+(CPA’s) filed under 37
+CFR 1.53(d)) will be
+announced in the Official Gazette. The announcement
+gives interested members of the public an opportunity
+to submit to the examiner information pertinent to the
+patentability of the reissue application. The announcement
+includes the filing date, reissue application and
+original patent numbers, title, class and subclass,
+name of the inventor, name of the owner of record,
+name of the attorney or agent of record, and the Technology
+Center (TC) to which the reissue application is
+initially assigned. A TC Director or other appropriate
+Office official may, under appropriate circumstances,
+postpone access to or the making of copies of a
+paper reissue application file, such as, for example,
+to avoid interruption of the examination or other
+review of the application by an examiner.
+IFW reissue application files are open to inspection
+by the general public by way of Public PAIR via
+the USPTO Internet site. In viewing the images of the
+files, members of the public will be able to view the
+entire content of the reissue application file history.
+To access Public PAIR, a member of the public would
+(A) go to the USPTO web site at http://
+www.uspto.gov, (B) click on “Patents”, (C) under
+“Check Status, View Papers…” click on “Status &
+IFW,” and (D) under “Patent Application Information
+Retrieval” enter the reissue application number.
+A notice of a reissue application in the Official
+Gazette should be published prior to any examination
+of the application. If an inadvertent failure to publish
+notice of the filing of the reissue application in the
+Official Gazette is recognized later in the examination,
+action should be taken to have the notice published
+as quickly as possible, and action on the
+application may be delayed until two months after the
-(B)Go to the USPTO Intranet and then the “Revenue
-Accounting and Management” screen, then the
-“File History” screen. Then type in the patent number.
-(C)Go to the USPTO Internet Site (http://
-www.uspto.gov) and select “eBusiness”, then the
-“Patent Electronic Business Center” screen, then the
-“Patent Application Information Retrieval (PAIR)”
-screen (http://pair.uspto.gov/cgi-bin/final/home.pl),
-and type in the patent number and select the “view
-Maint. Statement” screen.
-If the window for the maintenance fee due has
-closed (maintenance fees are due by the day of the
-th, 8th and 12th year anniversary of the grant of the
+publication, allowing for any protests to be filed. For
-patent), but the maintenance fee has not been paid,
+a discussion of protests, see MPEP Chapter 1900.
-the Office of Patent Legal Administration (OPLA)
-should be contacted by the Technology Center
+The filing of a continued prosecution application
-(TC) Special Program Examiner (SPRE) for instructions
+(CPA) under 37 CFR 1.53(d) of a reissue application
-as to what appropriate action to take.
+will not be announced in the Official Gazette.
+Although the filing of a CPA of a reissue application
+constitutes the filing of a reissue application, the
+announcement of the filing of such CPA would be
+redundant in view of the announcement of the filing
+of the prior reissue application in the Official Gazetteand the fact that the same application number and file
+will continue to be used for the CPA.
-PAYMENT OF MAINTENANCE FEES WHERE
+If applicant files a Request for Continued Examination
-THE PATENT HAS BEEN REISSUED
+(RCE) of the reissue application under 37 CFR
+.114 (which can be filed on or after May 29, 2000 for
+a reissue application filed on or after June 8, 1995),
+such filing will not be announced in the Official
+Gazette. An RCE continues prosecution of the existing
+reissue application and is not a filing of a new
+application.
-Pursuant to 37 CFR 1.362(b), maintenance fees are
-not required for a reissue patent if the original patent
-that was reissued did not require maintenance fees.
-Where the original patent that was reissued did
-require maintenance fees, the schedule of payments of
-maintenance fees on the original patent will continue
-for the reissue patent. 37 CFR 1.362(h). Once an original
-patent reissues, maintenance fees are no longer
-due in the original patent, but rather the maintenance
-fees are due in the reissue patent. This is because upon
-the issuance of the reissue patent, the original patent is
-surrendered and ceases to exist.
-In some instances, more than one reissue patents
+The filing of all reissue applications, except for
-will be granted to replace a single original patent. The
+CPAs filed under 37 CFR 1.53(d), (note that effective
-issuance of more than one reissue patent does not alter
+July 14, 2003, CPA practice has been eliminated as to
-the schedule of payments of maintenance fees on the
+utility and plant application) will be announced in the
-original patent. The existence of multiple reissue patents
+Official Gazette and will include certain identifying
-for one original patent can arise where multiple
+data as specified in 37 CFR 1.11(b). Access to a reissue
-divisional reissue applications are filed for the same
+application that is maintained in paper must be
-patent, and the multiple applications issue as reissue
+obtained from the area of the Office having jurisdiction
-patents (all to replace the same original patent). In
+over the reissue application file.
-addition, a divisional application or continuation
-application of an existing reissue application may be
-filed, and both may then issue as reissue patents. In
-such instances, 35 U.S.C. 41 does not provide for the
-charging of more than one maintenance fee for the
-multiple reissues. Thus, no payment of additional
-maintenance fees is required for the second or subsequent
-reissue patents, i.e., continuation or divisional
-reissues, which are derived from a first reissue patent
-which has issued. The maintenance fee must be
-directed to the first reissue patent that has issued. This
-is unlike the instance where there is a reissue of a reissue
-patent, and the maintenance fee must be directed
-to the reissue of the reissue patent.
-See MPEP Chapter 2500 for additional information
+For reissue application files that are maintained in
-pertaining to maintenance fees.
+paper, the following access procedure will be
+observed:
-No Physical Surrender of Original
+(A) Any member of the general public may
-Patent [R-3]
+request access to a particular reissue application filed
+after March 1, 1977.  Since no record of such
+request is intended to be kept, an oral request will suffice.
+Reissue applications already on file prior to
+March 1, 1977 are not automatically open to inspection,
+but a liberal policy is followed by the Office of
+Patent Legal Administration and by the Board of
+Patent Appeals and Interferences (see MPEP
+§
+.02(b)) in granting petitions for access to such
+applications.
-CFR 1.178. Original patent; continuing duty of
+(B)Paper reissue application files will be
-applicant.
+maintained in the TCs and inspection thereof will be
+supervised by TC personnel. Although no general
+limit is placed on the amount of time spent reviewing
+the files, the Office may impose limitations, if necessary,
+e.g., where the application is actively being processed.
-(a)The application for reissue of a patent shall constitute
-an offer to surrender that patent, and the surrender shall take effect
+(C)Where the reissue application file has left
+the TC for administrative processing, requests for
+access should be directed to the appropriate supervisory
+personnel where the application is currently
+located.
+(D)Requests for copies of papers in the reissue
+application file must be in writing and addressed to
+the Mail Stop Document Services, Director of the
+United States Patent and Trademark Office, P.O. Box
+, Alexandria, VA 22313-1450. Such requests
+may be either mailed or delivered to the Office Customer
+Service Window (See MPEP § 502). The price
+for copies made by the Office is set forth in 37 CFR
+.19.
+==1440 Examination of Reissue Application==
+CFR 1.176. Examination of reissue.
-upon reissue of the patent. Until a reissue application is granted,
-the original patent shall remain in effect.
+(a)A reissue application will be examined in the same manner
+as a non-reissue, non-provisional application, and will be subject
+to all the requirements of the rules related to non-reissue
+applications. Applications for reissue will be acted on by the
+examiner in advance of other applications.
+(b)Restriction between subject matter of the original patent
+claims and previously unclaimed subject matter may be required
+(restriction involving only subject matter of the original patent
+claims will not be required). If restriction is required, the subject
+matter of the original patent claims will be held to be constructively
+elected unless a disclaimer of all the patent claims is filed in
+the reissue application, which disclaimer cannot be withdrawn by
+applicant.
-CFR 1.178(a) was amended, effective October
+CFR 1.176 provides that an original claim, if re-
-, 2004, to eliminate the requirement for physical
+presented in a reissue application, will be fully examined
-surrender of the original letters patent (i.e., the
+in the same manner, and subject to the same rules
-“ribbon copy” of the original patent) in a reissue
+as if being presented for the first time in an original
-application, and to make surrender of the original
+non-reissue, nonprovisional application, except that
-patent automatic upon the grant of the reissue patent.
+division will not be required by the examiner. See
+MPEP § 1450 and § 1451. Reissue applications are
+normally examined by the same examiner who issued
+the patent for which reissue is requested. In addition,
+the application will be examined with respect to compliance
+with 37 CFR 1.171-1.178 relating specifically
+to reissue applications, for example, the reissue
+oath or declaration will be carefully reviewed for
+compliance with 37 CFR 1.175. See MPEP § 1444 for
+handling applications in which the oath or declaration
-Amended 37 CFR 1.178(a) applies retroactively to
-all pending applications. For those applications with
-an outstanding requirement for the physical surrender
-of the original letters patent, a reissue applicant must
-timely reply that the requirement is moot in view of
-the implementation of the amended rule. Such a reply
-will be considered a complete reply to any requirement
-directed toward the surrender of the original letters
-patent. It is to be noted that the Office will not
-conduct a search to withdraw Office actions where the
-only outstanding requirement is compliance with the
-physical surrender of the original letters patent.
-Example 1:
-An Office action issues prior to the effective date
-of the amendment to 37 CFR 1.178 with only a
-requirement for a return of the original letters
-patent to the Office. A two-month period for reply
-is set in the Office action. Applicant fails to timely
-reply to the Office action, relying on the amendment
-to 37 CFR 1.178 as mooting the requirement
-for physical surrender of the original letters patent.
-The six-month full statutory period for reply
-expires. In this instance, the reissue application
-would be abandoned (as of the day after the last
-day of the two-month period set in the Office
-action) for failure to timely reply to the Office
-action, because no reply was timely filed.
-Example 2:
-An Office action issues prior to the effective date
+lacks compliance with 37 CFR 1.175. Reissue applications
-of the amendment to 37 CFR 1.178 with the only
+with related litigation will be acted on by the
-requirement for a return of the original letters
+examiner before any other special applications, and
-patent to the Office. Applicant fails to reply to the
+will be acted on immediately by the examiner, subject
-Office action within the two-month period set in
+only to a 2-month delay after publication for examining
-the Office action, relying on the amendment to
+reissue applications; see MPEP § 1441.
-CFR 1.178 as mooting the requirement for
-physical surrender of the original letters patent. In
-reviewing the reissue application in connection
-with a related application, the examiner notes the
-omission prior to the expiration of the six-month
-full statutory period for reply. In this instance, the
-examiner may telephone the applicant, and remind
-the applicant of the need to file a timely reply.
-Example 3:
+The original patent file wrapper /file history should
+always be obtained and reviewed when examining a
-An Office action issues prior to the effective date
+reissue application thereof.
-of the amendment to 37 CFR 1.178 with the only
-requirement being a return of the original letters
-patent to the Office. Applicant timely replies to the
-Office that it should vacate/withdraw the requirement,
-or otherwise indicates that return of the original
-letters patent is now unnecessary. In this
-instance, a complete reply would have been filed,
-and the requirement would be withdrawn and the
-application passed to issue.
-Example 4:
+==1441 Two-Month Delay Period==
-An Office action issues prior to the effective date
+CFR 1.176 provides that reissue applications
-of the amendment to 37 CFR 1.178 with both (a) a
+will be acted on by the examiner in advance of other
-requirement to return the original letters patent to
+applications, i.e., “special.” Generally, a reissue application
-the Office, and (b) a rejection of the claims under
+will not be acted on sooner than 2 months after
-U.S.C. 103. Applicant timely replies to the
+announcement of the filing of the reissue has
-Office action addressing only the rejection under
+appeared in the Official Gazette. The 2-month delay is
-U.S.C. 103 (but not the need for physical surrender
+provided in order that members of the public may
-of the original letters patent). In this
+have time to review the reissue application and submit
-instance, the reply would be accepted as complete,
+pertinent information to the Office before the examiner’s
-and the Office would withdraw the requirement for
+action. The pertinent information is submitted
-physical surrender of the original letters patent.
+in the form of a protest under 37 CFR 1.291(a). For a
-(The requirement was proper when made, so the
+discussion as to protests under 37 CFR 1.291(a) in
-Office would not vacate the action in regard to
+reissue applications, see MPEP § 1441.01. As set
-submission of the original letters patent.).
+forth in MPEP § 1901.04, the public should be aware
+that such submissions should be made as
+early as possible,
+since, under certain circumstances, the 2-month
+delay period will not be employed. For example, the
+Office may act on a continuation or a divisional reissue
+application prior to the expiration of the 2-month
+period after announcement. Additionally, the Office
+will entertain a petition under 37 CFR 1.182 which is
+accompanied by the required petition fee (37
+CFR
+.17(f)) to act on a reissue application without
+delaying for 2 months. Accordingly, protestors to reissue
+applications (see MPEP § 1441.01) cannot automatically
+assume that a full 2-month delay period will
+always be available. Appropriate reasons for requesting
+that the 2-month delay period not be employed
+include that litigation involving a patent has been
+stayed to permit the filing of an application for the
+reissue of the patent. Where the basis for the petition
+is ongoing litigation, the petition must clearly
+identify the litigation, and detail the specifics of the
+litigation that call for prompt action on the reissue
+application prior to the expiration of the 2-month
+delay period. Such petitions are decided by the
+Office of Patent Legal Administration.
-Where the patentee has submitted the original letters
+.01Protest in Reissue Applications[R-3]
-patent in a reissue application subject to
-CFR 1.178 as it is now amended, the Office
-may, in response to a timely request, return the
-original letters patent, when it can be readily
-retrieved from where it is stored, namely, the paper
-application file, or the artifact storage area for an
-Image File Wrapper (IFW) file. Any request for
-return of the letters patent which is submitted after
-the issue fee has been paid will require a petition
-pursuant to 37 CFR 1.59(b) to expunge from the
-file and return the original letters patent. Where
-the original letters patent cannot be readily
-retrieved, or in the rare instance that it has been
-subsequently misplaced, the Office will not be able
+A protest pursuant to 37 CFR 1.291 may be
+filed throughout the pendency of a reissue application,
+prior to the date of mailing of a notice of allowance,
+subject to the timing constraints of the examination,
+as set forth in MPEP § 1901.04. While a reissue application
+is not published under 37 CFR 1.211, the reissue
+application is published pursuant to 35 U.S.C.
+(b)(1)(A) via an announcement in the Official
+Gazette (and public availability of the file content) per
+CFR 1.11(b). Such a publication does not preclude
+the filing of a protest. 35 U.S.C. 122(c) states:
+“(c) PROTEST AND PRE-ISSUANCE OPPOSITION-
+The Director shall establish appropriate procedures to
+ensure that no protest or other form of pre-issuance
+opposition to the grant of a patent on an application may be
+initiated after publication of the application without the
+express written consent of the applicant.” [Emphasis
+added.]
+A protest is precluded after publication for an application
+for an original patent, as a “form of pre-issuance
+opposition.” A reissue application is a post-
+issuance proceeding. A protest filed in a reissue application
+is not a “form of pre-issuance opposition to the
+grant of a patent” since the patent to be reissued has
+already been granted. Thus, the prohibition against
+the filing of a protest after publication of an application
+under 35 U.S.C. 122(c) is not applicable to a reissue
+application and a protest is permitted after
+publication of the reissue application.
+  A protest with regard to a reissue application
+should be filed within the 2-month period following
+the announcement of the filing of the reissue application
+in the Official Gazette. If the protest of a reissue
+application cannot be filed within the 2-month delay
+period, the
+protest can be submitted at a later time.
+Where the protest is submitted after the 2-month
+period, no petition for entry of the protest under
+CFR 1.182 is needed with respect to the protest
+being submitted after the 2 months, unless a final
+rejection has been issued or prosecution on the merits
+has been otherwise closed for the reissue application.
-to return the original letters patent and will not create
-a new one.
-Example 5:
+A potential protestor should be aware that reissue
+applications are taken up “special” and a protest
+filed outside the 2-month delay period may be
-In an application filed after the effective date of
-the amendment to 37 CFR 1.178, applicant has
-mistakenly submitted the original letters patent
-and later seeks its return. In this instance, provided
-applicant timely requests the return of the original
-letters patent, the Office would return the patent,
-provided it can be readily retrieved.
-Example 6:
-A reissue application was pending at the time of
-the effective date of the amendment to 37 CFR
-.178, and an original letters patent was submitted.
-Applicant requests return of the original letters
-patent, although the application is abandoned at
-the time the request for return is made. In this
-instance, the Office would return the original letters
-patent if it is readily retrievable. Even where
-the reissue application was already abandoned at
-the time of the effective date of the amendment to
-CFR 1.178, the Office would also return the
-original letters patent.
-Example 7:
-A reissue application is pending at the time of the
+received after action by the examiner. Once the
-effective date of the amendment to 37 CFR 1.178.
+first
-An original letters patent was submitted, and the
+Office action is mailed (after the 2-month
-issue fee has been paid for the reissue application
+period), a member of the public may still submit pertinent
-at the time the request for return of the original letters
+information in the form of a protest under
-patent is made. In this instance, the Office may
-similarly return the original letters patent, but only
+CFR 1.291, and the examiner will consider the
-if the request is accompanied by a grantable petition
+information submitted in the next Office action, to the
-under 37 CFR 1.59(b).
+extent that such consideration is appropriate.
+Where a final rejection has been issued or the
+prosecution on the merits has been otherwise closed, a
+petition under 37 CFR 1.182 along with the required
+petition fee (37 CFR 1.17(f)) for entry of the protest
+are required. The petition must include an explanation
+as to why the additional time was necessary and the
+nature of the protest intended. A copy of the petition
+must be served upon the applicant in accordance with
+CFR 1.248. The petition should be directed to the
+Office of Petitions.
-Example 8:
+If the protest of a reissue application cannot be filed
+within the 2-month delay period, the protestor may
+petition to request (A) an extension of the 2-month
+period following the announcement in the Official
+Gazette, and (B) a delay of the examination until the
+extended period expires. Such a request will be considered
+only if filed in the form of a petition under
+CFR 1.182 and accompanied by the petition fee set
+forth in 37 CFR 1.17(f). The petition under 37 CFR
+.182 and the petition fee must be filed prior to the
+expiration of the 2-month period following the
+announcement of the filing of the reissue application
+in the Official Gazette. The petition must explain why
+the additional time is necessary and the nature of the
+protest intended. A copy of the petition must be
+served upon applicant in accordance with 37 CFR
+.248. The petition should be directed to the appropriate
+Technology Center (TC) which will forward the
+petition to the Office of Patent Legal Administration.
-A reissue application was pending at the time of
+If the protest is a “REISSUE LITIGATION” protest,
-the effective date of the amendment to 37 CFR
+it is particularly important that it be filed early if
-.178. An original letters patent was submitted,
+protestor wishes it considered at the time the Office
-and the reissue application then issued as a reissue
+first acts on the reissue application. Protestors should
-patent. After the reissue patent issues, the request
+be aware that the Office will entertain petitions from
-for return of the original letters patent is made.
+the reissue applicants under 37 CFR 1.182 to waive
-Once again, the Office may return the original letters
+the 2-month delay period in appropriate circumstances.
-patent, but only if the request is accompanied
+Accordingly, protestors to reissue applications
-by a grantable petition under 37 CFR 1.59(b).
+cannot automatically assume that the full 2-
+month delay period will always be available.
-Example 9:
+The Technology Center (TC) to which the reissue
+application is assigned is listed in the Official Gazettenotice of filing of the reissue application. Accordingly,
-A reissue application issued as a reissue patent
+the indicated TC should retain jurisdiction
-prior to the effective date of the amendment to
+over the reissue application file for 2 months after
+the date of the Official Gazette notice before transferring
-CFR 1.178. The reissue applicant, now the patentee,
+the reissue application under the procedure set
-requests return of the original letters patent
+forth in MPEP §
-that was submitted in the reissue application. In
-this instance, the Office will not return the original
+.08(d).
-letters patent. The original letters patent was submitted
-in reply to a requirement that was in effect
-throughout the pendency of the reissue application.
+The publication of a notice of a reissue application
+in the Official Gazette should be done prior to any
+examination of the reissue application. If an inadvertent
+failure to publish notice of the filing of the reissue
+application in the Official Gazette is recognized later
+in the examination, action should be taken to have the
+notice published as quickly as possible, and action on
+the reissue application may be delayed until 2 months
+after the publication, allowing for any protests to be
+filed.
+See MPEP § 1901.06 for general procedures on
+examiner treatment of protests in reissue applications.
+==1442 Special Status==
-Claim for Benefit Under 35 U.S.C.
+All reissue applications are taken up “special,” and
-(a)-(d) [R-5]
+remain “special” even though applicant does not
+respond promptly.
-PRIORITY UNDER 35 U.S.C. 119(a)-(d) WAS
+All reissue applications, except those under suspension
-PERFECTED IN THE ORIGINAL PATENT
+because of litigation, will be taken up for action
+ahead of other “special” applications; this means that
+all issues not deferred will be treated and responded to
+immediately. Furthermore, reissue applications
+involved in litigation will be taken up for action in
+advance of other reissue applications.
-A “claim” for the benefit of an earlier filing date in
+.01Litigation-Related Reissues [R-5]
-a foreign country under 35 U.S.C. 119(a)-(d) must be
-made in a reissue application, even though such a
-claim was previously made in the application for the
-original patent to be reissued. However, no additional
-certified copy of the foreign application is necessary.
-The procedure is similar to that for “Continuing
-Applications” in MPEP § 201.14(b).
-In addition, 37 CFR 1.63 requires that in any application
+During initial review, the examiner should determine
-in which a claim for foreign priority is made
+whether the patent for which the reissue has
-pursuant to 37 CFR 1.55, the oath or declaration must
+been filed is involved in litigation, and if so, the status
-identify the foreign application for patent or inventors’
+of that litigation. If the examiner becomes aware of
-certificate on which priority is claimed unless
+litigation involving the patent sought to be reissued
-supplied on an application data sheet (37 CFR 1.76),
+during examination of the reissue application, and
-and any foreign applications having a filing date
+applicant has not made the details regarding that litigation
-before that of the application on which priority is
+of record in the reissue application, the examiner,
-claimed, by specifying:
+in the next Office action, will inquire regarding
+the specific details of the litigation.
+Form paragraph 14.06 may be used for such an
+inquiry.
-(A)the application number of the foreign application;
+¶ 14.06 Litigation-Related Reissue
+The patent sought to be reissued by this application [1]
+involved in litigation. Any documents and/or materials which
-(B)the foreign country or intellectual property
-authority; and
-(C)the day, month, and year of the filing of the
-foreign application.
+would be material to patentability of this reissue application are
+required to be made of record in response to this action.
+Due to the related litigation status of this application, EXTENSIONS
+OF TIME UNDER THE PROVISIONS OF 37 CFR
+.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION
+OF THIS APPLICATION.
-The examiner should note that the heading on
+Examiner Note:
-printed copies of the patent will not be carried forward
-to the reissue from the original patent. Therefore,
-it is important that the bibliographic data sheet
-(or the front face of the reissue file wrapper for series
-/ and earlier paper applications) be endorsed by the
-examiner under “FOREIGN APPLICATIONS.” For
-an IFW reissue file, a copy of the bibliographic data
-sheet should be printed from the IFW file history. The
-printed copy should be annotated by the examiner and
-then the annotated copy should be scanned into the
-IFW.
-PRIORITY UNDER 35 U.S.C. 119(a)-(d) IS
+In bracket 1, insert either —is— or —has been—.
-NEWLY PERFECTED IN THE REISSUE APPLICATION
+If additional details of the litigation appear to be
+material to examination of the reissue application, the
+examiner may make such additional inquiries as necessary
+and appropriate.
-A reissue was granted in Brenner v. State of Israel,
+For reissue application files that are maintained in
-F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where
+paper, if the existence of litigation has not already
-the only ground urged was failure to file a certified
+been noted, the examiner should place a prominent
-copy of the original foreign application to obtain the
+notation on the application file to indicate the litigation
-right of foreign priority under 35 U.S.C. 119(a)-(d)
+(1) at the bottom of the face of the file in the box
-before the patent was granted. In Brenner, the claim
+just to the right of the box for the retention label, and
-for priority had been made in the prosecution of the
+(2) on the pink Reissue Notice Card form. For reissue
-original patent, and it was only necessary to submit a
+application files that are maintained in the Image
-certified copy of the priority document in the reissue
+File Wrapper (IFW) system, if the existence of litigation
-application to perfect priority (the claim for priority
+has not already been noted, the examiner should
-must be repeated in the reissue application). Reissue
+print out a copy of the bibliographic data sheet from
-is also available to correct the “error” in failing to take
+the IFW file history and annotate the printed bibliographic
-any steps to obtain the right of foreign priority under
+data sheet such that adequate notice is provided
-U.S.C. 119(a)-(d) before the original patent was
+of the existence of the litigation. The examiner
-granted. See Fontijn v. Okamoto, 518 F.2d 610, 622,
+should place the annotation in a prominent place. The
-USPQ 97, 106 (CCPA 1975) (“a patent may be
+annotated sheet should be scanned into IFW.
-reissued for the purpose of establishing a claim to priority
-which was not asserted, or which was not perfected
-during the prosecution of the original
-application”) In a situation where it is necessary to
-submit for the first time both the claim for priority and
-the certified copy of the priority document in the reissue
-application and the patent to be reissued resulted
-from a utility or plant application filed on or after
-November 29, 2000, the reissue applicant will have to
-file a petition for an unintentionally delayed priority
-claim under 37 CFR 1.55(c) in addition to filing a
-reissue application. See MPEP §
-.14(a).
-Notification of Prior/Concurrent
+Applicants will normally be given 1 month to reply
-Proceedings and Decisions There-
+to Office actions in all reissue applications which are
-on, and of Information Known to
+being examined during litigation, or after litigation
-be Material to Patentability [R-3]
+had been stayed, dismissed, etc., to allow for consideration
+of the reissue by the Office. This 1-month
+period may be extended only upon a showing of clear
+justification pursuant to 37 CFR 1.136(b). The Office
+action will inform applicant that the provisions of
+CFR 1.136(a) are not available. Of course, up to
+months may be set for reply if the examiner determines
+such a period is clearly justified.
-CFR 1.178. Original patent; continuing duty of
+===1442.02 Concurrent Litigation===
-applicant.
+In order to avoid duplication of effort, action in
+reissue applications in which there is an indication of
+concurrent litigation will be suspended automatically
+unless and until it is evident to the examiner, or the
+applicant indicates, that any one of the following
+applies:
+(A)a stay of the litigation is in effect;
-(b)In any reissue application before the Office, the applicant
+(B)the litigation has been terminated;
-must call to the attention of the Office any prior or concurrent proceedings
-in which the patent (for which reissue is requested) is or
-was involved, such as interferences, reissues, reexaminations, or
-litigations and the results of such proceedings (see also
-§
-.173(a)(1)).
-CFR 1.178(b) requires reissue applicants to call
+(C)there are no significant overlapping issues
-to the attention of the Office any prior or concurrent
+between the application and the litigation; or
-proceeding in which the patent (for which reissue is
-requested) is or was involved and the results of such
-proceedings. These proceedings would include interferences,
-reissues, reexaminations, and litigations.
-Litigation would encompass any papers filed in the
-court or issued by the court, which may include, for
-example, motions, pleadings, and court decisions.
-This duty to submit information is continuing, and
-runs from the time the reissue application is filed until
-the reissue application is abandoned or issues as a
-reissue patent.
-In addition, a reissue application is subject to the
+(D)it is applicant’s desire that the application be
-same duty of disclosure requirements as is any other
+examined at that time.
-nonprovisional application. The provisions of 37 CFR
-.63 require acknowledgment in the reissue oath or
-declaration of the “duty to disclose to the Office all
-information known to the [applicants] to be material
-to patentability as defined in §
-.56.” Note that the
-Office imposes no responsibility on a reissue applicant
-to resubmit, in a reissue application, all the “References
-Cited” in the patent for which reissue is
-sought. Rather, applicant has a continuing duty under
-CFR 1.56 to timely apprise the Office of any information
-which is material to the patentability of the
-claims under consideration in the reissue application.
-CFR 1.97 and 37 CFR 1.98 provide a mechanism
+Where any of (A) - (D) above apply, form paragraphs
-to submit information known to applicants to be
+.08-14.10 may be used to deny a suspension
-material to patentability. Information submitted in
+of action in the reissue, i.e., to deny a stay of the reissue
-compliance with 37 CFR 1.97 and 37 CFR 1.98 will
+proceeding.
-be considered by the Office. See MPEP § 609.
-Although a reissue applicant may utilize 37 CFR 1.97and 37 CFR 1.98 to comply with the duty of disclo
+Where none of (A) through (D) above apply, action
+in the reissue application in which there is an indication
+of concurrent litigation will be suspended by the
+examiner. The examiner should consult with the
+Technology Center Special Program Examiner
+prior to suspending action in the reissue. Form paragraph
+.11 may be used to suspend action, i.e., stay
+action, in a reissue application with concurrent litigation.
+An ex parte reexamination proceeding will not be
+stayed where there is litigation. See Ethicon v. Quigg,
+F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).
+Thus, where a reissue application has been merged
+with an ex parte reexamination proceeding, the
+merged proceeding will not be stayed where there is
+litigation. In a merged ex parte reexamination/reissue
+proceeding, the ex parte reexamination will control
+because of the statutory (35 U.S.C. 305) requirement
+that ex parte reexamination proceedings be conducted
+with special dispatch. See MPEP § 2285 and § 2286.
+As to a stay or suspension where reissue proceedings
+are merged with inter partes reexamination proceedings,
+see 37 CFR 1.937 and MPEP § 2686.
+===1442.03 Litigation Stayed===
+All reissue applications, except those under suspension
+because of litigation, will be taken up for action
+ahead of other “special” applications; this means that
+all issues not deferred will be treated and responded to
+immediately. Furthermore, reissue applications
+involved in “stayed litigation” will be taken up for
+action in advance of other reissue applications. Great
+emphasis is placed on the expedited processing of
+such reissue applications. The courts are especially
+interested in expedited processing in the Office where
+litigation is stayed.
+In reissue applications with “stayed litigation,” the
+Office will entertain petitions under 37 CFR 1.182,
-sure required by 37 CFR 1.56, this does not relieve
+which are accompanied by the fee under 37 CFR
-applicant of the duties under 37 CFR 1.175 of, for
+.17(f), to not apply the 2-month delay period
-example, stating “at least one error being relied
+stated in MPEP § 1441. Such petitions are decided by
-upon.”
+the Office of Patent Legal Administration.
-While 37 CFR 1.97(b) provides for the filing of an
-information disclosure statement within 3 months of
-the filing of an application or before the mailing date
-of a first Office action, reissue applicants are encouraged
-to file information disclosure statements at the
-time of filing of the reissue application so that such
-statements will be available to the public during the 2-
-month period provided in MPEP § 1441. Form paragraph
-.11.01 may be used to remind applicant of the
-duties to timely make the Office aware of (A) any
-prior or concurrent proceeding (e.g., litigation or
-Office proceedings) in which the patent to be reissued
-is or was involved, and (B) any information which is
-material to patentability of the claims in the reissue
-application.
-¶ 14.11.01 Reminder of Duties Imposed by 37 CFR
-.178(b) and 37 CFR 1.56
-Applicant is reminded of the continuing obligation under 37
-CFR 1.178(b), to timely apprise the Office of any prior or concurrent
-proceeding in which Patent No. [1] is or was involved. These
-proceedings would include interferences, reissues, reexaminations,
-and litigation.
-Applicant is further reminded of the continuing obligation
+Time-monitoring systems have been put into effect
-under 37 CFR 1.56, to timely apprise the Office of any information
+which will closely monitor the time used by applicants,
-which is material to patentability of the claims under consideration
+protestors, and examiners in processing reissue
-in this reissue application.
+applications of patents involved in litigation in which
+the court has stayed further action. Monthly reports on
-These obligations rest with each individual associated with the
+the status of reissue applications with related litigation
-filing and prosecution of this application for reissue. See also
+are required from each Technology Center (TC).
-MPEP §§ 1404, 1442.01 and 1442.04.
+Delays in reissue processing are to be followed up.
+The TC Special Program Examiner is responsible for
+oversight of reissue applications with related litigation.
-Examiner Note:
+The purpose of these procedures and those deferring
+consideration of certain issues, until all other
+issues are resolved or the application is otherwise
+ready for consideration by the Board of Patent
+Appeals and Interferences (note MPEP § 1448), is to
+reduce the time between filing of the reissue application
+and final action thereon, while still giving all parties
+sufficient time to be heard.
-.This form paragraph is to be used in the first action in a reissue
+===1442.04 Litigation Involving Patent===
-application.
-.In bracket [1], insert the patent number of the original patent
+CFR 1.178. Original patent; continuing duty of
-for which reissue is requested.
+applicant.
-Reissue Files Open to the Public
+(b)In any reissue application before the Office, the applicant
-and, Notice of Filing Reissue Announced
+must call to the attention of the Office any prior or concurrent proceedings
-in, Official Gazette [R-3]
+in which the patent (for which reissue is requested) is or
+was involved, such as interferences, reissues, reexaminations, or
+litigations and the results of such proceedings (see also
+§ 1.173(a)(1)).
-CFR 1.11. Files open to the public.
+Where the patent for which reissue is being sought
+is, or has been, involved in litigation, the applicant
+should bring the existence of such litigation to the
+attention of the Office. 37 CFR 1.178(b). This should
+be done at the time of, or shortly after, the applicant
+files the application, either in the reissue oath or declaration,
+or in a separate paper, preferably accompanying
+the application as filed. Litigation begun after
+filing of the reissue application also should be
+promptly brought to the attention of the Office.
+Litigation encompasses any papers filed in the
+court or issued by the court. This may include, for
+example, motions, pleadings, and court decisions, as
+well as the results of such proceedings. When applicant
+notifies the Office of the existence of the litigation,
+enough information should be submitted so that
+the Office can reasonably evaluate the need for asking
+for further materials in the litigation. Note that the
+existence of supporting materials which may substantiate
+allegations of invalidity should, at least, be fully
+described, and preferably submitted. The Office is not
+interested in receiving voluminous litigation materials
+which are not relevant to the Office’s consideration of
+the reissue application. The status of the litigation
+should be updated in the reissue application as soon as
+significant events happen in the litigation.
+When a reissue application is filed, the examiner
+should determine whether the original patent has been
+adjudicated by a court. The decision(s) of the court,
+and also other papers in the suit, may provide information
+essential to the examination of the reissue.
+Examiners should inform the applicant of the duty to
+supply information as to litigation involving the
+patent. Form paragraph 14.11.01 may be used for this
+purpose. See MPEP § 1418.
-(b)All reissue applications, all applications in which the
+Additionally, the patented file will contain notices
-Office has accepted a request to open the complete application to
+of the filing and termination of infringement suits on
-inspection by the public, and related papers in the application file,
+the patent. Such notices are required by law to be filed
-are open to inspection by the public, and copies may be furnished
+by the clerks of the Federal District Courts. These
-upon paying the fee therefor. The filing of reissue applications,
+notices do not indicate if there was an opinion by the
-other than continued prosecution applications under § 1.53(d) of
+court, nor whether a decision was published. Shepard’s
-reissue applications, will be announced in the Official Gazette.
+Federal Citations and the cumulative digests of
-The announcement shall include at least the filing date, reissue
+the United States Patents Quarterly, both of which are
-application and original patent numbers, title, class and subclass,
+in the Lutrelle F. Parker, Sr., Memorial Law Library,
-name of the inventor, name of the owner of record, name of the
+contain tables of patent numbers giving the citation of
-attorney or agent of record, and examining group to which the
+published decisions concerning the patent.
-reissue application is assigned.
+A litigation computer search by the Scientific and
+Technical Information Center (STIC) should be
+requested by the examiner to determine whether the
+patent has been, or is, involved in litigation. For
+reissue application files that are maintained in paper,
+the “Search Notes” box on the application file wrapper
+is then  completed to indicate that the review
+was conducted. A copy of the STIC search should be
+hole-punched and placed in the reissue file. For
+IFW reissue application files, the “Search Notes” box
+on the OACS “Search Notes” page is annotated to
+indicate that the review was conducted, and the
+OACS “Search Notes” page is then scanned into the
+reissue application file history.
+Additional information or guidance as to making a
+litigation search may be obtained from the library of
+the Office of the Solicitor. Where papers are not otherwise
+conveniently obtainable, the applicant may be
+requested to supply copies of papers and records in
+suits, or the Office of the Solicitor may be requested
+to obtain them from the court. The information thus
+obtained should be carefully considered for its bearing
+on the proposed claims of the reissue, particularly
+when the reissue application was filed in view of the
+holding of a court.
-Under 37 CFR 1.11(b) all reissue applications filed
+If the examiner becomes aware of litigation involving
-after March 1, 1977, are open to inspection by the
+the patent sought to be reissued during examination
-general public, and copies may be furnished upon
+of the reissue application, and applicant has not
-paying the fee therefor. The filing of reissue applications
+made the details regarding that litigation of record in
-(except for continued prosecution applications
+the reissue application, the examiner, in the next
-(CPA’s) filed under 37
+Office action, should inquire regarding the same.
-CFR 1.53(d)) will be
+Form paragraph 14.06 may be used for such an
-announced in the Official Gazette. The announcement
+inquiry. See MPEP § 1442.01.
-gives interested members of the public an opportunity
-to submit to the examiner information pertinent to the
-patentability of the reissue application. The announcement
-includes the filing date, reissue application and
-original patent numbers, title, class and subclass,
-name of the inventor, name of the owner of record,
-name of the attorney or agent of record, and the Technology
-Center (TC) to which the reissue application is
-initially assigned. A TC Director or other appropriate
-Office official may, under appropriate circumstances,
-postpone access to or the making of copies of a
-paper reissue application file, such as, for example,
-to avoid interruption of the examination or other
-review of the application by an examiner.
-IFW reissue application files are open to inspection
+If the additional details of the litigation appear to be
-by the general public by way of Public PAIR via
+material to patentability of the reissue application, the
-the USPTO Internet site. In viewing the images of the
+examiner may make such additional inquiries as necessary
-files, members of the public will be able to view the
+and appropriate.
-entire content of the reissue application file history.
-To access Public PAIR, a member of the public would
-(A) go to the USPTO web site at http://
-www.uspto.gov, (B) click on “Patents”, (C) under
-“Check Status, View Papers…” click on “Status &
-IFW,” and (D) under “Patent Application Information
-Retrieval” enter the reissue application number.
-A notice of a reissue application in the Official
+===1442.05 Court Ordered Filing of Reissue Application===
-Gazette should be published prior to any examination
-of the application. If an inadvertent failure to publish
-notice of the filing of the reissue application in the
-Official Gazette is recognized later in the examination,
-action should be taken to have the notice published
-as quickly as possible, and action on the
-application may be delayed until two months after the
+In most instances, the reissue-examination procedure
+is instituted by a patent owner who voluntarily
+files a reissue application as a consequence of related
+patent litigation. Some Federal district courts in
+earlier decisions have required a patentee-litigant to
+file a reissue application as a consequence of the
+patent litigation. However, the Court of Appeals for
+the Federal Circuit held in Green v. The Rich Iron Co.,
+F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir.
+) that a Federal district court in an infringement
+case could not compel a patentee to seek reissue
+by the USPTO.
+It is to be noted that only a patentee or his or her
+assignee may file a reissue patent application. An
+order by a court for a different party to file a reissue
+will not be binding on the Office.
+==1443 Initial Examiner Review==
+As part of an examiner’s preparation for the examination
+of a reissue application, the Examiner Reissue
-publication, allowing for any protests to be filed. For
+Guide and Checklist should be consulted for basic
-a discussion of protests, see MPEP Chapter 1900.
+guidance and suggestions for handling the prosecution.
+The Technology Center (TC) Special Program
+Examiners (SPREs) should make the Guide and
+Checklist available at the time a reissue application is
+docketed to an examiner.
-The filing of a continued prosecution application
+On initial receipt of a reissue application, the examiner
-(CPA) under 37 CFR 1.53(d) of a reissue application
+should inspect the submission under 37 CFR
-will not be announced in the Official Gazette.
+.172 as to documentary evidence of a chain of title
-Although the filing of a CPA of a reissue application
+from the original owner to the assignee to determine
-constitutes the filing of a reissue application, the
+whether the consent requirement of 37 CFR 1.172 has
-announcement of the filing of such CPA would be
+been met. The examiner will compare the consent and
-redundant in view of the announcement of the filing
+documentary evidence of ownership; the assignee
-of the prior reissue application in the Official Gazetteand the fact that the same application number and file
+indicated by the documentary evidence must be the
-will continue to be used for the CPA.
+same assignee which signed the consent. Also, the
+person who signs the consent for the assignee and the
-If applicant files a Request for Continued Examination
+person who signs the submission of evidence of ownership
-(RCE) of the reissue application under 37 CFR
+for the assignee must both be persons having
-.114 (which can be filed on or after May 29, 2000 for
+authority to do so. See also MPEP § 324.
-a reissue application filed on or after June 8, 1995),
-such filing will not be announced in the Official
-Gazette. An RCE continues prosecution of the existing
-reissue application and is not a filing of a new
-application.
+Where the application is assigned, and there is no
+submission under 37 CFR 1.172 as to documentary
+evidence in the application, the examiner should
+require the submission using form paragraph 14.16.
+Once the submission under 37 CFR 1.172 as to documentary
+evidence is received, it must be compared
+with the consent to determine whether the assignee
+indicated by the documentary evidence is the same
+assignee which signed the consent. See MPEP
+§ 1410.01 for further discussion as to the required
+consent and documentary evidence.
+Where there is a statement of record that the application
+is not assigned, there should be no submission
+under 37
+CFR 1.172 as to documentary evidence of
+ownership in the application, and none should be
+required by the examiner.
 The filing of all reissue applications, except for
-CPAs filed under 37 CFR 1.53(d), (note that effective
+continued prosecution applications (CPAs) filed under
-July 14, 2003, CPA practice has been eliminated as to
+CFR 1.53(d), must be announced in the Official
-utility and plant application) will be announced in the
+Gazette. Accordingly, for any reissue application
-Official Gazette and will include certain identifying
+other than a CPA, the examiner should determine if
-data as specified in 37 CFR 1.11(b). Access to a reissue
+the filing of the reissue application has been
-application that is maintained in paper must be
+announced in the Official Gazette as provided in
-obtained from the area of the Office having jurisdiction
+CFR 1.11(b). The contents entry on the PALM
-over the reissue application file.
+Intranet Contents screen should be checked for the
+presence of “NRE” and “NOTICE OF REISSUE
+PUBLISHED IN OFFICIAL GAZETTE” entries in
+the contents, and the date of publication. Where the
+reissue application is maintained in a paper file, the
+date of the Official Gazette notice can usually be
+found on the pink “REISSUE” tag which protrudes
+from the top of the application file of 08/ or earlier
+series.  For 09/ and later series reissue applications,
+the Official Gazette publication date appears on the
+face of the file wrapper.  If the filing of the reissue
+application has not been announced in the Official
+Gazette, the reissue application should be returned to
+the Office of Initial Patent Examination (Special Processing)
+to handle the announcement. The examiner
+should not further act on the reissue until 2 months
+after announcement of the filing of the reissue has
+appeared in the Official Gazette. See MPEP § 1440.
-For reissue application files that are maintained in
+The examiner should determine if there is concurrent
-paper, the following access procedure will be
+litigation, and if so, the status thereof (MPEP
-observed:
+§ 1442.01), and whether the reissue file wrapper
+(for reissue application files maintained in paper) or
+file history (for IFW reissue applications) has been
+appropriately marked. Note MPEP § 1404.
-(A) Any member of the general public may
+The examiner should determine if a protest has
-request access to a particular reissue application filed
+been filed, and if so, it should be handled as set forth
-after March 1, 1977.  Since no record of such
+in MPEP § 1901.06. For a discussion of protests
-request is intended to be kept, an oral request will suffice.
+under 37 CFR 1.291 in reissue applications, see
-Reissue applications already on file prior to
+MPEP § 1441.01.
-March 1, 1977 are not automatically open to inspection,
-but a liberal policy is followed by the Office of
-Patent Legal Administration and by the Board of
-Patent Appeals and Interferences (see MPEP
-§
-.02(b)) in granting petitions for access to such
-applications.
-(B)Paper reissue application files will be
+The examiner should determine whether the patent
-maintained in the TCs and inspection thereof will be
+is involved in an interference, and if so, should refer
-supervised by TC personnel. Although no general
+to MPEP § 1449.01 before taking any action on the
-limit is placed on the amount of time spent reviewing
+reissue application.
-the files, the Office may impose limitations, if necessary,
-e.g., where the application is actively being processed.
+The examiner should verify that all Certificate of
+Correction changes have been properly incorporated
+into the reissue application. See MPEP § 1411.01.
-(C)Where the reissue application file has left
+The examiner should verify that the patent on
-the TC for administrative processing, requests for
+which the reissue application is based has not expired,
-access should be directed to the appropriate supervisory
+either because its term has run or because required
-personnel where the application is currently
+maintenance fees have not been paid. Once a patent
-located.
+has expired, the Director of the USPTO no longer has
+the authority under 35 U.S.C. 251 to
+reissue the patent. See In re Morgan, 990 F.2d 1230, 26 USPQ2d
+(Fed. Cir. 1992). See also MPEP § 1415.01.
-(D)Requests for copies of papers in the reissue
+==1444 Review of Reissue Oath/Declaration==
-application file must be in writing and addressed to
-the Mail Stop Document Services, Director of the
-United States Patent and Trademark Office, P.O. Box
-, Alexandria, VA 22313-1450. Such requests
-may be either mailed or delivered to the Office Customer
-Service Window (See MPEP § 502). The price
-for copies made by the Office is set forth in 37 CFR
-.19.
-Examination of Reissue Application
+In accordance with 37 CFR 1.175, the following is
-[R-3]
+required in the reissue oath/declaration:
-CFR 1.176. Examination of reissue.
+(A)A statement that the applicant believes the
+original patent to be wholly or partly inoperative or
+invalid-
-(a)A reissue application will be examined in the same manner
+(1)by reason of a defective specification or
-as a non-reissue, non-provisional application, and will be subject
+drawing, or
-to all the requirements of the rules related to non-reissue
-applications. Applications for reissue will be acted on by the
-examiner in advance of other applications.
-(b)Restriction between subject matter of the original patent
+(2)by reason of the patentee claiming more or
-claims and previously unclaimed subject matter may be required
+less than patentee had the right to claim in the patent;
-(restriction involving only subject matter of the original patent
-claims will not be required). If restriction is required, the subject
-matter of the original patent claims will be held to be constructively
-elected unless a disclaimer of all the patent claims is filed in
-the reissue application, which disclaimer cannot be withdrawn by
-applicant.
-CFR 1.176 provides that an original claim, if re-
+(B)A statement of at least one error which is
-presented in a reissue application, will be fully examined
+relied upon to support the reissue application, i.e.,
-in the same manner, and subject to the same rules
+which provides a basis for the reissue;
-as if being presented for the first time in an original
-non-reissue, nonprovisional application, except that
-division will not be required by the examiner. See
-MPEP § 1450 and § 1451. Reissue applications are
-normally examined by the same examiner who issued
-the patent for which reissue is requested. In addition,
-the application will be examined with respect to compliance
-with 37 CFR 1.171-1.178 relating specifically
-to reissue applications, for example, the reissue
-oath or declaration will be carefully reviewed for
-compliance with 37 CFR 1.175. See MPEP § 1444 for
-handling applications in which the oath or declaration
+(C)A statement that all errors which are being
+corrected in the reissue application up to the time of
+filing of the oath/declaration arose without any deceptive
+intention on the part of the applicant; and
+(D)The information required by 37 CFR 1.63.
+MPEP § 1414 contains a discussion of each of the
+above elements (i.e., requirements of a reissue oath/
+declaration). The examiner should carefully review
+the reissue oath/declaration in conjunction with that
+discussion, in order to ensure that each element is provided
+in the oath/declaration. If the examiner’s review
+of the oath/declaration reveals a lack of compliance
+with any of the requirements of 37 CFR 1.175, a
+rejection of all the claims under 35
+U.S.C. 251 should
+be made on the basis that the reissue oath/declaration
+is insufficient.
+In preparing an Office action, the examiner should
+use form paragraphs 14.01 through 14.01.04 to state
+the objection(s) to the oath/declaration, i.e., the
+defects in the oath/declaration. These form paragraphs
+are reproduced in MPEP § 1414. The examiner should
+then use form paragraph 14.14 to reject the claims
+under 35 U.S.C. 251, based upon the improper oath/
+declaration.
-lacks compliance with 37 CFR 1.175. Reissue applications
+A lack of signature on a reissue oath/declaration
-with related litigation will be acted on by the
+(except as otherwise provided in 37 CFR 1.42, 1.43,
-examiner before any other special applications, and
+and 1.47 and in 37 CFR 1.172) would be considered a
-will be acted on immediately by the examiner, subject
+lack of compliance with 37 CFR 1.175(a) and result in
-only to a 2-month delay after publication for examining
+a rejection, including final rejection, of all the claims
-reissue applications; see MPEP § 1441.
+on the basis that the reissue oath/declaration is insufficient.
+If the unsigned reissue oath/declaration is submitted
+as part of a reply which is otherwise properly
+signed and responsive to the outstanding Office
+action, the reply should be accepted by the examiner
+as proper and responsive, and the oath/declaration
+considered fully in the next Office action. The reply
+should not be treated as an unsigned or improperly
+signed amendment (see MPEP § 714.01(a)), nor do
+the holdings of Ex parte Quayle apply in this situation.
+The lack of signature, along with any other oath/
+declaration deficiencies, should be noted in the next
+Office action rejecting the claims as being based upon
+an insufficient reissue oath/declaration.
-The original patent file wrapper /file history should
+I.HANDLING OF THE REISSUE OATH/
-always be obtained and reviewed when examining a
+DECLARATION DURING THE REISSUE
-reissue application thereof.
+PROCEEDING
-Two-Month Delay Period [R-3]
+An initial reissue oath/declaration is submitted with
+the reissue application (or within the time period set
-CFR 1.176 provides that reissue applications
+for filing the oath/declaration in a Notice To File
-will be acted on by the examiner in advance of other
+Missing Parts under 37 CFR 1.53(f)). Where the reissue
-applications, i.e., “special.” Generally, a reissue application
+oath/declaration fails to comply with 37 CFR
-will not be acted on sooner than 2 months after
+.175(a), the examiner will so notify the applicant in
-announcement of the filing of the reissue has
+an Office action, rejecting the claims under 35 U.S.C.
-appeared in the Official Gazette. The 2-month delay is
+as discussed above. In reply to the Office action, a
-provided in order that members of the public may
+supplemental reissue oath/declaration should be submitted
-have time to review the reissue application and submit
+dealing with the noted defects in the reissue
-pertinent information to the Office before the examiner’s
+oath/declaration.
-action. The pertinent information is submitted
-in the form of a protest under 37 CFR 1.291(a). For a
-discussion as to protests under 37 CFR 1.291(a) in
-reissue applications, see MPEP § 1441.01. As set
-forth in MPEP § 1901.04, the public should be aware
-that such submissions should be made as
-early as possible,
-since, under certain circumstances, the 2-month
-delay period will not be employed. For example, the
-Office may act on a continuation or a divisional reissue
-application prior to the expiration of the 2-month
-period after announcement. Additionally, the Office
-will entertain a petition under 37 CFR 1.182 which is
-accompanied by the required petition fee (37
-CFR
-.17(f)) to act on a reissue application without
-delaying for 2 months. Accordingly, protestors to reissue
-applications (see MPEP § 1441.01) cannot automatically
-assume that a full 2-month delay period will
-always be available. Appropriate reasons for requesting
-that the 2-month delay period not be employed
-include that litigation involving a patent has been
-stayed to permit the filing of an application for the
-reissue of the patent. Where the basis for the petition
-is ongoing litigation, the petition must clearly
-identify the litigation, and detail the specifics of the
-litigation that call for prompt action on the reissue
-application prior to the expiration of the 2-month
-delay period. Such petitions are decided by the
-Office of Patent Legal Administration.
-.01Protest in Reissue Applications[R-3]
+Where the initial reissue oath/declaration (1) failed
+to provide any error statement, or (2) attempted to
-A protest pursuant to 37 CFR 1.291 may be
+provide an error statement, but failed to identify any
-filed throughout the pendency of a reissue application,
+error under 35 U.S.C. 251 upon which reissue can be
-prior to the date of mailing of a notice of allowance,
+based (see MPEP § 1402), the examiner should reject
-subject to the timing constraints of the examination,
+all the claims as being based upon a defective reissue
-as set forth in MPEP § 1901.04. While a reissue application
+oath/declaration under 35 U.S.C. 251. To support the
-is not published under 37 CFR 1.211, the reissue
+rejection, the examiner should specifically point out
-application is published pursuant to 35 U.S.C.
+the failure of the initial oath/declaration to comply
-(b)(1)(A) via an announcement in the Official
+with 37 CFR 1.175 because an “error” under
-Gazette (and public availability of the file content) per
+U.S.C. 251 upon which reissue can be based was
-CFR 1.11(b). Such a publication does not preclude
+not identified therein. In reply to the rejection under
-the filing of a protest. 35 U.S.C. 122(c) states:
+U.S.C. 251, a supplemental reissue oath/declaration
+must be submitted stating an error under
+U.S.C. 251 which can be relied upon to support the
+reissue application. Submission of this supplemental
+reissue oath/declaration to obviate the rejection cannot
+be deferred by applicant until the application is
+otherwise in condition for allowance. In this instance,
+a proper statement of error was never provided in the
+initial reissue oath/declaration, thus a supplemental
+oath/declaration is required in reply to the Office
+action in order to properly establish grounds for reissue.
-“(c) PROTEST AND PRE-ISSUANCE OPPOSITION-
+A different situation may arise where the initial
-The Director shall establish appropriate procedures to
+reissue oath/declaration does properly identify one or
-ensure that no protest or other form of pre-issuance
+more errors under 35 U.S.C. 251 as being the basis for
-opposition to the grant of a patent on an application may be
+reissue, however, because of changes or amendments
-initiated after publication of the application without the
+made during prosecution, none of the identified errors
-express written consent of the applicant.” [Emphasis
+are relied upon any more. A supplemental oath/declaration
-added.]
+will be needed to identify at least one error nowbeing relied upon as the basis for reissue, even though
+the prior oath/declaration was earlier found proper by
+the examiner. The supplemental oath/declaration need
+not also indicate that the error(s) identified in the prior
+oath(s)/declaration(s) is/are no longer being corrected.
+In this instance, applicant’s submission of the supplemental
+reissue oath/declaration to obviate the rejection
+under 35 U.S.C. 251 can, at applicant’s option, be
+deferred until the application is otherwise in condition
+for allowance. The submission can be deferred
+because a proper statement of error was provided in
+the initial reissue oath/declaration. Applicant need
+only request that submission of the supplemental reissue
+oath/declaration be deferred until allowance, and
+such a request will be considered a complete reply to
+the rejection.
-A protest is precluded after publication for an application
+II.SUPPLEMENTAL REISSUE OATH/DECLARATION UNDER 37 CFR 1.175(b)(1):
-for an original patent, as a “form of pre-issuance
-opposition.” A reissue application is a post-
-issuance proceeding. A protest filed in a reissue application
-is not a “form of pre-issuance opposition to the
-grant of a patent” since the patent to be reissued has
-already been granted. Thus, the prohibition against
-the filing of a protest after publication of an application
-under 35 U.S.C. 122(c) is not applicable to a reissue
-application and a protest is permitted after
-publication of the reissue application.
- A protest with regard to a reissue application
+Once the reissue oath/declaration is found to comply
-should be filed within the 2-month period following
+with 37 CFR 1.175(a), it is not required, nor is it
-the announcement of the filing of the reissue application
+suggested, that a new reissue oath/declaration be submitted
-in the Official Gazette. If the protest of a reissue
+together with each new amendment and correction
-application cannot be filed within the 2-month delay
+of error in the patent. During the prosecution of a
-period, the
+reissue application, amendments are often made
-protest can be submitted at a later time.
+and additional errors in the patent are corrected. A
-Where the protest is submitted after the 2-month
+supplemental oath/declaration need not be submitted
-period, no petition for entry of the protest under
+with each amendment and additional correction.
+Rather, it is suggested that the reissue applicant wait
-CFR 1.182 is needed with respect to the protest
+until the case is in condition for allowance, and then
-being submitted after the 2 months, unless a final
+submit a cumulative supplemental reissue oath/declaration
-rejection has been issued or prosecution on the merits
+pursuant to 37 CFR 1.175(b)(1).
-has been otherwise closed for the reissue application.
+See MPEP § 1414.01 for a discussion of the
+required content of a supplemental reissue oath/declaration
+under 37 CFR 1.175(b)(1).
-A potential protestor should be aware that reissue
+A supplemental oath/declaration under 37 CFR
-applications are taken up “special” and a protest
+.175(b)(1) must be submitted before allowance. It
-filed outside the 2-month delay period may be
+may be submitted with any reply prior to allowance. It
+may be submitted to overcome a rejection under
+U.S.C. 251 made by the examiner, where it is indicated
+that the submission of the supplemental oath/
+declaration will overcome the rejection.
+A supplemental oath/declaration under 37 CFR
+.175(b)(1) will be required where:
+(A)the application is otherwise (other than the
+need for this supplemental oath/declaration) in condition
+for allowance;
+(B)amendments or other corrections of errors in
+the patent have been made subsequent to the last oath/
+declaration filed in the application; and
+(C)at least one of the amendments or other corrections
+corrects an error under 35 U.S.C. 251.
-received after action by the examiner. Once the
+When a supplemental oath/declaration under
-first
+CFR 1.175(b)(1) directed to the amendments or
-Office action is mailed (after the 2-month
+other corrections of error is required, the examiner is
-period), a member of the public may still submit pertinent
+encouraged to telephone the applicant and request the
-information in the form of a protest under
+submission of the supplemental oath/declaration by
+fax. If the circumstances do not permit making a telephone
-CFR 1.291, and the examiner will consider the
+call, or if applicant declines or is unable to
-information submitted in the next Office action, to the
+promptly submit the oath/declaration, the examiner
-extent that such consideration is appropriate.
+should issue a final Office action (final rejection) and
-Where a final rejection has been issued or the
+use form paragraph 14.05.02 where the action issued
-prosecution on the merits has been otherwise closed, a
+is a second or subsequent action on the merits.
-petition under 37 CFR 1.182 along with the required
-petition fee (37 CFR 1.17(f)) for entry of the protest
-are required. The petition must include an explanation
-as to why the additional time was necessary and the
-nature of the protest intended. A copy of the petition
-must be served upon the applicant in accordance with
-CFR 1.248. The petition should be directed to the
-Office of Petitions.
-If the protest of a reissue application cannot be filed
+As noted above, the examiner will issue a final
-within the 2-month delay period, the protestor may
+Office action where the application is otherwise in
-petition to request (A) an extension of the 2-month
+condition for allowance, and amendments or other
-period following the announcement in the Official
+corrections of error in the patent have been made subsequent
-Gazette, and (B) a delay of the examination until the
+to the last oath/declaration filed in the application.
-extended period expires. Such a request will be considered
+The examiner will be introducing (via form
-only if filed in the form of a petition under
+paragraph 14.05.02) a rejection into the case for the
+first time in the prosecution, when the claims have
-CFR 1.182 and accompanied by the petition fee set
+been determined to be otherwise allowable. This
-forth in 37 CFR 1.17(f). The petition under 37 CFR
+introduction of a new ground of rejection under
-.182 and the petition fee must be filed prior to the
-expiration of the 2-month period following the
+U.S.C. 251 will not prevent the action from being
-announcement of the filing of the reissue application
+made final on a second or subsequent action because
-in the Official Gazette. The petition must explain why
+of the following factors:
-the additional time is necessary and the nature of the
-protest intended. A copy of the petition must be
-served upon applicant in accordance with 37 CFR
-.248. The petition should be directed to the appropriate
-Technology Center (TC) which will forward the
-petition to the Office of Patent Legal Administration.
-If the protest is a “REISSUE LITIGATION” protest,
+(A)The finding of the case in condition for allowance
-it is particularly important that it be filed early if
+is the first opportunity that the examiner has to
-protestor wishes it considered at the time the Office
+make the rejection;
-first acts on the reissue application. Protestors should
-be aware that the Office will entertain petitions from
-the reissue applicants under 37 CFR 1.182 to waive
-the 2-month delay period in appropriate circumstances.
-Accordingly, protestors to reissue applications
-cannot automatically assume that the full 2-
-month delay period will always be available.
-The Technology Center (TC) to which the reissue
+(B)The rejection is being made in reply to, i.e.,
-application is assigned is listed in the Official Gazettenotice of filing of the reissue application. Accordingly,
+was caused by, an amendment of the application (to
-the indicated TC should retain jurisdiction
+correct errors in the patent);
-over the reissue application file for 2 months after
-the date of the Official Gazette notice before transferring
-the reissue application under the procedure set
-forth in MPEP §
-.08(d).
-The publication of a notice of a reissue application
+(C)All applicants are on notice that this rejection
-in the Official Gazette should be done prior to any
+will be made upon finding of the case otherwise in
-examination of the reissue application. If an inadvertent
+condition for allowance where errors have been corrected
-failure to publish notice of the filing of the reissue
+subsequent to the last oath/declaration filed in
-application in the Official Gazette is recognized later
+the case, so that the rejection should have been
-in the examination, action should be taken to have the
+expected by applicant; and
-notice published as quickly as possible, and action on
-the reissue application may be delayed until 2 months
-after the publication, allowing for any protests to be
-filed.
-See MPEP § 1901.06 for general procedures on
+(D)The rejection will not prevent applicant from
-examiner treatment of protests in reissue applications.
+exercising any rights to cure the rejection, since applicant
+need only submit a supplemental oath/declaration
+with the above-described language, and it will be
+entered to cure the rejection.
-Special Status
+Where the application is in condition for allowance
+and no amendments or other corrections of error
+in the patent have been made subsequent to the
+last oath/declaration filed in the application, a supplemental
+reissue oath/declaration under 37 CFR
+.175(b)(1) should not be required by the examiner.
+Instead, the examiner should issue a Notice of
+Allowability indicating allowance of the claims.
-All reissue applications are taken up “special,” and
+III.AFTER ALLOWANCE
-remain “special” even though applicant does not
-respond promptly.
-All reissue applications, except those under suspension
+Where applicant seeks to correct an error after
-because of litigation, will be taken up for action
+allowance of the application, any amendment of the
-ahead of other “special” applications; this means that
+patent correcting the error must be submitted in accordance
-all issues not deferred will be treated and responded to
+with 37 CFR 1.312. As set forth in 37 CFR
-immediately. Furthermore, reissue applications
+.312, no amendment may be made as a matter of
-involved in litigation will be taken up for action in
+right in an application after the mailing of the notice
-advance of other reissue applications.
+of allowance. An amendment filed under 37 CFR
+.312 must be filed before or with the payment of the
+issue fee and may be entered on the recommendation
+of the primary examiner, and approved by the supervisory
+patent examiner, without withdrawing the case
+from issue.
-.01Litigation-Related Reissues [R-5]
+Because the amendment seeks to correct an error in
+the patent, the amendment will affect the disclosure,
+the scope of a claim, or add a claim. Thus, in accordance
+with MPEP § 714.16, the remarks accompanying
+the amendment must fully and clearly state:
-During initial review, the examiner should determine
+(A)why the amendment is needed;
-whether the patent for which the reissue has
-been filed is involved in litigation, and if so, the status
-of that litigation. If the examiner becomes aware of
-litigation involving the patent sought to be reissued
-during examination of the reissue application, and
-applicant has not made the details regarding that litigation
-of record in the reissue application, the examiner,
-in the next Office action, will inquire regarding
-the specific details of the litigation.
-Form paragraph 14.06 may be used for such an
+(B)why the proposed amended or new claims
-inquiry.
+require no additional search or examination;
-¶ 14.06 Litigation-Related Reissue
+(C)why the claims are patentable; and
-The patent sought to be reissued by this application [1]
+(D)why they were not presented earlier.
-involved in litigation. Any documents and/or materials which
+A supplemental reissue oath/declaration must
+accompany the amendment. The supplemental reissue
+oath/declaration must state that the error(s) to be corrected
+arose without any deceptive intention on the
+part of the applicant. The supplemental reissue oath/
+declaration submitted after allowance must be
+directed to the error(s) applicant seeks to correct after
+allowance. This oath/declaration need not cover any
+earlier errors, since all earlier errors should have been
+covered by a reissue oath/declaration submitted prior
+to allowance.
+Occasionally correcting an error after allowance
+does not include an amendment of the specification or
+claims of the patent. For example, the correction of
+the error could be the filing of a certified copy of the
+original foreign application (prior to the payment of
+the issue fee - see 37 CFR 1.55(a)(2)) to obtain the
+right of foreign priority under 35 U.S.C. 119 (see
+Brenner v. State of Israel, 400 F.2d 789, 158 USPQ
+(D.C. Cir. 1968)) where the claim for foreign priority
+had been timely made in the application for the
+original patent. In such a case, the requirements of
+CFR 1.312 must still be met. This is so, because
+the correction of the patent is an amendment of the
+patent, even though no amendment is physically
+entered into the case. Thus, for a reissue oath/declaration
+submitted after allowance to correct an additional
+error (or errors), the reissue applicant must comply
+with 37 CFR 1.312 in the manner discussed above.
+==1445 Reissue Application Examined in Same Manner as Original Application==
+As stated in 37 CFR 1.176, a reissue application,
+including all the claims therein, is subject to “be
-would be material to patentability of this reissue application are
+examined in the same manner as a non-reissue, non-
-required to be made of record in response to this action.
+provisional application.” Accordingly, the claims in a
+reissue application are subject to any and all rejections
+which the examiner deems appropriate. It does
+not matter whether the claims are identical to those of
+the patent or changed from those in the patent. It also
+does not matter that a rejection was not made in the
+prosecution of the patent, or could have been made, or
+was in fact made and dropped during prosecution of
+the patent; the prior action in the prosecution of the
+patent does not prevent that rejection from being
+made in the reissue application. Claims in a reissue
+application enjoy no “presumption of validity.” In re
+Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233
+(CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4,
+USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise,
+the fact that during prosecution of the patent the
+examiner considered, may have considered, or should
+have considered information such as, for example, a
+specific prior art document, does not have any bearing
+on, or prevent, its use as prior art during prosecution
+of the reissue application.
-Due to the related litigation status of this application, EXTENSIONS
+==1448 Fraud, Inequitable Conduct, or Duty of Disclosure Issues==
-OF TIME UNDER THE PROVISIONS OF 37 CFR
-.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION
-OF THIS APPLICATION.
-Examiner Note:
+The Office no longer investigates and rejects reissue
+applications under 37 CFR 1.56. The Office will
+not comment upon duty of disclosure issues which are
+brought to the attention of the Office in reissue applications
+except to note in the application, in appropriate
+circumstances, that such issues are no longer
+considered by the Office during its examination of
+patent applications. Examination as to the lack of
+deceptive intent requirement in reissue applications
+will continue but without any investigation of fraud,
+inequitable conduct, or duty of disclosure issues.
+Applicant’s statement in the reissue oath or declaration
+of lack of deceptive intent will be accepted as dispositive
+except in special circumstances such as an
+admission or judicial determination of fraud, inequitable
+conduct, or violation of the duty of disclosure.
-In bracket 1, insert either —is— or —has been—.
+ADMISSION OR JUDICIAL DETERMINATION
-If additional details of the litigation appear to be
+An admission or judicial determination of fraud,
-material to examination of the reissue application, the
+inequitable conduct, or violation of the duty of disclosure
-examiner may make such additional inquiries as necessary
+is a special circumstance, because no investigation
-and appropriate.
+need be made. Accordingly, after consulting with
+the Technology Center (TC) Special Program Examiner
+(SPRE), a rejection should be made using the
+appropriate one of form paragraphs 14.21.09 or 14.22as reproduced below.
-For reissue application files that are maintained in
+Any admission of fraud, inequitable conduct or violation
-paper, if the existence of litigation has not already
+of the duty of disclosure must be explicit,
-been noted, the examiner should place a prominent
+unequivocal, and not subject to other interpretation.
-notation on the application file to indicate the litigation
+Where a rejection is made based upon such an admission and applicant
-(1) at the bottom of the face of the file in the box
+responds with any reasonable interpretation of the
-just to the right of the box for the retention label, and
+facts that would not lead to a conclusion of fraud,
-(2) on the pink Reissue Notice Card form. For reissue
+inequitable conduct or violation of the duty of disclosure,
-application files that are maintained in the Image
+the rejection should be withdrawn. Alternatively,
-File Wrapper (IFW) system, if the existence of litigation
+if applicant argues that the admission noted by the
-has not already been noted, the examiner should
+examiner was not in fact an admission, the rejection
-print out a copy of the bibliographic data sheet from
+should also be withdrawn.
-the IFW file history and annotate the printed bibliographic
-data sheet such that adequate notice is provided
+See MPEP § 2012 for additional discussion as to
-of the existence of the litigation. The examiner
+fraud, inequitable conduct or violation of duty of disclosure
-should place the annotation in a prominent place. The
+in a reissue application.
-annotated sheet should be scanned into IFW.
-Applicants will normally be given 1 month to reply
+==1449 Protest Filed in Reissue Where Patent Is in Interference==
-to Office actions in all reissue applications which are
-being examined during litigation, or after litigation
-had been stayed, dismissed, etc., to allow for consideration
-of the reissue by the Office. This 1-month
-period may be extended only upon a showing of clear
-justification pursuant to 37 CFR 1.136(b). The Office
-action will inform applicant that the provisions of
-CFR 1.136(a) are not available. Of course, up to
-months may be set for reply if the examiner determines
-such a period is clearly justified.
-.02Concurrent Litigation [R-5]
+If a protest (see MPEP Chapter 1900) is filed in a
+reissue application related to a patent involved in a
+pending interference proceeding, the reissue application
+should be referred to the Office of Patent Legal
+Administration (OPLA) before considering the protest
+and acting on the reissue application.
-In order to avoid duplication of effort, action in
+The OPLA will check to see that:
-reissue applications in which there is an indication of
-concurrent litigation will be suspended automatically
-unless and until it is evident to the examiner, or the
-applicant indicates, that any one of the following
-applies:
-(A)a stay of the litigation is in effect;
+(A)all parties to the interference are aware of the
+filing of the reissue; and
-(B)the litigation has been terminated;
+(B)the Office does not allow claims in the reissue
+which are unpatentable over the pending interference
+count(s), or found unpatentable in the interference
+proceeding. After the reissue application has been
+reviewed by the OPLA, the reissue application with
+the protest will be returned to the examiner. See
+MPEP § 1441.01 for a discussion as to protests under
+CFR 1.291 in reissue applications.
-(C)there are no significant overlapping issues
+===1449.01 Concurrent Office Proceedings===
-between the application and the litigation; or
-(D)it is applicant’s desire that the application be
+I.CONCURRENT REEXAMINATION PROCEEDINGS:
-examined at that time.
-Where any of (A) - (D) above apply, form paragraphs
+CFR 1.565(d) provides that if “a reissue application
-.08-14.10 may be used to deny a suspension
+and an ex parte reexamination proceeding on
-of action in the reissue, i.e., to deny a stay of the reissue
+which an order pursuant to 37 CFR 1.525 has been
-proceeding.
+mailed are pending concurrently on a patent, a decision
+will normally be made to merge the two proceedings
+or to suspend one of the two proceedings.”
+CFR 1.991 provides that if “a reissue application
+and an inter partes reexamination proceeding on
+which an order pursuant to 37 CFR 1.931 has been
+mailed are pending concurrently on a patent, a decision
+may be made to merge the two proceedings or to
+suspend one of the two proceedings”. If an examiner
+becomes aware that a reissue application and an ex
+parte or inter partes reexamination proceeding are
+both pending for the same patent, he or she should
+immediately inform the Technology Center (TC)
+or Central Reexamination Unit (CRU) Special Program
+Examiner (SPRE).
-¶ 14.08 Action in Reissue Not Stayed — Related Litigation
+Pursuant to 37 CFR 1.177, a patent owner may file
-Terminated
+more than one reissue application for the same patent.
+If an examiner becomes aware that multiple reissue
+applications are pending for the same patent, and an
+ex parte or inter partes reexamination proceeding is
+pending for the same patent, he or she should immediately
+inform the TC SPRE.
-Since the litigation related to this reissue application is terminated
+Where a reissue application and a reexamination
-and final, action in this reissue application will NOT be
+proceeding are pending concurrently on a patent, and
-stayed. Due to the related litigation status of this reissue application,
+an order granting reexamination has been issued for
-EXTENSIONS OF TIME UNDER THE PROVISIONS OF
+the reexamination proceeding, the Office of Patent
-CFR 1.136(a) WILL NOT BE PERMITTED.
+Legal Administration (OPLA) must be notified that
+the proceedings are ready for a decision as to whether
+to merge the reissue and the reexamination, or stay
+one of the two. See MPEP § 2285 for the
+procedure of
+notifying OPLA and general guidance, if a reissue
+application and an ex parte reexamination proceeding
+are both pending for the same patent, and
+an inter
+partes reexamination proceeding is not involved. See
+MPEP § 2686.03 where a reissue application and an
+inter partes reexamination proceeding are both pending
+for the same patent, regardless of whether an ex
+parte reexamination proceeding is also pending.
-¶ 14.09 Action in Reissue Not Stayed — Related Litigation
+Where a reissue application and a reexamination
-Not Overlapping
+proceeding are pending concurrently on a patent, the
+patent owner, i.e., the reissue applicant, has a responsibility
-While there is concurrent litigation related to this reissue application,
+to notify the Office of the concurrent proceeding.
-action in this reissue application will NOT be stayed
+CFR § 1.178(b), 37 CFR 1.565(a), and
-because there are no significant overlapping issues between the
-application and that litigation. Due to the related litigation status
+CFR 1.985(a). The patent owner should file in the
-of this reissue application, EXTENSIONS OF TIME UNDER
+reissue application, as early as possible, a Notification
-THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
+of Concurrent Proceedings pursuant to 37 CFR
+.178(b) in order to alert the Office of the existence of
+the reexamination proceeding on the same patent. See
-¶ 14.10 Action in Reissue Not Stayed — Applicant’s
+MPEP § 1418. In addition, the patent owner should
-Request
+file in the reexamination proceeding, as early as possible,
+a Notification of Concurrent Proceedings pursuant
-While there is concurrent litigation related to this reissue application,
+to 37 CFR 1.565(a) or 1.985(a) (depending on
-action in this reissue application will NOT be stayed
+whether the reexamination proceeding is an ex partereexamination proceeding or an inter partes reexamination
-because of applicant's request that the application be examined at
+proceeding) to provide a notification to the
-this time. Due to the related litigation status of this reissue application,
+Office in the reexamination proceeding of the existence
-EXTENSIONS OF TIME UNDER THE PROVISIONS
+of the two concurrent proceedings.
-OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
+The patent owner may file a petition under 37 CFR
-Where none of (A) through (D) above apply, action
+.182 in a reissue application to merge the reissue
-in the reissue application in which there is an indication
+application with the reexamination proceeding, or to
-of concurrent litigation will be suspended by the
+stay one of the proceedings because of the other. This
-examiner. The examiner should consult with the
+petition must be filed after the issuance of the order to
-Technology Center Special Program Examiner
+reexamine (37 CFR 1.525, 37 CFR 1.931) in the reexamination
-prior to suspending action in the reissue. Form paragraph
+proceeding. If the petition is filed prior to
-.11 may be used to suspend action, i.e., stay
+the reexamination order, it will not be considered, and
-action, in a reissue application with concurrent litigation.
+will be returned to the patent owner by the TC or
+CRU Director. If the petition is filed after the issuance
+of the order to reexamine, the petition and the
+files for the reissue application and the reexamination
+proceeding will be forwarded to OPLA for decision.
+II.CONCURRENT INTERFERENCE PROCEEDINGS
+If the original patent is involved in an interference,
+the examiner must consult the administrative patent
+judge in charge of the interference before taking any
+action on the reissue application. It is particularly
+important that the reissue application not be granted
+without the administrative patent judge’s approval.
+See MPEP Chapter 2300.
-¶ 14.11 Action in Reissue Stayed - Related Litigation
+III.CONCURRENT REISSUE PROCEEDINGS
-In view of concurrent litigation, and in order to avoid duplication
+Where more than one reissue applications are pending
-of effort between the two proceedings, action in this reissue
+concurrently on the same patent, see MPEP
-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
+and 1451.
-issues between the application and the litigation, or (4) applicant
-requests that the application be examined.
+.02Interference in Reissue [R-5]
+CFR 41.8. Mandatory notices.
+(a)In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the
+initiation of a contested case (§ 41.101), and within 20 days of any
+change during the proceeding, a party must identify:
+(1)Its real party-in-interest, and
-An ex parte reexamination proceeding will not be
+(2)Each judicial or administrative proceeding that could
-stayed where there is litigation. See Ethicon v. Quigg,
+affect, or be affected by, the Board proceeding.
-F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).
-Thus, where a reissue application has been merged
-with an ex parte reexamination proceeding, the
-merged proceeding will not be stayed where there is
-litigation. In a merged ex parte reexamination/reissue
-proceeding, the ex parte reexamination will control
-because of the statutory (35 U.S.C. 305) requirement
-that ex parte reexamination proceedings be conducted
-with special dispatch. See MPEP §
-and § 2286.
-As to a stay or suspension where reissue proceedings
-are merged with inter partes reexamination proceedings,
-see 37 CFR 1.937 and MPEP § 2686.
-.03Litigation Stayed [R-3]
+(b)For contested cases, a party seeking judicial review of a
+Board proceeding must file a notice with the Board of the judicial
+review within 20 days of the filing of the complaint or the notice
+of appeal. The notice to the Board must include a copy of the
+complaint or notice of appeal. See also §§ 1.301 to 1.304 of this
+title.
-All reissue applications, except those under suspension
+CFR 41.202. Suggesting an interference.
-because of litigation, will be taken up for action
-ahead of other “special” applications; this means that
-all issues not deferred will be treated and responded to
-immediately. Furthermore, reissue applications
-involved in “stayed litigation” will be taken up for
-action in advance of other reissue applications. Great
-emphasis is placed on the expedited processing of
-such reissue applications. The courts are especially
-interested in expedited processing in the Office where
-litigation is stayed.
-In reissue applications with “stayed litigation,” the
+(a)Applicant. An applicant, including a reissue applicant,
-Office will entertain petitions under 37 CFR 1.182,
+may suggest an interference with another application or a patent.
-which are accompanied by the fee under 37 CFR
+The suggestion must:
-.17(f), to not apply the 2-month delay period
-stated in MPEP § 1441. Such petitions are decided by
-the Office of Patent Legal Administration.
-Time-monitoring systems have been put into effect
+(1)Provide sufficient information to identify the application
-which will closely monitor the time used by applicants,
+or patent with which the applicant seeks an interference,
-protestors, and examiners in processing reissue
-applications of patents involved in litigation in which
-the court has stayed further action. Monthly reports on
-the status of reissue applications with related litigation
-are required from each Technology Center (TC).
-Delays in reissue processing are to be followed up.
-The TC Special Program Examiner is responsible for
-oversight of reissue applications with related litigation.
+(2)Identify all claims the applicant believes interfere,
+propose one or more counts, and show how the claims correspond
+to one or more counts,
-The purpose of these procedures and those deferring
+(3)For each count, provide a claim chart comparing at
-consideration of certain issues, until all other
+least one claim of each party corresponding to the count and show
-issues are resolved or the application is otherwise
+why the claims interfere within the meaning of § 41.203(a),
-ready for consideration by the Board of Patent
-Appeals and Interferences (note MPEP § 1448), is to
-reduce the time between filing of the reissue application
-and final action thereon, while still giving all parties
-sufficient time to be heard.
-Requests for stays or suspension of action in reissues
+(4)Explain in detail why the applicant will prevail on priority,
-where litigation has been stayed may be
-answered with form paragraph 14.07.
-¶ 14.07 Action in Reissue Not Stayed or Suspended —
+(5)If a claim has been added or amended to provoke an
-Related Litigation Stayed
+interference, provide a claim chart showing the written description
+for each claim in the applicant’s specification, and
-While there is a stay of the concurrent litigation related to this
+(6)For each constructive reduction to practice for which
-reissue application, action in this reissue application will NOT be
+the applicant wishes to be accorded benefit, provide a chart showing
-stayed or suspended because a stay of that litigation is in effect for
+where the disclosure provides a constructive reduction to practice
-the purpose of awaiting the outcome of these reissue proceedings.
+within the scope of the interfering subject matter.
-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.
-.04Litigation Involving Patent [R-3]
+(c)Examiner. An examiner may require an applicant to add
+a claim to provoke an interference. Failure to satisfy the requirement
+within a period (not less than one month) the examiner sets
+will operate as a concession of priority for the subject matter of
+the claim. If the interference would be with a patent, the applicant
+must also comply with paragraphs (a)(2) through (a)(6) of this
+section. The claim the examiner proposes to have added must,
+apart from the question of priority under 35 U.S.C. 102 (g):
-CFR 1.178. Original patent; continuing duty of
+(1)Be patentable to the applicant, and
-applicant.
+(2)Be drawn to patentable subject matter claimed by
+another applicant or patentee.
+In appropriate circumstances, a reissue application
+may be placed into interference with a patent or pending
+application. A patentee may provoke an interference
+with a patent or pending application by filing a
+reissue application, if the reissue application includes
+an appropriate reissue error as required by 35 U.S.C.
+. Reissue error must be based upon applicant
+error; a reissue cannot be based solely on the error of
+the Office for failing to declare an interference or to
+suggest copying claims for the purpose of establishing
+an interference. See In re Keil, 808 F.2d 830,
+USPQ2d 1427 (Fed. Cir. 1987); In re Dien, 680 F.2d
+, 214 USPQ 10 (CCPA 1982); In re Bostwick, 102
+F.2d 886, 888, 41 USPQ 279, 281 (CCPA 1939); and
+In re Guastavino, 83 F.2d 913, 916, 29 USPQ 532,
+(CCPA 1936). See also Slip Track Systems, Inc. v.
+Metal Lite, Inc., 159 F.3d 1337, 48 USPQ2d 1055
+(Fed. Cir. 1998) (Two patents issued claiming the
+same patentable subject matter, and the patentee with
+the earlier filing date requested reexamination of the
+patent with the later filing date (Slip Track’s patent).
+A stay of litigation in a priority of invention suit under
+U.S.C. 291, pending the outcome of the reexamination,
+was reversed. The suit under 35 U.S.C. 291was the only option available to Slip Track to determine
+priority of invention. Slip Track could not file a
+reissue application solely to provoke an interference
+proceeding before the Office because it did not assert
+that there was any error as required by 35 U.S.C. 251in the patent.). A reissue application can be employed
+to provoke an interference if the reissue application:
-(b)In any reissue application before the Office, the applicant
+(A)adds copied claims which are not present in
-must call to the attention of the Office any prior or concurrent proceedings
+the original patent;
-in which the patent (for which reissue is requested) is or
-was involved, such as interferences, reissues, reexaminations, or
-litigations and the results of such proceedings (see also
-§
-.173(a)(1)).
-Where the patent for which reissue is being sought
+(B)amends claims to correspond to those of the
-is, or has been, involved in litigation, the applicant
+patent or application with which an interference is
-should bring the existence of such litigation to the
+sought; or
-attention of the Office. 37 CFR 1.178(b). This should
-be done at the time of, or shortly after, the applicant
-files the application, either in the reissue oath or declaration,
-or in a separate paper, preferably accompanying
-the application as filed. Litigation begun after
-filing of the reissue application also should be
-promptly brought to the attention of the Office.
-Litigation encompasses any papers filed in the
+(C)contains at least one error (not directed to
-court or issued by the court. This may include, for
+provoking an interference) appropriate for the reissue.
-example, motions, pleadings, and court decisions, as
-well as the results of such proceedings. When applicant
-notifies the Office of the existence of the litigation,
-enough information should be submitted so that
-the Office can reasonably evaluate the need for asking
-for further materials in the litigation. Note that the
-existence of supporting materials which may substantiate
-allegations of invalidity should, at least, be fully
-described, and preferably submitted. The Office is not
-interested in receiving voluminous litigation materials
+In the first two situations, the reissue oath/declaration
+must assert that applicant erred in failing to
+include claims of the proper scope to provoke an
+interference in the original patent application. Note
+that in In re Metz, 173 F.3d 433 (Fed. Cir. 1998)
+(table), the Federal Circuit permitted a patentee to file
+a reissue application to copy claims from a patent in
+order to provoke an interference with that patent. Furthermore,
+the subject matter of the copied or amended
+claims in the reissue application must be supported by
+the disclosure of the original patent under 35 U.S.C.
+, first paragraph. See In re Molins, 368 F.2d 258,
+, 151 USPQ 570, 572
+(CCPA 1966) and In re
+Spencer, 273 F.2d 181, 124 USPQ 175 (CCPA 1959).
+A reissue applicant cannot present added or
+amended claims to provoke an interference, if the
+claims were deliberately omitted from the patent. If
+there is evidence that the claims were not inadvertently
+omitted from the original patent, e.g., the subject
+matter was described in the original patent as being
+undesirable, the reissue application may lack proper
+basis for the reissue. See In re Bostwick, 102 F.2d at
+, 41 USPQ at 282 (CCPA 1939)(reissue lacked a
+proper basis because the original patent pointed out
+the disadvantages of the embodiment that provided
+support for the copied claims).
+The issue date of the patent, or the publication date
+of the application publication (whichever is applicable
+under 35 U.S.C. 135(b)), with which an interference
+is sought must be less than 1 year prior to the presentation
+of the copied or amended claims in the reissue
+application. See 35 U.S.C. 135(b) and MPEP § 715.05and MPEP Chapter 2300. If the reissue application
+includes broadened claims, the reissue application
+must be filed within two years from the issue date of
+the original patent. See 35 U.S.C. 251 and MPEP §
+.03.
+An examiner may, pursuant to 37 CFR 41.202(c),
+require a reissue applicant to add a claim to provoke
-which are not relevant to the Office’s consideration of
+an interference, unless the reissue applicant cannot
-the reissue application. The status of the litigation
+present the added claim to provoke an interference
-should be updated in the reissue application as soon as
+based upon the provisions of the reissue statute and
-significant events happen in the litigation.
+rules, e.g., if the claim was deliberately omitted from
+the patent, or if the claim enlarges the scope of the
-When a reissue application is filed, the examiner
+claims of the original patent and was not “applied for
-should determine whether the original patent has been
+within two years from the grant of the original
-adjudicated by a court. The decision(s) of the court,
+patent.” Failure to satisfy the requirement within a
-and also other papers in the suit, may provide information
+period (not less than one month) the examiner sets
-essential to the examination of the reissue.
+will operate as a concession of priority for the subject
-Examiners should inform the applicant of the duty to
+matter of the claim. If the interference would be with
-supply information as to litigation involving the
+a patent, the reissue applicant must also comply with
-patent. Form paragraph 14.11.01 may be used for this
+CFR 41.202(a)(2) through (a)(6). The claim the
-purpose. See MPEP § 1418.
+examiner proposes to have added must, apart from the
+question of priority under 35 U.S.C. 102(g), be patentable
+to the reissue applicant, and be drawn to patentable
+subject matter claimed by another applicant or
+patentee.
-Additionally, the patented file will contain notices
+REISSUE APPLICATION FILED WHILE
-of the filing and termination of infringement suits on
+PATENT IS IN INTERFERENCE
-the patent. Such notices are required by law to be filed
-by the clerks of the Federal District Courts. These
-notices do not indicate if there was an opinion by the
-court, nor whether a decision was published. Shepard’s
-Federal Citations and the cumulative digests of
-the United States Patents Quarterly, both of which are
-in the Lutrelle F. Parker, Sr., Memorial Law Library,
-contain tables of patent numbers giving the citation of
-published decisions concerning the patent.
-A litigation computer search by the Scientific and
+If a reissue application is filed while the original
-Technical Information Center (STIC) should be
+patent is in an interference proceeding, the reissue
-requested by the examiner to determine whether the
+applicant must promptly notify the Board of Patent
-patent has been, or is, involved in litigation. For
+Appeals and Interferences of the filing of the reissue
-reissue application files that are maintained in paper,
+application within 20 days from the filing date. See 37
-the “Search Notes” box on the application file wrapper
+CFR 41.8 and MPEP Chapter 2300.
-is then  completed to indicate that the review
-was conducted. A copy of the STIC search should be
-hole-punched and placed in the reissue file. For
-IFW reissue application files, the “Search Notes” box
-on the OACS “Search Notes” page is annotated to
-indicate that the review was conducted, and the
-OACS “Search Notes” page is then scanned into the
-reissue application file history.
-Additional information or guidance as to making a
+==1450 Restriction and Election of Species Made in Reissue Application==
-litigation search may be obtained from the library of
-the Office of the Solicitor. Where papers are not otherwise
-conveniently obtainable, the applicant may be
-requested to supply copies of papers and records in
-suits, or the Office of the Solicitor may be requested
-to obtain them from the court. The information thus
-obtained should be carefully considered for its bearing
-on the proposed claims of the reissue, particularly
-when the reissue application was filed in view of the
-holding of a court.
-If the examiner becomes aware of litigation involving
+CFR 1.176. Examination of reissue.
-the patent sought to be reissued during examination
-of the reissue application, and applicant has not
-made the details regarding that litigation of record in
-the reissue application, the examiner, in the next
-Office action, should inquire regarding the same.
-Form paragraph 14.06 may be used for such an
-inquiry. See MPEP § 1442.01.
-If the additional details of the litigation appear to be
+(a)A reissue application will be examined in the same manner
-material to patentability of the reissue application, the
+as a non-reissue, non-provisional application, and will be subject
-examiner may make such additional inquiries as necessary
+to all the requirements of the rules related to non-reissue
-and appropriate.
+applications. Applications for reissue will be acted on by the
+examiner in advance of other applications.
-.05Court Ordered Filing of Reissue
+(b)Restriction between subject matter of the original patent
-Application [R-3]
+claims and previously unclaimed subject matter may be required
+(restriction involving only subject matter of the original patent
+claims will not be required). If restriction is required, the subject
+matter of the original patent claims will be held to be constructively
+elected unless a disclaimer of all the patent claims is filed in
+the reissue application, which disclaimer cannot be withdrawn by
+applicant.
-In most instances, the reissue-examination procedure
+CFR 1.176(b) permits the examiner to require
-is instituted by a patent owner who voluntarily
+restriction in a reissue application between claims
-files a reissue application as a consequence of related
+newly added in a reissue application and the original
-patent litigation. Some Federal district courts in
+patent claims, where the added claims are directed to
-earlier decisions have required a patentee-litigant to
+an invention which is separate and distinct from the
-file a reissue application as a consequence of the
+invention(s) defined by the original patent claims. The
-patent litigation. However, the Court of Appeals for
+criteria for making a restriction requirement in a reissue
-the Federal Circuit held in Green v. The Rich Iron Co.,
+application between the newly added claims and
-F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir.
+the original claims are the same as that applied in a
-) that a Federal district court in an infringement
+non-reissue application. See MPEP §§ 806 through
-case could not compel a patentee to seek reissue
+.05(i). The authority to make a “restriction”
-by the USPTO.
+requirement under 37 CFR 1.176(b) extends to and
+includes the authority to make an election of species.
-It is to be noted that only a patentee or his or her
+Where a restriction requirement is made by the
-assignee may file a reissue patent application. An
+examiner, the original patent claims will be held to be
-order by a court for a different party to file a reissue
+constructively elected (except for the limited situation
-will not be binding on the Office.
+where a disclaimer is filed as discussed in the next
+paragraph). Thus, the examiner will issue an Office
+action in the reissue application (1) providing notification
+of the restriction requirement, (2) holding the
+added claims to be constructively non-elected and
+withdrawn from consideration,  (3) treating the original
+patent claims on the merits, and (4) informing
+applicant that if the original claims are found allowable,
+and a divisional application has been filed for
+the non-elected claims, further action in the application
+will be suspended, pending resolution of the divisional
+application..
-Initial Examiner Review [R-3]
+If a disclaimer of all the original patent claims is
+filed in the reissue application containing newly
+added claims that are separate and distinct from the
+original patent claims, only the newly added claims
+will be present for examination. In this situation, the
+examiner’s Office action will treat the newly added
+claims in the reissue application on the merits. The
+disclaimer of all the original patent claims must be
+filed in the reissue application prior to the issuance of
+the examiner’s Office action containing the restriction
+requirement, in order for the newly added claims to be
+treated on the merits. Once the examiner has issued
+the Office action providing notification of the restriction
+requirement and treating the patent claims on the
+merits, it is too late to obtain an examination on
+the added claims in the reissue application by filing a
+disclaimer of all the original patent claims. If reissue
+applicant wishes to have the newly added claims be
+treated on the merits, a divisional reissue application
+must be filed to obtain examination of the added
+claims. Reissue applicants should carefully note that
+once a disclaimer of the patent claims is filed, it cannot
+be withdrawn. It does not matter whether the reissue
+application is still pending, or whether the reissue
+application has been abandoned or issued as a reissue
+patent. For all these situations, 37 CFR 1.176(b) states
+that the disclaimer cannot be withdrawn; the disclaimer
+will be given effect.
- As part of an examiner’s preparation for the examination
+Claims elected pursuant to a restriction requirement
-of a reissue application, the Examiner Reissue
+will receive a complete examination on the merits,
-Guide and Checklist should be consulted for basic
+while the non-elected claims (to any added invention(s)) will be held in abeyance in a withdrawn status,
-guidance and suggestions for handling the prosecution.
+and will only be examined if filed in a divisional
-The Technology Center (TC) Special Program
+reissue application. If the reissue application containing
-Examiners (SPREs) should make the Guide and
+only original unamended claims becomes allowable
-Checklist available at the time a reissue application is
+first (and no “error” under 35 U.S.C. 251exists),
-docketed to an examiner.
+further action in that reissue application will
-On initial receipt of a reissue application, the examiner
+be suspended to await examination in the divisional
-should inspect the submission under 37 CFR
+reissue application(s) containing the added claims.
-.172 as to documentary evidence of a chain of title
+Multiple suspensions (usually six-month periods)
-from the original owner to the assignee to determine
+may be necessary. The Office will not  permit
-whether the consent requirement of 37 CFR 1.172 has
+claims to issue in a reissue application which
+application does not correct any error in the original
+patent. Once a divisional reissue application containing
+the added claims is examined and becomes
+allowable,  the examiner will issue a requirement
+under 37 CFR 1.177(c) for applicant to merge the
+claims of the suspended first reissue application with
+the allowable claims of the divisional reissue application
+into a single application, by placing all of the
+claims in one of the applications and expressly abandoning
+the other. The Office action making this
+requirement will set a two-month period for compliance
+with the requirement. If applicant fails to timely
+respond to the Office action, or otherwise refuses to
+comply with the requirement made, then the divisional
+reissue application (claiming the invention
+which was non-elected in the now-suspended first
+reissue application) will be passed to issue alone,
+since the claims of the divisional reissue application,
+by themselves, do correct an error in the original
+patent. Prosecution will be reopened in the suspended
+first reissue application, and a rejection based on a
+lack of error under 35
+U.S.C. 251 will then be made.
+This rejection may be made final, since applicant is on
+notice of the consequences of not complying with the
+merger requirement.
+If the divisional reissue application becomes abandoned,
+prosecution will be reopened in the suspended
+first reissue application, and a rejection based on a
+lack of error under 35 U.S.C. 251 will then be made in
+the first reissue application. Since no error in the original
+patent is being corrected in the first reissue application,
+no reissue patent will issue.
+As stated in 37 CFR 1.176(b), the examiner is not
+permitted to require restriction among original
+claims of the patent (i.e., among claims that were in
+the patent prior to filing the reissue application). Even
+where the original patent contains claims to different
+inventions which the examiner considers independent
+or distinct, and the reissue application claims the same
+inventions, a restriction requirement would be
+improper. If such a restriction requirement is made, it
+must be withdrawn.
+Restriction between multiple inventions recited in
+the newly added claims will be permitted provided
+the added claims are drawn to several separate and
+distinct inventions. In such a situation, the original
+patent claims would be examined in the first reissue
+application, and applicant is permitted to file a divisional
+reissue application for each of the several separate
+and distinct inventions identified in the
+examiner’s restriction requirement.
+A situation will sometimes arise where the examiner
+makes an election of species requirement
+between the species claimed in the original patent
+claims and a species of claims added in the reissue
+application. In such a situation, if (1) the non-elected
+claims to the added species depend from (or otherwise
+include all limitations of) a generic claim which
+embraces all species claims, and (2) the generic claim
+is found allowable, then the non-elected claims of the
+added species must be rejoined with the elected
+claims of the original patent. See MPEP §
+.04(a).
+==1451 Divisional Reissue Applications;Continuation Reissue Applications Where the Parent is Pending==
-been met. The examiner will compare the consent and
+U.S.C. 251. Reissue of defective patents.
-documentary evidence of ownership; the assignee
-indicated by the documentary evidence must be the
-same assignee which signed the consent. Also, the
-person who signs the consent for the assignee and the
-person who signs the submission of evidence of ownership
-for the assignee must both be persons having
-authority to do so. See also MPEP § 324.
-Where the application is assigned, and there is no
+The Director may issue several reissued patents for distinct and
-submission under 37 CFR 1.172 as to documentary
+separate parts of the thing patented, upon demand of the applicant,
-evidence in the application, the examiner should
+and upon payment of the required fee for a reissue for each of
-require the submission using form paragraph 14.16.
+such reissued patents.
-Once the submission under 37 CFR 1.172 as to documentary
-evidence is received, it must be compared
-with the consent to determine whether the assignee
-indicated by the documentary evidence is the same
-assignee which signed the consent. See MPEP
-§
-.01 for further discussion as to the required
-consent and documentary evidence.
-Where there is a statement of record that the application
+CFR 1.177. Issuance of multiple reissue patents.
-is not assigned, there should be no submission
-under 37
-CFR 1.172 as to documentary evidence of
-ownership in the application, and none should be
-required by the examiner.
-The filing of all reissue applications, except for
+(a)The Office may reissue a patent as multiple reissue patents.
-continued prosecution applications (CPAs) filed under
+If applicant files more than one application for the reissue of
-CFR 1.53(d), must be announced in the Official
+a single patent, each such application must contain or be amended
-Gazette. Accordingly, for any reissue application
+to contain in the first sentence of the specification a notice stating
-other than a CPA, the examiner should determine if
+that more than one reissue application has been filed and identifying
-the filing of the reissue application has been
+each of the reissue applications by relationship, application
-announced in the Official Gazette as provided in
+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.
-CFR 1.11(b). The contents entry on the PALM
-Intranet Contents screen should be checked for the
-presence of “NRE” and “NOTICE OF REISSUE
-PUBLISHED IN OFFICIAL GAZETTE” entries in
-the contents, and the date of publication. Where the
-reissue application is maintained in a paper file, the
-date of the Official Gazette notice can usually be
-found on the pink “REISSUE” tag which protrudes
-from the top of the application file of 08/ or earlier
-series.  For 09/ and later series reissue applications,
-the Official Gazette publication date appears on the
-face of the file wrapper.  If the filing of the reissue
-application has not been announced in the Official
-Gazette, the reissue application should be returned to
-the Office of Initial Patent Examination (Special Processing)
-to handle the announcement. The examiner
-should not further act on the reissue until 2 months
-after announcement of the filing of the reissue has
-appeared in the Official Gazette. See MPEP §
-.
-The examiner should determine if there is concurrent
+(b)If applicant files more than one application for the reissue
-litigation, and if so, the status thereof (MPEP
+of a single patent, each claim of the patent being reissued must
-§
+be presented in each of the reissue applications as an amended,
+unamended, or canceled (shown in brackets) claim, with each
-.01), and whether the reissue file wrapper
+such claim bearing the same number as in the patent being reissued.
-(for reissue application files maintained in paper) or
+The same claim of the patent being reissued may not be presented
-file history (for IFW reissue applications) has been
+in its original unamended form for examination in more
-appropriately marked. Note MPEP § 1404.
+than one of such multiple reissue applications. The numbering of
+any added claims in any of the multiple reissue applications must
+follow the number of the highest numbered original patent claim.
-The examiner should determine if a protest has
+(c)If any one of the several reissue applications by itself
-been filed, and if so, it should be handled as set forth
+fails to correct an error in the original patent as required by 35
-in MPEP §
+U.S.C. 251 but is otherwise in condition for allowance, the Office
+may suspend action in
-.06. For a discussion of protests
+the allowable application until all issues
-under 37 CFR 1.291 in reissue applications, see
+are resolved as to at least one of the remaining reissue applications.
-MPEP § 1441.01.
+The Office may also merge two or more of the multiple reissue
+applications into a single reissue application. No reissue
+application containing only unamended patent claims and not correcting
+an error in the original patent will be passed to issue by
+itself.
-The examiner should determine whether the patent
+The court in In re Graff, 111 F.3d 874, 876-77,
-is involved in an interference, and if so, should refer
+USPQ2d 1471, 1473 (Fed. Cir. 1997) stated that
-to MPEP § 1449.01 before taking any action on the
+“[t]he statute does not prohibit divisional or continuation
-reissue application.
+reissue applications, and does not place stricter
+limitations on such applications when they are presented
+by reissue, provided of course that the statutory
+requirements specific to reissue applications are met.”
+Following the decision in Graff, the Office has
+adopted a policy of treating continuations and divisionals
+of reissue applications, to the extent possible,
+in the same manner as continuations and divisionals
+of non-reissue applications.
+Questions relating to the propriety of divisional
+reissue applications and continuation reissue applications
+should be referred via the Technology Center
+(TC) Special Program Examiner to the Office of
+Patent Legal Administration.
+I. DIVISIONAL REISSUE APPLICATIONS
-The examiner should verify that all Certificate of
+CFR 1.176(b) permits the examiner to require
-Correction changes have been properly incorporated
+restriction in a reissue application between the original
-into the reissue application. See MPEP § 1411.01.
+claims of the patent and any newly added claims
+which are directed to a separate and distinct invention(
+s). See also MPEP § 1450. As a result of such a
+restriction requirement, divisional applications may
+be filed for each of the inventions identified in the
+restriction requirement.
-The examiner should verify that the patent on
+In addition, applicant may initiate a division of the
-which the reissue application is based has not expired,
+claims by filing more than one reissue application in
-either because its term has run or because required
+accordance with 37 CFR 1.177. The multiple reissue
-maintenance fees have
+applications which are filed may contain different
-not been paid. Once a patent
+groups of claims from among the original patent
-has expired, the Director of the USPTO no longer has
+claims, or some of the reissue applications may contain
-the authority under 35 U.S.C. 251 to
+newly added groups (not present in the original
-reissue the
+patent). There is no requirement that the claims of the
-patent. See In re Morgan, 990 F.2d 1230, 26 USPQ2d
+multiple reissue applications be independent and distinct
-(Fed. Cir. 1992). See also MPEP §
+from one another; if they are not independent
+and distinct from one another, the examiner must
-.01.
+apply the appropriate double patenting rejections.
-Review of Reissue Oath/Declaration
+There is no requirement that a family of divisional
-[R-5]
+reissue applications issue at the same time; however,
+it is required that they contain a cross reference to
+each other in the specification. 37 CFR 1.177(a)
+requires that all multiple reissue applications resulting
+from a single patent must include as the first sentence
+of their respective specifications a cross reference to
+the other reissue application(s). Accordingly, the first
+sentence of each reissue specification must provide
+notice stating that more than one reissue application
+has been filed, and it must identify each of the reissue
+applications and their relationship within the family
+of reissue applications, and to the original patent. An
+example of the suggested language to be inserted is as
+follows:
-In accordance with 37 CFR 1.175, the following is
+Notice: More than one reissue application has
-required in the reissue oath/declaration:
+been filed for the reissue of Patent No. 9,999,999. The
+reissue applications are application numbers 09/
+,994 (the present application), 09/999,995, and 09/
+,998, all of which are divisional reissues of Patent
+No. 9,999,999.
-(A)A statement that the applicant believes the
+The examiner should object to the specification
-original patent to be wholly or partly inoperative or
+and require an appropriate amendment if applicant
-invalid-
+fails to include such a cross reference to the other reissue
+applications in the first sentence of the specification
+of each of the reissue applications.
-(1)by reason of a defective specification or
+In addition to the amendment to the first sentence
-drawing, or
+of the specification, the reissue application cross references
+will also be reflected in the file. For an
+IFW reissue application file, a copy of the bibliographic
+data sheet from the IFW file history should be
+printed and the examiner should annotate the printed
+sheet such that adequate notice is provided that more
+than one reissue application has been filed for a single
+original patent. The annotated sheet should be
+scanned into IFW. For reissue application files that are
+maintained in paper, the bibliographic data sheet
+should be reprinted (for 09/ and later series), or
+the front face of the reissue file wrapper should be
+marked (for 08/ and earlier series), for all the multiple
+reissue applications, so that adequate notice is provided
+that more than one reissue application has been
+filed for a single original patent.
-(2)by reason of the patentee claiming more or
+Pursuant to 37 CFR 1.177(b) all of the claims of the
-less than patentee had the right to claim in the patent;
+patent to be reissued must be presented in each reissue
+application in some form, i.e., as amended, as
+unamended or as canceled. Further,  any added
+claims must be numbered beginning with the next
+highest number following the last patent claim. It is
+noted that the same claim of the patent cannot be presented
+for examination in more than one of the divisional
+reissue applications, as a pending claim, in
+either its original or amended versions. Once a claim
+in the patent has been reissued, it does not exist in the
+original patent; thus, it cannot be reissued from the
+original patent in another reissue application. If the
+same claim of the patent, e.g., patent claim 1 is presented
+for examination in more than one of the reissue
+applications, in different amended versions, the following
+rejections should be made in the reissue applications
+with that patent claim:
-(B)A statement of at least one error which is
+A rejection under 35 U.S.C. 251, in that the reissue
-relied upon to support the reissue application, i.e.,
+application is not correcting an error in the original
-which provides a basis for the reissue;
+patent, because original claim 1 would be superseded
+by the reissuance of claim 1 in the other reissue application.
-(C)A statement that all errors which are being
-corrected in the reissue application up to the time of
+A rejection under 35 U.S.C. 112, in that claim 1 is
+indefinite because the invention of claim 1 is not particularly
+pointed out and distinctly claimed. Claim 1
+presents one coverage in divisional reissue application
+X and another in the present reissue application. This
+is inconsistent.
+The reissue applicant should then be advised to follow
+a procedure similar to the following example:
+If there are patent claims 1 – 10 in two divisional
+reissue applications and an applicant wishes to revise
+claim 1, which is directed to AB (for example) to
+ABC in one divisional reissue application, and to
+ABD in a second divisional reissue application, applicant
+should do the following: Claim 1 in the first divisional
+reissue application can be revised to recite
+ABC. Claim 1 in the second divisional reissue application
+would be canceled, and new claim 11 would be
+added to recite ABD. The physical cancellation of
+claim 1 in the second divisional reissue application
+will not prejudice applicant’s rights in the amended
+version of claim 1 since those rights are retained via
+the first reissue application. Claim 1 continues to exist
+in the first reissue application, and both the first and
+second reissue applications taken together make up
+the totality of the correction of the original patent.
+If the same or similar claims are presented in more
+than one of the multiple reissue applications, the possibility
-filing of the oath/declaration arose without any deceptive
+of statutory double patenting (35 U.S.C. 101)
-intention on the part of the applicant; and
+or non-statutory (judicially created doctrine) double
+patenting should be considered by the examiner during
-(D)The information required by 37 CFR 1.63.
+examination, and the appropriate rejections made.
+A terminal disclaimer may be filed to overcome an
-MPEP § 1414 contains a discussion of each of the
+obviousness type double patenting rejection. The terminal
-above elements (i.e., requirements of a reissue oath/
+disclaimer is necessary in order to ensure common
-declaration). The examiner should carefully review
+ownership of the reissue patents throughout the
-the reissue oath/declaration in conjunction with that
+remainder of the unexpired term of the original patent.
-discussion, in order to ensure that each element is provided
+Whenever a divisional reissue application is filed with
-in the oath/declaration. If the examiner’s review
+a copy of the oath/declaration and assignee consent
-of the oath/declaration reveals a lack of compliance
+from the parent reissue application, the copy of the
-with any of the requirements of 37 CFR 1.175, a
+assignee consent from the parent reissue application
-rejection of all the claims under 35
+should not be accepted. The copy of the consent from
-U.S.C. 251 should
+the parent reissue application does not indicate that
-be made on the basis that the reissue oath/declaration
+the assignee has consented to the addition of the new
-is insufficient.
+invention of the divisional reissue application to the
+original patent. The Office of Initial Patent Examination
-In preparing an Office action, the examiner should
+(OIPE) should accord a filing date and send out a
-use form paragraphs 14.01 through 14.01.04 to state
+notice of missing parts stating that there is no proper
-the objection(s) to the oath/declaration, i.e., the
+consent and setting a period of time for filing the
-defects in the oath/declaration. These form paragraphs
+missing part and for payment of any surcharge
-are reproduced in MPEP § 1414. The examiner should
+required under 37 CFR 1.53(f) and 1.16(f). See
-then use form paragraph 14.14 to reject the claims
+MPEP § 1410.01. The copy of the reissue oath/declaration
-under 35 U.S.C. 251, based upon the improper oath/
+should be accepted by OIPE, since it is an oath/
-declaration.
+declaration, even though it may be improper under
+U.S.C. 251. The examiner should check the copy
+of the oath/declaration to ensure that it identifies an
+error being corrected by the divisional reissue application.
+The copy of the oath/declaration from the parent
+reissue application may or may not cover the error
+being corrected by the divisional reissue application
+since the divisional reissue application is (by definition)
+directed to a new invention. If it does not, the
+examiner should reject the claims of the divisional
+reissue application under 35 U.S.C. 251 as being
+based on an oath/declaration that does not identify an
+error being corrected by the divisional reissue application,
+and require a new oath/declaration. See MPEP §
+. If the copy of the reissue oath/declaration from
+the parent reissue application does in fact cover an
+error being corrected in the divisional reissue application,
+no such rejection should be made. However,
+since a new invention is being added by the filing of
+the divisional reissue application, a supplemental reissue
+oath/declaration pursuant to 37 CFR 1.175 (b)(1)
+will be required. See MPEP § 1414.01.
-¶ 14.14 Rejection, Defective Reissue Oath or Declaration
+Situations yielding divisional reissues occur infrequently
+and usually involve only two such files. It
+should be noted, however, that in rare instances in the
+past, there have been more than two (and as many as
+five) divisional reissues of a
+patent. For treatment of a
+plurality of divisional reissue applications resulting
+from a requirement to restrict to distinct inventions or
+a requirement to elect species, see MPEP § 1450.
-Claim [1] rejected as being based upon a defective reissue [2]
+II. CONTINUATION REISSUE APPLI-
-under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
+CATIONS
-The nature of the defect(s) in the [3] is set forth in the discussion
+A continuation of a reissue is not ordinarily filed
-above in this Office action.
+“for distinct and separate parts of the thing patented”
+as called for in the second paragraph of 35 U.S.C.
+. The decision of In re Graff, 111 F.3d 874,
+USPQ2d 1471 (Fed. Cir. 1997) interprets
+U.S.C. 251 to permit multiple reissue patents to
+issue even where the multiple reissue patents are not
+for “distinct and separate parts of the thing patented.”
+The court stated:
-Examiner Note:
+Section 251[2] is plainly intended as enabling, not as limiting.
+Section 251[2] has the effect of assuring that a different
-.In bracket 1, list all claims in the reissue application. See
+burden is not placed on divisional or continuation
-MPEP §
+reissue applications, compared with divisions and continuations
+of original applications, by codifying the Supreme
-.03(x).
+Court decision which recognized that more than one
+patent can result from a reissue proceeding. Thus § 251[2]
-.This paragraph should be preceded by at least one of the
+places no greater burden on Mr. Graff’s continuation reissue
-paragraphs 14.01 to 14.01.04.
+application than upon a continuation of an original
+application; § 251[2] neither overrides, enlarges, nor limits the statement in § 251[3] that the provisions of Title 5 apply to reissues.
-.In brackets 2 and 3, insert either --oath-- or --declaration--.
+F.3d at 877, 42 USPQ2d at 1473. Accordingly,
+prosecution of a continuation of a reissue application
+will be permitted (despite the existence of the pending
+parent reissue application) where the continuation
+complies with the rules for reissue.
-A lack of signature on a reissue oath/declaration
+The parent and the continuation reissue applications
-(except as otherwise provided in 37 CFR 1.42, 1.43,
+should be examined together if possible. In
-and 1.47 and in 37 CFR 1.172) would be considered a
+order that the parent-continuation relationship of the
-lack of compliance with 37 CFR 1.175(a) and result in
+reissue applications be specifically identified and
-a rejection, including final rejection, of all the claims
+notice be provided of both reissue applications for
-on the basis that the reissue oath/declaration is insufficient.
+both the parent and the continuation reissue applications,
-If the unsigned reissue oath/declaration is submitted
+the following is done:
-as part of a reply which is otherwise properly
-signed and responsive to the outstanding Office
-action, the reply should be accepted by the examiner
-as proper and responsive, and the oath/declaration
-considered fully in the next Office action. The reply
-should not be treated as an unsigned or improperly
-signed amendment (see MPEP § 714.01(a)), nor do
-the holdings of Ex parte Quayle apply in this situation.
-The lack of signature, along with any other oath/
-declaration deficiencies, should be noted in the next
-Office action rejecting the claims as being based upon
-an insufficient reissue oath/declaration.
-I.HANDLING OF THE REISSUE OATH/
+(A) An appropriate amendment to the continuing
-DECLARATION DURING THE REISSUE
+data entries must be made to the first sentence of
-PROCEEDING
+the specification, (see the discussion above under the
+heading “Divisional Reissue Applications”).
-An initial reissue oath/declaration is submitted with
+(B)For an IFW reissue application file, a copy of
-the reissue application (or within the time period set
+the bibliographic data sheet from the IFW file history
-for filing the oath/declaration in a Notice To File
+should be printed and the examiner should annotate
-Missing Parts under 37 CFR 1.53(f)). Where the reissue
+the printed sheet such that adequate notice is provided
-oath/declaration fails to comply with 37 CFR
+that more than one reissue application has been filed
-.175(a), the examiner will so notify the applicant in
+for a single original patent. The annotated sheet
-an Office action, rejecting the claims under 35 U.S.C.
+should be scanned into IFW. For reissue application
-as discussed above. In reply to the Office action, a
+files that are maintained in paper, the bibliographic
-supplemental reissue oath/declaration should be submitted
+data sheet should be reprinted (for 09/ and later
-dealing with the noted defects in the reissue
+series), or the front face of the reissue file wrapper
-oath/declaration.
+should be marked (for 08/ and earlier series), for all
+the multiple reissue applications, so that adequate
+notice is provided that more than one reissue application
+has been filed for a single original patent.
-Where the initial reissue oath/declaration (1) failed
+As is true for the case of multiple divisional reissue
-to provide any error statement, or (2) attempted to
+applications, all of the claims of the patent to be reissued
-provide an error statement, but failed to identify any
+must be presented in both the parent reissue
-error under 35 U.S.C. 251 upon which reissue can be
+application and the continuation reissue application in
-based (see MPEP § 1402), the examiner should reject
+some form, i.e., as amended, as unamended, or as canceled.
-all the claims as being based upon a defective reissue
+The same claim of the patent cannot, however
-oath/declaration under 35 U.S.C. 251. To support the
+be presented for examination in both the parent reissue
-rejection, the examiner should specifically point out
+application and the continuation reissue application,
-the failure of the initial oath/declaration to comply
+as a pending claim, in either its original or
-with 37 CFR 1.175 because an “error” under
+amended versions. See the discussion in subsection I.
+above for treatment of this situation. Further, any
-U.S.C. 251 upon which reissue can be based was
+added claims must be numbered beginning with the
-not identified therein. In reply to the rejection under
+next highest number following the past patent
-U.S.C. 251, a supplemental reissue oath/declaration
+claims.
-must be submitted stating an error under
-U.S.C. 251 which can be relied upon to support the
-reissue application. Submission of this supplemental
-reissue oath/declaration to obviate the rejection cannot
-be deferred by applicant until the application is
-otherwise in condition for allowance. In this instance,
-a proper statement of error was never provided in the
-initial reissue oath/declaration, thus a supplemental
-oath/declaration is required in reply to the Office
-action in order to properly establish grounds for reissue.
+Where the parent reissue application issues prior to
+the examination of the continuation, the claims of the
+continuation should be carefully reviewed for double
+patenting over the claims of the parent. Where the
+parent and the continuation reissue applications are
+examined together, a provisional double patenting
+rejection should be made in both cases as to any overlapping
+claims. See MPEP § 804 - §
+.04 as to double
+patenting rejections. Any terminal disclaimer filed
+to obviate an obviousness-type double patenting
+rejection ensures common ownership of the reissue
+patents throughout the remainder of the unexpired
+term of the original patent.
-A different situation may arise where the initial
+If the parent reissue application issues without any
-reissue oath/declaration does properly identify one or
+cross reference to the continuation, amendment of the
-more errors under 35 U.S.C. 251 as being the basis for
+parent
-reissue, however, because of changes or amendments
+reissue patent to include a cross-reference to
-made during prosecution, none of the identified errors
+the continuation must be effected at the time of allowance
+of the continuation application by Certificate of
+Correction. See the discussion above under the heading
+“Divisional Reissue Applications” as to how the
+Certificate of Correction is to be provided.
+Again, the examiner should make reference in the
+pending divisional reissue application to the fact that
+an actual request for a Certificate of Correction has
+been generated in the first reissue patent pursuant to
+CFR 1.177(a), e.g., by an entry in the search notes
+or in an examiner’s amendment.
+Where a continuation reissue application is filed
+with a copy of the oath/declaration and assignee consent
+from the parent reissue application, and the parent
+reissue application is not to be abandoned, the
+copy of the consent of the parent reissue application
+should not be accepted. The copy of the consent of the
+parent reissue application does not indicate that the
+assignee has consented to the addition of the new
+error correction of the continuation reissue application
+to the original patent. Presumably, a new correction
+has been added, since the parent reissue
+application is still pending. OIPE should accord a filing
+date and send out a notice of missing parts stating
+that there is no proper consent and setting a period of
+time for filing the missing part and for payment of any
+surcharge required under 37 CFR 1.53(f) and
+.16(f). See MPEP § 1410.01. The copy of the
+reissue oath/declaration should be accepted by OIPE,
+since it is a oath/declaration, albeit improper under
+U.S.C. 251. The examiner should reject the claims
+of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration
+that does not identify an error being corrected by the
+continuation reissue application, and should require a
+new oath/declaration. See 37 CFR 1.175(e). One of
+form paragraphs 14.01.01 through 14.01.03 may be
+used. See MPEP § 1414.
+Where a continuation reissue application is filed
+with a copy of the oath/declaration and assignee consent
+from the parent reissue application, and the parent
+reissue application is, or will be abandoned, the
+copy of the consent should be accepted by both OIPE
+and the examiner. The reissue oath/declaration should
+be accepted by OIPE, and the examiner should check
+to ensure that the oath/declaration identifies an error
+that is being corrected in the continuation reissue
+application. See MPEP § 1414. If a preliminary
+amendment was filed with the continuation reissue
+application, the examiner should check for the need of
+a supplemental reissue oath/declaration. Pursuant to
+CFR 1.175 (b)(1), for any error corrected via the
+preliminary amendment which is not covered by the
+oath or declaration submitted in the parent reissue
+application, applicant must submit a supplemental
+oath/declaration stating that every such error arose
+without any deceptive intention on the part of the
+applicant. See MPEP § 1414 and § 1414.01.
+==1452 Request for Continued Examination of Reissue Application==
-are relied upon any more. A supplemental oath/declaration
+A request for continued examination (RCE) under
-will be needed to identify at least one error nowbeing relied upon as the basis for reissue, even though
+CFR 1.114 is available for a reissue application.
-the prior oath/declaration was earlier found proper by
+Effective May 29, 2000, an applicant in a reissue
-the examiner. The supplemental oath/declaration need
+application may file a request for continued examination
-not also indicate that the error(s) identified in the prior
+of the reissue application, if the reissue application
-oath(s)/declaration(s) is/are no longer being corrected.
+was filed on or after June 8, 1995. This applies
-In this instance, applicant’s submission of the supplemental
+even where the application, which resulted in the original
-reissue oath/declaration to obviate the rejection
+patent, was filed prior to June 8, 1995.
-under 35 U.S.C. 251 can, at applicant’s option, be
-deferred until the application is otherwise in condition
-for allowance. The submission can be deferred
-because a proper statement of error was provided in
-the initial reissue oath/declaration. Applicant need
-only request that submission of the supplemental reissue
-oath/declaration be deferred until allowance, and
-such a request will be considered a complete reply to
-the rejection.
-II.SUPPLEMENTAL REISSUE OATH/DECLARATION
+An RCE continues the prosecution of the existing
-UNDER 37 CFR 1.175(b)(1):
+reissue application and is not a filing of a new reissue
+application. Thus, the filing of an RCE will not be
+announced in the Official Gazette. Additionally, if a
+reissue application is merged with a reexamination
+proceeding (see MPEP § 1449.01), the filing of an
+RCE will not dissolve the merger, since the reissue
+application does not become abandoned.
-Once the reissue oath/declaration is found to comply
+==1453 Amendments to Reissue Applications==
-with 37 CFR 1.175(a), it is not required, nor is it
-suggested, that a new reissue oath/declaration be submitted
-together with each new amendment and correction
-of error in the patent. During the prosecution of a
-reissue application, amendments are often made
-and
-additional errors in the patent are corrected. A
-supplemental oath/declaration need not be submitted
-with each amendment and additional correction.
-Rather, it is suggested that the reissue applicant wait
-until the case is in condition for allowance, and then
-submit a cumulative supplemental reissue oath/declaration
-pursuant to 37 CFR 1.175(b)(1).
-See MPEP § 1414.01 for a discussion of the
+CFR 1.121. Manner of making amendments in
-required content of a supplemental reissue oath/declaration
+application.
-under 37 CFR 1.175(b)(1).
-A supplemental oath/declaration under 37 CFR
+(i)Amendments in reissue applications. Any amendment to
-.175(b)(1) must be submitted before allowance. It
+the description and claims in reissue applications must be made in
-may be submitted with any reply prior to allowance. It
+accordance with § 1.173.
-may be submitted to overcome a rejection under
-U.S.C. 251 made by the examiner, where it is indicated
-that the submission of the supplemental oath/
-declaration will overcome the rejection.
-A supplemental oath/declaration under 37 CFR
+CFR 1.173. Reissue specification, drawings, and
-.175(b)(1) will be required where:
+amendments.
-(A)the application is otherwise (other than the
+(b)Making amendments in a reissue application. An amendment
-need for this supplemental oath/declaration) in condition
+in a reissue application is made either by physically incorporating
-for allowance;
+the changes into the specification when the application is
+filed, or by a separate amendment paper. If amendment is made by
+incorporation, markings pursuant to paragraph (d) of this section
+must be used. If amendment is made by an amendment paper, the
+paper must direct that specified changes be made, as follows:
-(B)amendments or other corrections of errors in
+(1)Specification other than the claims. Changes to the
-the patent have been made subsequent to the last oath/
+specification, other than to the claims, must be made by submission
-declaration filed in the application; and
+of the entire text of an added or rewritten paragraph, including
+markings pursuant to paragraph (d) of this section, except that
+an entire paragraph may be deleted by a statement deleting the
+paragraph without presentation of the text of the paragraph. The
+precise point in the specification must be identified where any
+added or rewritten paragraph is located. This paragraph applies
+whether the amendment is submitted on paper or compact disc
+(see §§ 1.52(e)(1) and 1.821(c), but not for discs submitted under
+§ 1.821(e)).
-(C)at least one of the amendments or other corrections
+(2)Claims. An amendment paper must include the entire
-corrects an error under 35 U.S.C. 251.
+text of each claim being changed by such amendment paper and of
+each claim being added by such amendment paper. For any claim
-When a supplemental oath/declaration under
+changed by the amendment paper, a parenthetical expression
+“amended,” “twice amended,” etc., should follow the claim number.
-CFR 1.175(b)(1) directed to the amendments or
+Each changed patent claim and each added claim must
-other corrections of error is required, the examiner is
+include markings pursuant to paragraph (d) of this section, except
-encouraged to telephone the applicant and request the
+that a patent claim or added claim should be canceled by a statement
-submission of the supplemental oath/declaration by
+canceling the claim without presentation of the text of the
-fax. If the circumstances do not permit making a telephone
+claim.
-call, or if applicant declines or is unable to
-promptly submit the oath/declaration, the examiner
-should issue a final Office action (final rejection) and
-use form paragraph 14.05.02 where the action issued
-is a second or subsequent action on the merits.
+(3)Drawings. One or more patent drawings shall be
+amended in the following manner: Any changes to a patent drawing
+must be submitted as a replacement sheet of drawings which
+shall be an attachment to the amendment document. Any replacement
+sheet of drawings must be in compliance with § 1.84 and
+shall include all of the figures appearing on the original version of
+the sheet, even if only one figure is amended. Amended figures
+must be identified as “Amended,” and any added figure must be
+identified as “New.” In the event that a figure is canceled, the figure
+must be surrounded by brackets and identified as “Canceled.”
+All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the
+amendment to the drawings.
+(i)A marked-up copy of any amended drawing figure,
+including annotations indicating the changes made, may be
+included. The marked-up copy must be clearly labeled as “Annotated
+Marked-up Drawings” and must be presented in the amendment
+or remarks section that explains the change to the drawings.
-¶ 14.05.02 Supplemental Oath or Declaration Required
+(ii)A marked-up copy of any amended drawing figure,
-Prior to Allowance
+including annotations indicating the changes made, must be
+provided when required by the examiner.
-In accordance with 37 CFR 1.175(b)(1), a supplemental reissue
+(c)Status of claims and support for claim changes. Whenever
-oath/declaration under 37 CFR 1.175(b)(1) must be received
+there is an amendment to the claims pursuant to paragraph
-before this reissue application can be allowed.
+(b) of this section, there must also be supplied, on pages separate
+from the pages containing the changes, the status (i.e., pending or
+canceled), as of the date of the amendment, of all patent claims
+and of all added claims, and an explanation of the support in the
+disclosure of the patent for the changes made to the claims.
-Claim [1] rejected as being based upon a defective reissue [2]
+(d)Changes shown by markings. Any changes relative to the
-under 35 U.S.C. 251. See 37 CFR 1.175. The nature of the defect
+patent being reissued which are made to the specification, including
-is set forth above.
+the claims, upon filing, or by an amendment paper in the reissue
+application, must include the following markings:
-Receipt of an appropriate supplemental oath/declaration under
+(1)The matter to be omitted by reissue must be enclosed
-CFR 1.175(b)(1) will overcome this rejection under 35 U.S.C.
+in brackets; and
-. 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
+(2)The matter to be added by reissue must be underlined,
-present reissue application, and is not covered by a prior
+except for amendments submitted on compact discs (§§ 1.96 and
-oath/declaration submitted in this application, arose without
+.821(c)). Matter added by reissue on compact discs must be preceded
-any deceptive intention on the part of the applicant.”
+with “U” and end with “/U” to properly identify the
+material being added.
-See MPEP § 1414.01.
+(e)Numbering of patent claims preserved. Patent claims
+may not be renumbered. The numbering of any claim added in the
+reissue application must follow the number of the highest numbered
+patent claim.
-Examiner Note:
+(f)Amendment of disclosure may be required. The disclosure
+must be amended, when required by the Office, to correct
+inaccuracies of description and definition, and to secure substantial
+correspondence between the claims, the remainder of the specification,
+and the drawings.
-.In bracket 1, list all claims in the reissue application.
+(g)Amendments made relative to the patent. All amendments
+must be made relative to the patent specification, including
+the claims, and drawings, which are in effect as of the date of filing
+of the reissue application.
-.In bracket 2, insert either --oath-- or --declaration--.
+The provisions of 37 CFR 1.173(b)-(g) and those of
+CFR 1.121(i) apply to amendments in reissue
-.This form paragraph is used in an Office action to: (a) remind
+applications. Any amendments submitted in a reissue
-applicant of the requirement for submission of the supplemental
+application must comply with 37 CFR 1.173(b).
-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.
-.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.
+Amendments submitted in a reissue application,
+including preliminary amendments (i.e., amendments
+filed as a separate paper to accompany the filing of a
+reissue application), must comply with the practice
+outlined below in this section; however, for examiner’s
+amendments to the specification and claims,
+CFR 1.121(g) provides certain exceptions to that
+practice in the interest of expediting prosecution. The
+exceptions set forth in 37 CFR 1.121(g) also apply in
+reissue applications.
+Pursuant to 37 CFR 1.173(a), no amendment in a
+reissue application may enlarge the scope of the
+claims, unless “applied for within two years from the
+grant of the original patent.” Further, the amendment
+may not introduce new matter. See MPEP § 1412.03for further discussion as to the time limitation on
+enlarging the scope of the patent claims in a reissue
+application.
+All amendment changes must be made relative to
+the patent to be reissued. Pursuant to 37 CFR
+.173(d), any such changes which are made to the
+specification, including the claims, must be shown by
+employing the following “markings:”
+(A)The matter to be omitted by reissue must be
+enclosed in brackets; and
-.This form paragraph cannot be used in an Ex parte Quayleaction to require the supplemental oath/declaration, because the
+(B)The matter to be added by reissue must be
-rejection under 35 U.S.C. 251 is more than a matter of form.
+underlined, except for amendments submitted on
+compact discs (pursuant to 37 CFR 1.96 for computer
+printouts or programs, and 37 CFR 1.825 for
+sequence listings). Matter added by reissue on compact
+discs must be preceded with “U” and end with
+“/U” to properly identify the material being added.
-.Do not use this form paragraph in an examiner’s amendment.
+I.THE SPECIFICATION
-The supplemental oath/declaration must be filed prior to mailing
-of the Notice of Allowability.
+CFR 1.173(b)(1) relates to the manner of making
+amendments to the specification other than the
+claims. It is not to be used for making amendments to
+the claims or the drawings.
+All amendments which include any deletions or
+additions must be made by submission of the entire
+text of each added or rewritten paragraph with markings
+(as defined above), except that an entire paragraph
+of specification text may be deleted by a
+statement deleting the paragraph without presentation
+of the text of the paragraph. Applicant must indicate
+the precise point where each amendment is made. All
+bracketing and underlining is made in comparison to
+the original patent, not in comparison to any prior
+amendment in the reissue application. Thus, all paragraphs
+which are newly added to the specification of
+the original patent must be submitted as completely
+underlined each time they are re-submitted in the reissue
+application.
-As noted above, the examiner will issue a final
+II.THE CLAIMS
-Office action where the application is otherwise in
-condition for allowance, and amendments or other
-corrections of error in the patent have been made subsequent
-to the last oath/declaration filed in the application.
-The examiner will be introducing (via form
-paragraph 14.05.02) a rejection into the case for the
-first time in the prosecution, when the claims have
-been determined to be otherwise allowable. This
-introduction of a new ground of rejection under
-U.S.C. 251 will not prevent the action from being
-made final on a second or subsequent action because
-of the following factors:
-(A)The finding of the case in condition for allowance
+CFR 1.173(b)(2) relates to the manner of making
-is the first opportunity that the examiner has to
+amendments to the claims in reissue applications.
-make the rejection;
+It is not to be used for making amendments to the
+remainder of the specification or to the drawings. 37
+CFR 1.173(b)(2) requires that:
-(B)The rejection is being made in reply to, i.e.,
+(A)For each claim that is being amended by the
-was caused by, an amendment of the application (to
+amendment being submitted (the current amendment),
-correct errors in the patent);
+the entire text of the claim must be presented with
+markings as defined above;
-(C)All applicants are on notice that this rejection
+(B)For each new claim added to the reissue by
-will be made upon finding of the case otherwise in
+the amendment being submitted (the current amendment),
-condition for allowance where errors have been corrected
+the entire text of the added claim must be presented
-subsequent to the last oath/declaration filed in
+completely underlined;
-the case, so that the rejection should have been
-expected by applicant; and
-(D)The rejection will not prevent applicant from
+(C)A patent claim should be canceled by a direction
-exercising any rights to cure the rejection, since applicant
+to cancel that claim, there is no need to present
-need only submit a supplemental oath/declaration
+the patent claim surrounded by brackets; and
-with the above-described language, and it will be
-entered to cure the rejection.
-Where the application is in condition for allowance
+(D)A new claim (previously added in the reissue)
-and no amendments or other corrections of error
+should be canceled by a direction to cancel that claim.
-in the patent have been made subsequent to the
-last oath/declaration filed in the application, a supplemental
-reissue oath/declaration under 37 CFR
-.175(b)(1) should not be required by the examiner.
-Instead, the examiner should issue a Notice of
-Allowability indicating allowance of the claims.
-III.AFTER ALLOWANCE
+Original patent claims are never to be renumbered;
+see 37 CFR 1.173(e). A patent claim retains its number
+even if it is canceled in the reissue proceeding,
+and the numbering of any added claims must begin
+after the last original patent claim.
-Where applicant seeks to correct an error after
+Pursuant to 37 CFR 1.173(c), each amendment submitted
-allowance of the application, any amendment of the
+must set forth the status of all patent claims
-patent correcting the error must be submitted in accordance
+and all added claims as of the date of the submission.
-with 37 CFR 1.312. As set forth in 37 CFR
+The status to be set forth is whether the claim is pending
-.312, no amendment may be made as a matter of
+or canceled. The failure to submit the claim status
-right in an application after the mailing of the notice
+will generally result in a notification to applicant that
-of allowance. An amendment filed under 37 CFR
+the amendment prior to final rejection is not completely
-.312 must be filed before or with the payment of the
+responsive (see 37 CFR 1.135(c)). Such an
-issue fee and may be entered on the recommendation
+amendment after final rejection will not be entered.
-of the primary examiner, and approved by the supervisory
-patent examiner, without withdrawing the case
-from issue.
-Because the amendment seeks to correct an error in
+Also pursuant to 37 CFR 1.173(c), each claim
-the patent, the amendment will affect the disclosure,
+amendment must be accompanied by an explanation
-the scope of a claim, or add a claim. Thus, in accordance
+of the support in the disclosure of the patent for the
-with MPEP § 714.16, the remarks accompanying
+amendment (i.e., support for all changes made in the
-the amendment must fully and clearly state:
+claim(s), whether insertions or deletions). The failure
+to submit an explanation will generally result in a
+notification to applicant that the amendment prior to
+final rejection is not completely responsive (see
+CFR 1.135(c)). Such an amendment after final
+rejection will not be entered.
-(A)why the amendment is needed;
+III.THE DRAWINGS
-(B)why the proposed amended or new claims
+CFR 1.173(a)(2) states that amendments to the
-require no additional search or examination;
+original patent drawings are not permitted, and that
+any change to the drawings must be by way of
+CFR 1.173(b)(3). See MPEP § 1413 for the manner
+of making amendments to the drawings in a reissue
+application.
-(C)why the claims are patentable; and
+IV.ALL CHANGES ARE MADE VIS-À-VISTHE PATENT TO BE REISSUED
-(D)why they were not presented earlier.
+When a reissue patent is printed, all underlined
+matter is printed in italics and all brackets are printed
+as inserted in the application, in order to show exactly
+which additions and deletions have been made to
+the
+patent being reissued. Therefore, all underlining
+and bracketing in the reissue application should be
+made relative to the text of the patent, as follows. In
+accordance with 37 CFR 1.173(g), all amendments in
+the reissue application must be made relative to (i.e.,
+vis-à-vis) the patent specification in effect as of the
+date of the filing of the reissue application. The patent
+specification includes the claims and drawings. If
+there was a prior change to the patent (made via a
+prior concluded reexamination certificate, reissue of
+the patent, certificate of correction, etc.), the first
+amendment of the subject reissue application must be
+made relative to the patent specification as changed
+by the prior proceeding or other mechanism for
+changing the patent. All amendments subsequent to
+the first amendment must also be made relative to the
+patent specification in effect as of the date of the filing
+of the reissue application, and not relative to the prior
+amendment.
-A supplemental reissue oath/declaration must
+The Subject Patent Already Has Underlining or
-accompany the amendment. The supplemental reissue
+Bracketing
-oath/declaration must state that the error(s) to be corrected
-arose without any deceptive intention on the
+If the original (or previously changed) patent
-part of the applicant. The supplemental reissue oath/
+includes a formula or equation already having underlining
-declaration submitted after allowance must be
+or bracketing therein as part of the formula or
-directed to the error(s) applicant seeks to correct after
+equation, any amendment of such formula or equation
-allowance. This oath/declaration need not cover any
+should be made by bracketing the entire formula and
-earlier errors, since all earlier errors should have been
+rewriting and totally underlining the amended formula
-covered by a reissue oath/declaration submitted prior
+in the re-presented paragraph of the specification or
-to allowance.
+rewritten claim in which the changed formula or
+equation appears. Amendments of segments of a formula
+or equation should not be made. If the original
+patent includes bracketing and underlining from an
+earlier reexamination or reissue, double brackets and
+double underlining should be used in the subject reissue
+application to identify and distinguish the present
+changes being made. The subject reissue, when
+printed, would include double brackets (indicating
+deletions made in the subject reissue) and boldface
+type (indicating material added in the subject reissue).
-Occasionally correcting an error after allowance
+V.EXAMPLES OF PROPER AMENDMENTS
-does not include an amendment of the specification or
-claims of the patent. For example, the correction of
-the error could be the filing of a certified copy of the
-original foreign application (prior to the payment of
-the issue fee - see 37 CFR 1.55(a)(2)) to obtain the
-right of foreign priority under 35 U.S.C. 119 (see
-Brenner v. State of Israel, 400 F.2d 789, 158 USPQ
-(D.C. Cir. 1968)) where the claim for foreign priority
-had been timely made in the application for the
-original patent. In such a case, the requirements of
-CFR 1.312 must still be met. This is so, because
-the correction of the patent is an amendment of the
+A substantial number of problems arise in the
+Office because of improper submission of amendments
+in reissue applications. The following examples
+are provided to assist in preparation of proper amendments
+to reissue applications.
+A.Original Patent Description or Patent Claim
+Amended
+'''Example (1)'''
+If it is desired to change the specification at column
+line 23, to replace “is” with --are--, submit a
+copy of the entire paragraph of specification of the
+patent being amended with underlining and bracketing,
+and point out where the paragraph is located,
+e.g.,
-patent, even though no amendment is physically
+<code>Replace the paragraph beginning at column 4, line 23
-entered into the case. Thus, for a reissue oath/declaration
+with the following:</code>
-submitted after allowance to correct an additional
-error (or errors), the reissue applicant must comply
-with 37 CFR 1.312 in the manner discussed above.
-Reissue Application Examined in
+<code>Scanning [is] <u>are</u> controlled by clocks which are, in turn,
-Same Manner as Original Application
+controlled from the display tube line synchronization. The
+signals resulting from scanning the scope of the character
+are delivered in parallel, then converted into serial mode
+through a shift register wherein the shift signal frequency is
+controlled by a clock that is, in turn, controlled from the display
+tube line synchronization.</code>
+'''Example (2)'''
-As stated in 37 CFR 1.176, a reissue application,
+For changes to the claims, one must submit a copy
-including all the claims therein, is subject to “be
+of the entire patent claim with the amendments
-examined in the same manner as a non-reissue, non-
+shown by underlining and bracketing, e.g.,
-provisional application.” Accordingly, the claims in a
-reissue application are subject to any and all rejections
+<code>Amend claim 6 as follows:</code>
-which the examiner deems appropriate. It does
-not matter whether the claims are identical to those of
-the patent or changed from those in the patent. It also
-does not matter that a rejection was not made in the
-prosecution of the patent, or could have been made, or
-was in fact made and dropped during prosecution of
-the patent; the prior action in the prosecution of the
-patent does not prevent that rejection from being
-made in the reissue application. Claims in a reissue
-application enjoy no “presumption of validity.” In re
-Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233
-(CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4,
-USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise,
-the fact that during prosecution of the patent the
-examiner considered, may have considered, or should
-have considered information such as, for example, a
-specific prior art document, does not have any bearing
-on, or prevent, its use as prior art during prosecution
-of the reissue application.
-Fraud, Inequitable Conduct, or
+<code>Claim 6 (Amended). The apparatus of claim [5] <u>1</u> wherein
-Duty of Disclosure Issues [R-2]
+the [first] <u>second</u> piezoelectric element is parallel to the
+[second] <u>third</u> piezoelectric element.</code>
-The Office no longer investigates and rejects reissue
+If the dependency of any original patent claim is to
-applications under 37 CFR 1.56. The Office will
+be changed by amendment, it is proper to make
-not comment upon duty of disclosure issues which are
+that original patent claim dependent upon a later
-brought to the attention of the Office in reissue applications
+filed higher numbered claim.
-except to note in the application, in appropriate
-circumstances, that such issues are no longer
-considered by the Office during its examination of
-patent applications. Examination as to the lack of
-deceptive intent requirement in reissue applications
-will continue but without any investigation of fraud,
-inequitable conduct, or duty of disclosure issues.
-Applicant’s statement in the reissue oath or declaration
-of lack of deceptive intent will be accepted as dispositive
-except in special circumstances such as an
-admission or judicial determination of fraud, inequitable
-conduct, or violation of the duty of disclosure.
-ADMISSION OR JUDICIAL DETERMINATION
+B.Cancellation of Claim(s)
-An admission or judicial determination of fraud,
+'''Example (3)'''
-inequitable conduct, or violation of the duty of disclosure
-is a special circumstance, because no investigation
-need be made. Accordingly, after consulting with
-the Technology Center (TC) Special Program Examiner
-(SPRE), a rejection should be made using the
-appropriate one of form paragraphs 14.21.09 or 14.22as reproduced below.
-Any admission of fraud, inequitable conduct or violation
+To cancel an original patent claim, in writing,
-of the duty of disclosure must be explicit,
+direct cancellation of the patent claim, e.g.,
-unequivocal, and not subject to other interpretation.
-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
-facts that would not lead to a conclusion of fraud,
-inequitable conduct or violation of the duty of disclosure,
-the rejection should be withdrawn. Alternatively,
-if applicant argues that the admission noted by the
-examiner was not in fact an admission, the rejection
-should also be withdrawn.
-Form paragraph 14.21.09 should be used where the
+<code>Cancel claim 6.</code>
-examiner becomes aware of a judicial determination
-of fraud, inequitable conduct or violation of the duty
-of disclosure on the part of the applicant independently
-of the record of the case, i.e., the examiner
-has external knowledge of the judicial determination.
-Form paragraph 14.22 should be used where, in the
+'''Example (4)'''
-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.
+To cancel a new claim (previously added in the
+reissue), in writing, direct cancellation of the new
+claim, e.g.,
+<code>Cancel claim 15.</code>
+C.Presentation of New Claims
+'''Example (5)'''
-¶ 14.21.09 Rejection, 35 U.S.C. 251, No Error Without
+Each new claim (i.e., a claim not found in the
-Deceptive Intention - External Knowledge
+patent, that is newly presented in the reissue application)
+should be presented with underlining
+throughout the claim, e.g.,
-Claims [1] rejected under 35 U.S.C. 251 since error “without
+<code>Add claim 7 as follows:</code>
-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:
+<code><u>Claim 7. The apparatus of claim 5 further comprising
+electrodes attaching to said opposite faces of the first and
+second piezoelectric elements.</u></code>
-.In bracket 1, list all claims in the reissue application.
+Even though original claims may have been canceled,
+the numbering of the original claims does
+not change. Accordingly, any added claims are
+numbered beginning with the number next higher
+than the number of claims in the original patent. If
+new claims have been added to the reissue application
+which are later canceled prior to issuance of
+the reissue patent, the examiner will renumber any
+remaining new claims in numerical order to follow
+the number of claims in the original patent.
-.In bracket 2, list the Court or administrative body which
+D.Amendment of New Claims
-made the determination of fraud or inequitable conduct on the
-part of applicant.
-.In bracket 3, insert --fraud--, --inequitable conduct-- and/or -
+An amendment of a “new claim” (i.e., a claim not
--violation of duty of disclosure--.
+found in the patent, that was previously presented
+in
+the reissue application) must be done by presenting
+the amended “new claim” containing the amendatory
+material, and completely underlining the claim. The
+presentation cannot contain any bracketing or other
+indication of what was in the previous version of
+the
+claim. This is because all changes in the
+reissue
+are
+made vis-à-vis the original patent, and not
+in comparison to the prior amendment. Although the
+presentation of the amended claim does not contain
+any indication of
+what is changed from the previous
+version of the claim, applicant must point out what is
+changed in the “Remarks” portion of the amendment.
+Also, per 37 CFR 1.173(c), each change made in the
+claim must be accompanied by an explanation of the
+support in the disclosure of the patent for the change.
-.In bracket 4, point out where in the opinion (or holding) of
+E.Amendment of Original Patent Claims More
-the Court or administrative body the determination of fraud, inequitable
+Than Once
-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.
+The following illustrates proper claim amendment
+of original patent claims in reissue applications:
+A. Patent claim.
-¶ 14.22 Rejection, 35 U.S.C. 251, No Error Without
+<code>Claim 1. A cutting means having a handle portion
-Deceptive Intention-Evidence in the Application
+and a blade portion.</code>
-Claims [1] rejected under 35 U.S.C. 251 since error “without
+B. Proper first amendment format.
-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]
+<code>Claim 1 (Amended). A [cutting means] <u>knife</u> having
+a <u>bone</u> handle portion and a <u>notched</u> blade portion.</code>
-Examiner Note:
+C. Proper second amendment format.
-.In bracket 1, list all claims in the reissue application.
+<code>Claim 1 (Twice Amended). A [cutting means]
+<u>knife</u> having a handle portion and a <u>serrated</u> blade
+portion.</code>
-.In bracket 2, insert the filing date of the reply which provides
+Note that the second amendment must include the
-an admission of fraud, inequitable conduct or violation of duty of
+changes previously presented in the first amendment,
-disclosure, or that there was a judicial determination of same.
+i.e., [cutting means] <u>knife</u>, as well as the new changes
+presented in the second amendment, i.e., <u>serrated</u>.
-.In bracket 3, insert a statement that there has been an admission
+The word <u>bone</u> was presented in the first amendment
-or a judicial determination of fraud, inequitable conduct or
+and is now to be deleted in the second amendment.
-violation of duty of disclosure which provide circumstances why
+The word "bone" is NOT to be shown in
-applicant’s statement in the oath or declaration of lack of deceptive
+brackets in the second amendment. Rather, the word
-intent should not be taken as dispositive. Any admission of
+"bone" is simply omitted from the claim, since "bone"
-fraud, inequitable conduct or violation of duty of disclosure must
+never appeared in the patent. An explanation of the
-be explicit, unequivocal, and not subject to other interpretation.
+deletion should appear in the remarks.
+The word <u>notched</u> which was presented in the first
+amendment is replaced by the word serrated in the
+second amendment. The word <u>notched</u> is being
+deleted in the second amendment and did not appear
+in the patent; accordingly, "notched" is not shown in
+any form in the claim. The word <u>serrated</u> is being
+added in the second amendment, and accordingly
+"serrated" is added to the claim and is underlined.
+In the second amendment, the deletions of
+"notched" and "bone" are not changes from the original
+patent claim text and therefore are not shown in
+brackets in the second amendment. In both the first
+and the second amendments, the entire claim is presented
+only with the changes from the <u>original patent
+text</u>.
-See MPEP § 2012 for additional discussion as to
+VI.ADDITIONAL EXAMPLES
-fraud, inequitable conduct or violation of duty of disclosure
-in a reissue application.
-Protest Filed in Reissue Where
+(A)For a reissue application, where the patent
-Patent Is in Interference [R-3]
+was previously reissued:
-If a protest (see MPEP Chapter 1900) is filed in a
+As per MPEP § 1411, double underlining and
-reissue application related to a patent involved in a
+double bracketing are used in the second reissue
-pending interference proceeding, the reissue application
+application to show amendments made relative to the
-should be referred to the Office of Patent Legal
+first reissued patent
-Administration (OPLA) before considering the protest
-and acting on the reissue application.
-The OPLA will check to see that:
+(B)For a reissue application, where the patent
+was previously reexamined and a reexamination certificate
+has issued for the patent:
-(A)all parties to the interference are aware of the
+An amendment in the reissue application must be
-filing of the reissue; and
+presented as if the changes made to the original patent
+text via the reexamination certificate are a part of the
+original patent. Thus, all italicized text of the reexamination
+certificate is presented in the amendment
+(made in the reissue application) without italics. Further,
+any text found in brackets in the reexamination
+certificate is omitted in the amendment (made in the
+reissue application).
-(B)the Office does not allow claims in the reissue
+(C)For a reissue application, where a certificate
-which are unpatentable over the pending interference
+of correction has issued for the patent:
-count(s), or found unpatentable in the interference
-proceeding. After the reissue application has been
-reviewed by the OPLA, the reissue application with
-the protest will be returned to the examiner. See
-MPEP § 1441.01 for a discussion as to protests under
-CFR 1.291 in reissue applications.
-.01Concurrent Office Proceedings
+An amendment in the reissue application must be
-[R-5]
+presented as if the changes made to the original patent
+text via the certificate of correction are a part of the
+original patent. Thus, all text added by certificate of
+correction is presented in the amendment (made in the
+reissue application) without italics. Further, any text
+deleted by certificate of correction is entirely omitted
+in the amendment (made in the reissue application).
-I.CONCURRENT REEXAMINATION PROCEEDINGS:
+(D)For a reissue application, where a statutory
+disclaimer has issued for the patent:
+Any claim statutorily disclaimed is no longer in
+the patent, and such a claim cannot be amended. The
+statutorily disclaimed claim(s) should be lined
+through, and not surrounded by brackets.
+==1454 Appeal Brief==
-CFR 1.565(d) provides that if “a reissue application
+The requirements for an appeal brief are set forth in
-and an ex parte reexamination proceeding on
+CFR 41.37 and MPEP § 1206, and they apply
-which an order pursuant to 37 CFR 1.525 has been
+to a reissue application in the same manner that they
-mailed are pending concurrently on a patent, a decision
+apply to a non-reissue application. There is, however,
-will normally be made to merge the two proceedings
+a difference in practice as to presentation of the copy
-or to suspend one of the two proceedings.”
+of the claims in the appeal brief for a reissue application.
+The claims on appeal presented in an appeal
-CFR 1.991 provides that if “a reissue application
+brief for a reissue application should include all
-and an inter partes reexamination proceeding on
+underlining and bracketing necessary to reflect the
-which an order pursuant to 37 CFR 1.931 has been
+changes made to the patent claims during the prosecution
-mailed are pending concurrently on a patent, a decision
+of the reissue application. In addition, any new
-may be made to merge the two proceedings or to
+claims added in the reissue application should be
-suspend one of the two proceedings”. If an examiner
+completely underlined.
-becomes aware that a reissue application and an ex
-parte or inter partes reexamination proceeding are
-both pending for the same patent, he or she should
-immediately inform the Technology Center (TC)
-or Central Reexamination Unit (CRU) Special Program
-Examiner (SPRE).
-Pursuant to 37 CFR 1.177, a patent owner may file
-more than one reissue application for the same patent.
-If an examiner becomes aware that multiple reissue
-applications are pending for the same patent, and an
-ex parte or inter partes reexamination proceeding is
-pending for the same patent, he or she should immediately
-inform the TC SPRE.
-Where a reissue application and a reexamination
+==1455 Allowance and Issue==
-proceeding are pending concurrently on a patent, and
-an order granting reexamination has been issued for
-the reexamination proceeding, the Office of Patent
+I.ISSUE CLASSIFICATION SHEET
+For IFW reissue applications:
+The examiner completes the Issue Classification
+sheet in the same manner as for a non-reissue application.
+In addition, a copy of the “Final SPRE Review”
+form must also be completed.
+For reissue application files that are maintained in
+paper:
-Legal Administration (OPLA) must be notified that
+In all reissue applications prepared for issue where
-the proceedings are ready for a decision as to whether
+a blue slip is needed (i.e., 08/ and earlier series), the
-to merge the reissue and the reexamination, or stay
+patent number of the original patent which is being
-one of the two. See MPEP § 2285 for the
+reissued should be placed in the box provided therefor
-procedure of
+below the box for the applicant’s name on the blue
-notifying OPLA and general guidance, if a reissue
+Issue Classification Slip (form PTO-270) or design
-application and an ex parte reexamination proceeding
+Issue Classification Slip (form PTO-328). Otherwise,
-are both pending for the same patent, and
+the Issue Classification Slip is prepared in the same
-an inter
+manner as for a non-reissue application.
-partes reexamination proceeding is not involved. See
-MPEP § 2686.03 where a reissue application and an
-inter partes reexamination proceeding are both pending
-for the same patent, regardless of whether an ex
-parte reexamination proceeding is also pending.
-Where a reissue application and a reexamination
+II. CHANGES TO THE ORIGINAL
-proceeding are pending concurrently on a patent, the
+PATENT
-patent owner, i.e., the reissue applicant, has a responsibility
-to notify the Office of the concurrent proceeding.
-CFR § 1.178(b), 37 CFR 1.565(a), and
-CFR 1.985(a). The patent owner should file in the
-reissue application, as early as possible, a Notification
-of Concurrent Proceedings pursuant to 37 CFR
-.178(b) in order to alert the Office of the existence of
-the reexamination proceeding on the same patent. See
-MPEP § 1418. In addition, the patent owner should
-file in the reexamination proceeding, as early as possible,
-a Notification of Concurrent Proceedings pursuant
-to 37 CFR 1.565(a) or 1.985(a) (depending on
-whether the reexamination proceeding is an ex partereexamination proceeding or an inter partes reexamination
-proceeding) to provide a notification to the
-Office in the reexamination proceeding of the existence
-of the two concurrent proceedings.
-The patent owner may file a petition under 37 CFR
+The specifications of reissue patents will be printed
-.182 in a reissue application to merge the reissue
+in such a manner as to show the changes over the
-application with the reexamination proceeding, or to
+original patent text by enclosing any material omitted
-stay one of the proceedings because of the other. This
+by the reissue in heavy brackets [ ] and printing material
-petition must be filed after the issuance of the order to
+added by the
-reexamine (37 CFR 1.525, 37 CFR 1.931) in the reexamination
+reissue in italics. 37 CFR 1.173 (see
-proceeding. If the petition is filed prior to
+MPEP § 1411) requires the specification of a reissue
-the reexamination order, it will not be considered, and
+application to be presented in a specified form, specifically
-will be returned to the patent owner by the TC or
+designed to facilitate this different manner of
-CRU Director. If the petition is filed after the issuance
+printing, as well as for other reasons.
-of the order to reexamine, the petition and the
-files for the reissue application and the reexamination
-proceeding will be forwarded to OPLA for decision.
-II.CONCURRENT INTERFERENCE PROCEEDINGS
+The printed reissue patent specification will carry
+the following heading, which will be added by the
+Publishing Division of the Office of Patent Publication:
+“Matter enclosed in heavy brackets [ ] appears in the original
+patent but forms no part of this reissue specification;
+matter printed in italics indicates the additions made by
+reissue.”
-If the original patent is involved in an interference,
+The examiners should see that the specification is
-the examiner must consult the administrative patent
+in proper form for printing. Examiners should carefully check the entry of all amendments to ensure that
-judge in charge of the interference before taking any
+the changes directed by applicant will be accurately
-action on the reissue application. It is particularly
+printed in any reissue patent that may ultimately issue.
-important that the reissue application not be granted
+Matter appearing in the original patent which is omitted
-without the administrative patent judge’s approval.
+by reissue should be enclosed in brackets, while
-See MPEP Chapter 2300.
+matter added by reissue should be underlined.
-III.CONCURRENT REISSUE PROCEEDINGS
+Any material added by amendment in the reissue
+application (as underlined text) which is later canceled
+should be crossed through, and not bracketed.
+Material cancelled from the original patent should be
+enclosed in brackets, and not lined through.
+All the claims of the original patent should appear
+in the reissue patent, with canceled patent claims
+being enclosed in brackets.
-Where more than one reissue applications are pending
+III. CLAIM NUMBERING
-concurrently on the same patent, see MPEP
-§§
-and 1451.
-.02Interference in Reissue [R-5]
+No renumbering of the original patent claims is permitted,
+even if the dependency of a dependent patent
+claim is changed by reissue so that it is to be dependent
+on a subsequent higher numbered claim.
-CFR 41.8. Mandatory notices.
+When a dependent claim in a reissue application
+depends upon a claim which has been canceled, and
+the dependent claim is not thereafter made dependent
+upon a pending claim, such a dependent claim must
+be rewritten in independent form.
-(a)In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the
+New claims added during the prosecution of the
-initiation of a contested case (§ 41.101), and within 20 days of any
+reissue application should follow the number of the
-change during the proceeding, a party must identify:
+highest numbered patent claim and should be completely
+underlined to indicate they are to be printed in
-(1)Its real party-in-interest, and
+italics on the printed patent. Often, as a result of the
+prosecution and examination, some new claims are
-(2)Each judicial or administrative proceeding that could
+canceled while other new claims remain. When the
-affect, or be affected by, the Board proceeding.
+reissue application is allowed, any claims remaining
+which are additional to the patent claims (i.e., claims
-(b)For contested cases, a party seeking judicial review of a
+added via the reissue application) should be renumbered
-Board proceeding must file a notice with the Board of the judicial
+in sequence starting with the number next
-review within 20 days of the filing of the complaint or the notice
+higher than the number of the last claim in the original
-of appeal. The notice to the Board must include a copy of the
+patent (the printed patent). Therefore, the number of
-complaint or notice of appeal. See also §§ 1.301 to 1.304 of this
+claims allowed will not necessarily correspond to the
-title.
+number of the last claim in the reissue application, as
+allowed. The number of claims appearing in the
+“Total Claims Allowed” box on the Issue Classification
+sheet (or for reissue application files that are
+maintained in paper, the “CLAIMS ALLOWED -
+Total Claims” box on the lower right of the file wrapper
+face) at the time of allowance should be consistent
+with the number of claims indicated as allowable
+on the Notice of Allowability (Form PTOL-37).
-CFR 41.202. Suggesting an interference.
+IV. CLAIM DESIGNATED FOR PRINTING
-(a)Applicant. An applicant, including a reissue applicant,
+At least one claim of an allowable reissue application
-may suggest an interference with another application or a patent.
+must be designated for printing in the Official
-The suggestion must:
+Gazette. Whenever at least one claim has been
+amended or added in the reissue, the claim (claims)
+designated for printing must be (or include) a claim
+which has been changed or added by the reissue. A
+canceled claim is not to be designated as the claim for
+the Official Gazette.
-(1)Provide sufficient information to identify the application
+If there is no change in the claims of the allowable
-or patent with which the applicant seeks an interference,
+reissue application (i.e., when they are the same as the
+claims of the original patent) or, if the only change in
+the claims is the cancellation of claims, then the most
+representative pending allowed claim is designated
+for printing in the Official Gazette.
-(2)Identify all claims the applicant believes interfere,
+V. PROVIDING PROPER FORMAT
-propose one or more counts, and show how the claims correspond
-to one or more counts,
-(3)For each count, provide a claim chart comparing at
+Where a reissue application has not been prepared
-least one claim of each party corresponding to the count and show
+in the above-indicated manner, the examiner may
-why the claims interfere within the meaning of § 41.203(a),
+obtain from the applicant a clean copy of the reissue
+specification prepared in the indicated form, or a
-(4)Explain in detail why the applicant will prevail on priority,
+proper submission of a previously improperly submitted
+amendment. However, if the deletions from the
+original patent are small, the reissue application can
+be prepared for issue by putting the bracketed inserts
+at the appropriate places and suitably numbering the
+added claims.
+When applicant submits a clean copy of the reissue
+specification, or a proper submission of a previous
+improper amendment, a supplemental reissue declaration
+should not be provided to address this submission,
+because the correction of format does not correct
+a 35 U.S.C. 251 error in the patent.
-(5)If a claim has been added or amended to provoke an
+VI. PARENT APPLICATION DATA
-interference, provide a claim chart showing the written description
-for each claim in the applicant’s specification, and
-(6)For each constructive reduction to practice for which
+All parent application data on the bibliographic
-the applicant wishes to be accorded benefit, provide a chart showing
+data sheet of the original patent file (or front face of
-where the disclosure provides a constructive reduction to practice
+the original patent file wrapper if the original patent is
-within the scope of the interfering subject matter.
+a paper file) should be present on the bibliographic
+data sheet of the reissue application.
+It sometimes happens that the reissue is a continuation
+of another reissue application, and there is also
+original-patent parent application data. The examiner
+should ensure that the parent application data on the
+original patent is properly combined with the parent
+application data of the reissue, in the text of the specification
+and on the bibliographic data sheet (or
+on the front face of the reissue file wrapper for 08/
+and earlier series applications).  The combined
+statement as to parent application data should be
+checked carefully for proper bracketing and underlining.
+VII. REFERENCES CITED AND PRINTED
+The list of references to be printed in the reissue
+patent includes all the references cited during the
+prosecution of the reissue application. It is noted that
+the Office will not print in the reissue patent “References
+Cited” section any reference cited in the patent
+but not again cited in the reissue application. A patent
+cannot be reissued solely for the purpose of adding
+citations of additional prior art.
+VIII. EXAMINER'S AMENDMENT AND SUP-
+PLEMENTAL DECLARATION
+When it is necessary to amend the reissue application
+in order to place the application in condition for
+allowance, the examiner may:
+(A)request that applicant provide the amendments
+(e.g., by facsimile transmission or by hand-
+carry); or
-(c)Examiner. An examiner may require an applicant to add
+(B)make the amendments, with the applicant’s
-a claim to provoke an interference. Failure to satisfy the requirement
+approval, by a formal examiner’s amendment.
-within a period (not less than one month) the examiner sets
-will operate as a concession of priority for the subject matter of
-the claim. If the interference would be with a patent, the applicant
-must also comply with paragraphs (a)(2) through (a)(6) of this
-section. The claim the examiner proposes to have added must,
-apart from the question of priority under 35 U.S.C. 102 (g):
-(1)Be patentable to the applicant, and
+If the changes are made by a formal examiner’s
+amendment, the entire paragraph(s) or claim(s) being
-(2)Be drawn to patentable subject matter claimed by
+amended need not be presented in rewritten form for
-another applicant or patentee.
+any deletions or additions. Changes to the specification
+including the claims of an application made by
+the Office in an examiner’s amendment may be made
+by specific instructions to insert or delete subject matter
+set forth in the examiner’s amendment by identifying
+the precise point in the specification or the
+claim(s) where the insertion or deletion is to be made.
+CFR 1.121(g).
+If it is necessary to amend a claim or the specification
+in order to correct an “error” under 35 U.S.C. 251and thereby place the application in condition for
+allowance, then a supplemental oath or declaration
+will be required. See MPEP § 1444. The examiner
+should telephone applicant and request the supplemental
+oath or declaration, which must be filed before
+the application can be counted as an allowance.
+IX. FINAL REVIEW OF THE REISSUE
+APPLICATION BY THE EXAMINER
-In appropriate circumstances, a reissue application
+Prior to forwarding a reissue application to the
-may be placed into interference with a patent or pending
+Technology Center (TC) Special Program Examiner
-application. A patentee may provoke an interference
+(SPRE) for final review, the examiner should complete
-with a patent or pending application by filing a
+and initial an Examiner Reissue Checklist. A
-reissue application, if the reissue application includes
+copy of the checklist should be available from the
-an appropriate reissue error as required by 35 U.S.C.
+SPRE or from the Paralegal Specialist of the TC.
-. Reissue error must be based upon applicant
-error; a reissue cannot be based solely on the error of
-the Office for failing to declare an interference or to
-suggest copying claims for the purpose of establishing
-an interference. See In re Keil, 808 F.2d 830,
-USPQ2d 1427 (Fed. Cir. 1987); In re Dien, 680 F.2d
-, 214 USPQ 10 (CCPA 1982); In re Bostwick, 102
-F.2d 886, 888, 41 USPQ 279, 281 (CCPA 1939); and
-In re Guastavino, 83 F.2d 913, 916, 29 USPQ 532,
-(CCPA 1936). See also Slip Track Systems, Inc. v.
-Metal Lite, Inc., 159 F.3d 1337, 48 USPQ2d 1055
-(Fed. Cir. 1998) (Two patents issued claiming the
-same patentable subject matter, and the patentee with
-the earlier filing date requested reexamination of the
-patent with the later filing date (Slip Track’s patent).
-A stay of litigation in a priority of invention suit under
-U.S.C. 291, pending the outcome of the reexamination,
-was reversed. The suit under 35 U.S.C. 291was the only option available to Slip Track to determine
-priority of invention. Slip Track could not file a
-reissue application solely to provoke an interference
-proceeding before the Office because it did not assert
-that there was any error as required by 35 U.S.C. 251in the patent.). A reissue application can be employed
-to provoke an interference if the reissue application:
-(A)adds copied claims which are not present in
+==1456 Reissue Review==
-the original patent;
-(B)amends claims to correspond to those of the
+All reissue applications are monitored and
-patent or application with which an interference is
+reviewed in the Technology Centers (TCs) by the
-sought; or
+Office of TC Special Program Examiners (which
+includes TC SPREs, paralegals or other technical support
+who might be assigned as backup) at several
+stages during the prosecution. The review by the
+Office of the TC SPREs is made to check that practice
+and procedure unique to reissue has been carried out
+for the reissue application. In addition to the SPRE
+review of the reissue applications, a patentability
+review is made in a sample of reissue applications by
+the TC Quality Assurance Specialist (QAS) in the
+manner previously carried out by the former Office of
+Patent Quality Review. In order to ensure that SPREs
+are aware of the reissue applications in their TCs, a
+pair of terminal-specific PALM flags have been created
+which must be set by the SPRE before certain
+PALM transactions can be completed. First, when a
+new reissue application enters the TC, a SPRE must
+set a PALM “flag” by entering the reissue application
+number in an Office-wide computer grouping before a
+docketing transaction will be accepted. By having to
+set this first flag, the SPRE is made aware of the
+assignment of the reissue application to the TC and
+can take steps, as may be appropriate, to instruct the
+examiner on reissue-specific procedures before the
+examination process begins, as well as throughout the
+period that the examiner is handling the reissue application.
+Second, the SPRE must remove the above-
+described PALM “flag” before a Notice of Allowance
+can be generated or the PALM transaction for an issue
+revision can be entered, thereby ensuring that the
+SPRE is made aware of when the reissue application
+is being allowed so that the SPRE may be able to conduct
+a final review of the reissue application, if appropriate.
+When the reissue application has been reviewed
+and is ready to be released to issue, the TC SPRE
+should do the following:
-(C)contains at least one error (not directed to
+== 1457 Design Reissue Applications and Patents==
-provoking an interference) appropriate for the reissue.
-In the first two situations, the reissue oath/declaration
+A reissue application can be filed for a design
-must assert that applicant erred in failing to
+patent in the same manner that a reissue application is
-include claims of the proper scope to provoke an
+filed for a utility patent. There are, however, a few
-interference in the original patent application. Note
+aspects of a design reissue application that are
-that in In re Metz, 173 F.3d 433 (Fed. Cir. 1998)
+addressed as follows:
-(table), the Federal Circuit permitted a patentee to file
-a reissue application to copy claims from a patent in
-order to provoke an interference with that patent. Furthermore,
-the subject matter of the copied or amended
-claims in the reissue application must be supported by
-the disclosure of the original patent under 35 U.S.C.
-, first paragraph. See In re Molins, 368 F.2d 258,
-, 151 USPQ 570, 572
-(CCPA 1966) and In re
-Spencer, 273 F.2d 181, 124 USPQ 175 (CCPA 1959).
-A reissue applicant cannot present added or
+I.EXPEDITED EXAMINATION PROCE-
-amended claims to provoke an interference, if the
+DURE
-claims were deliberately omitted from the patent. If
-there is evidence that the claims were not inadvertently
-omitted from the original patent, e.g., the subject
-matter was described in the original patent as being
-undesirable, the reissue application may lack proper
-basis for the reissue. See In re Bostwick, 102 F.2d at
-, 41 USPQ at 282 (CCPA 1939)(reissue lacked a
-proper basis because the original patent pointed out
-the disadvantages of the embodiment that provided
-support for the copied claims).
-The issue date of the patent, or the publication date
+Design reissue applications requesting expedited
-of the application publication (whichever is applicable
+examination and complying with the requirements of
-under 35 U.S.C. 135(b)), with which an interference
+CFR 1.155 are examined with priority and undergo
-is sought must be less than 1 year prior to the presentation
+expedited processing throughout the entire course of
-of the copied or amended claims in the reissue
+prosecution in the Office, including appeal, if any, to
-application. See 35 U.S.C. 135(b) and MPEP § 715.05and MPEP Chapter 2300. If the reissue application
+the Board of Patent Appeals and Interferences. All
-includes broadened claims, the reissue application
+processing is expedited from the date the request is
-must be filed within two years from the issue date of
+granted.
-the original patent. See 35 U.S.C. 251 and MPEP §
-.03.
-An examiner may, pursuant to 37 CFR 41.202(c),
+Design reissue applicants seeking expedited examination
-require a reissue applicant to add a claim to provoke
+may file a design reissue application in the
-an interference, unless the reissue applicant cannot
+Office together with a corresponding request under 37
-present the added claim to provoke an interference
+CFR 1.155 pursuant to the guidelines set forth in
-based upon the provisions of the reissue statute and
+MPEP § 1504.30.
-rules, e.g., if the claim was deliberately omitted from
-the patent, or if the claim enlarges the scope of the
-claims of the original patent and was not “applied for
-within two years from the grant of the original
+The design reissue application and the request are
+processed by the Office of Initial Patent Examination
+(OIPE). OIPE enters the appropriate information
+into PALM specifying when notice of the design
+reissue application will be published in the Official
+Gazette (see MPEP § 1441).  After processing in
+OIPE, the design reissue application and the request
+are forwarded to the Design TC Director’s Office.
+Upon a decision by the Design TC Director to grant
+the request for expedited examination, fees are immediately
+processed, and the application papers are
+promptly assigned an application number. The design
+reissue application file is then forwarded to the Office
+of Patent Legal Administration (OPLA) for a decision
+under 37 CFR 1.182 to sua sponte waive the requirement
+for delaying action in the application until 2
+months after announcement of the design reissue
+application filing is published in the Official Gazette(see MPEP § 1441). Once the decision under 37 CFR
+.182 is mailed, the design reissue application file
+will be returned to the Design TC Director’s Office. In
+accordance with the waiver, the Design Group will
+begin expedited examination of the application under
+CFR 1.155 promptly after the return of the design
+reissue application file from OPLA, rather than delay
+examination until after 2 months from the date the
+announcement is published in the Official Gazette and
+the applicant will be notified that examination is
+being expedited. The decision under 37 CFR 1.182will require that no Notice of Allowance be mailed in
+the design reissue application until after 2 months
+from the date the announcement is published in the
+Official Gazette. For example, if the design reissue
-patent.” Failure to satisfy the requirement within a
-period (not less than one month) the examiner sets
-will operate as a concession of priority for the subject
-matter of the claim. If the interference would be with
-a patent, the reissue applicant must also comply with
-CFR 41.202(a)(2) through (a)(6). The claim the
-examiner proposes to have added must, apart from the
-question of priority under 35 U.S.C. 102(g), be patentable
-to the reissue applicant, and be drawn to patentable
-subject matter claimed by another applicant or
-patentee.
-REISSUE APPLICATION FILED WHILE
-PATENT IS IN INTERFERENCE
-If a reissue application is filed while the original
-patent is in an interference proceeding, the reissue
-applicant must promptly notify the Board of Patent
-Appeals and Interferences of the filing of the reissue
-application within 20 days from the filing date. See 37
-CFR 41.8 and MPEP Chapter 2300.
-Restriction and Election of Species
-Made in Reissue Application
-[R-2]
-CFR 1.176. Examination of reissue.
-(a)A reissue application will be examined in the same manner
+application is allowed on the first Office action, then
-as a non-reissue, non-provisional application, and will be subject
+jurisdiction over the reissue application will be
-to all the requirements of the rules related to non-reissue
+retained in the TC, and the Notice of Allowance
-applications. Applications for reissue will be acted on by the
+will not be mailed until the expiration of 2 months
-examiner in advance of other applications.
+after publication of the filing of the design reissue
+application in the Official Gazette (plus time for
+matching any protest filed with the application). (For
+IFW processing, see IFW Manual.) The examiner will
+check  the PALM contents to ascertain when publication
+actually occurred. The delay in the mailing of
+the Notice of Allowance is to ensure that any potential
+protests complying with 37 CFR 1.291 submitted
+within the 2-month delay period will be considered by
+the Office. (see MPEP § 1441.01).
-(b)Restriction between subject matter of the original patent
+The expedited examination procedure under
-claims and previously unclaimed subject matter may be required
-(restriction involving only subject matter of the original patent
+CFR 1.155 occurs through initial examination processing
-claims will not be required). If restriction is required, the subject
+and throughout the entire prosecution in the
-matter of the original patent claims will be held to be constructively
+Office. Once a request for expedited examination is
-elected unless a disclaimer of all the patent claims is filed in
+granted, prosecution of the design reissue application
-the reissue application, which disclaimer cannot be withdrawn by
+will proceed according to the procedure under
-applicant.
+CFR 1.155, and there is no provision for “withdrawal”
+from expedited examination procedure.
+II.DESIGN REISSUE FEE
+The design reissue application fee is set forth for in
+CFR 1.16(e). For design reissue applications
+filed on or after December 8, 2004, a search fee
+(37
+CFR 1.16(n)) and an examination fee (37 CFR
+.16(r)) are also required. The additional fees in
+CFR 1.16(h) and 37 CFR 1.16(i) do not
+apply for a design reissue application since more than
+one claim in not permitted in a design application pursuant
+to the last sentence of 37 CFR 1.153(a).
+The fee for issuing a design reissue patent is set
+forth in 37 CFR 1.18(a).
-CFR 1.176(b) permits the examiner to require
+III.MULTIPLE DESIGN REISSUE APPLICATIONS
-restriction in a reissue application between claims
-newly added in a reissue application and the original
-patent claims, where the added claims are directed to
-an invention which is separate and distinct from the
-invention(s) defined by the original patent claims. The
-criteria for making a restriction requirement in a reissue
-application between the newly added claims and
-the original claims are the same as that applied in a
-non-reissue application. See MPEP §§ 806 through
-.05(i). The authority to make a “restriction”
-requirement under 37 CFR 1.176(b) extends to and
-includes the authority to make an election of species.
-Where a restriction requirement is made by the
-examiner, the original patent claims will be held to be
-constructively elected (except for the limited situation
-where a disclaimer is filed as discussed in the next
-paragraph). Thus, the examiner will issue an Office
-action in the reissue application (1) providing notification
-of the restriction requirement, (2) holding the
-added claims to be constructively non-elected and
-withdrawn from consideration,  (3) treating the original
-patent claims on the merits, and (4) informing
-applicant that if the original claims are found allowable,
-and a divisional application has been filed for
-the non-elected claims, further action in the application
-will be suspended, pending resolution of the divisional
-application..
-If a disclaimer of all the original patent claims is
+The design reissue application can be filed based on
-filed in the reissue application containing newly
+the “error” of failing to include a design for a patentably
-added claims that are separate and distinct from the
+distinct segregable part of the design claimed in
-original patent claims, only the newly added claims
+the original patent or a patentably distinct subcombination
-will be present for examination. In this situation, the
+of the claimed design. A reissue design application
-examiner’s Office action will treat the newly added
+claiming both the entire article and the
-claims in the reissue application on the merits. The
+patentably distinct subcombination or segregable part
-disclaimer of all the original patent claims must be
+would be proper under 35 U.S.C. 251, if such a reissue
-filed in the reissue application prior to the issuance of
+application is filed within two years of the issuance
-the examiner’s Office action containing the restriction
+of the design patent, since it is considered a
-requirement, in order for the newly added claims to be
+broadening of the scope of the patent claim. Restriction
-treated on the merits. Once the examiner has issued
+will be required under 37 CFR 1.176(b) in such a
-the Office action providing notification of the restriction
+reissue design application, and the added design to the
-requirement and treating the patent claims on the
+segregable part or subcombination will be held to be
-merits, it is too late to obtain an examination on
+constructively non-elected and withdrawn from consideration.
-the
+See MPEP § 1450. In the Office action
-added claims in the reissue application by filing a
+containing the restriction requirement, the examiner
-disclaimer of all the original patent claims. If reissue
+should suggest to the applicant that a divisional
-applicant wishes to have the newly added claims be
+design reissue application directed to the constructively
-treated on the merits, a divisional reissue application
+non-elected segregable part or subcombination
-must be filed to obtain examination of the added
+subject matter may be filed. The claim to the patented
-claims. Reissue applicants should carefully note that
+design for the entire article will then be examined and,
-once a disclaimer of the patent claims is filed, it cannot
+if found allowable without change from the patent, a
-be withdrawn. It does not matter whether the reissue
+rejection will be made under 35 U.S.C. 251 based on
-application is still pending, or whether the reissue
+the fact that there is no “error” in the non-amended
-application has been abandoned or issued as a reissue
+original patent claim. In the Office action making this
-patent. For all these situations, 37 CFR 1.176(b) states
+rejection, applicant should be advised that a proper
-that the disclaimer cannot be withdrawn; the disclaimer
+response to the rejection must include (A) a request to
-will be given effect.
+suspend action in this original reissue application
+pending completion of examination of a divisional
-Claims elected pursuant to a restriction requirement
+reissue application directed to the constructively non-
-will receive a complete examination on the merits,
+elected segregable part or subcombination subject
-while the non-elected claims (to any added inven
+matter, (B) the filing of the divisional reissue application,
+or a statement that one has already been filed
+(identifying it at least by application number), and (C)
+an argument that a complete response to the rejection
+has been made based upon the filing of the divisional
+reissue application and the request for suspension.
+Action in the original design reissue application will
+then be suspended, and the divisional will be examined.
-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
-first (and no “error” under 35 U.S.C. 251exists),
-further action in that reissue application will
-be suspended to await examination in the divisional
-reissue application(s) containing the added claims.
-Multiple suspensions (usually six-month periods)
-may be necessary. The Office will not  permit
-claims to issue in a reissue application which
-application does not correct any error in the original
-patent. Once a divisional reissue application containing
-the added claims is examined and becomes
-allowable,  the examiner will issue a requirement
-under 37 CFR 1.177(c) for applicant to merge the
-claims of the suspended first reissue application with
-the allowable claims of the divisional reissue application
-into a single application, by placing all of the
-claims in one of the applications and expressly abandoning
-the other. The Office action making this
-requirement will set a two-month period for compliance
-with the requirement. If applicant fails to timely
-respond to the Office action, or otherwise refuses to
-comply with the requirement made, then the divisional
-reissue application (claiming the invention
-which was non-elected in the now-suspended first
-reissue application) will be passed to issue alone,
-since the claims of the divisional reissue application,
-by themselves, do correct an error in the original
-patent. Prosecution will be reopened in the suspended
-first reissue application, and a rejection based on a
-lack of error under 35
-U.S.C. 251 will then be made.
-This rejection may be made final, since applicant is on
-notice of the consequences of not complying with the
-merger requirement.
-If the divisional reissue application becomes abandoned,
+If, after examination, the divisional design reissue
-prosecution will be reopened in the suspended
+application is also determined to be allowable, a
-first reissue application, and a rejection based on a
+requirement must be made in the divisional design
-lack of error under 35 U.S.C. 251 will then be made in
+reissue application to submit a petition under 37 CFR
-the first reissue application. Since no error in the original
+.183 requesting waiver of 37 CFR 1.153 in order to
-patent is being corrected in the first reissue application,
+permit the rejoining of the designs to the entire article
-no reissue patent will issue.
+(of the original application) and the segregable part or
+subcombination (of the divisional) under a single
+claim into a single design reissue application for issuance,
+the single application being the first design reissue
+application.
-As stated in 37 CFR 1.176(b), the examiner is not
+It should be noted that the filing of a design reissue
-permitted to require restriction among original
+application would not be proper if applicant did in
-claims of the patent (i.e., among claims that were in
+fact include the design for a segregable part or subcombination
-the patent prior to filing the reissue application). Even
+thereof in the original design patent
-where the original patent contains claims to different
+application, a restriction was thus made, and then
-inventions which the examiner considers independent
+applicant failed to file a divisional reissue application
-or distinct, and the reissue application claims the same
+for a non-elected invention that was canceled in view
-inventions, a restriction requirement would be
+of a restriction requirement (prior to issue of the original
-improper. If such a restriction requirement is made, it
+application. See In re Watkinson, 900 F.2d 230,
-must be withdrawn.
+USPQ2d 1407 (Fed. Cir. 1990); In re Orita,
+F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA
+).
-Restriction between multiple inventions recited in
+IV.CONVERSION TO UTILITY PATENT
-the newly added claims will be permitted provided
-the added claims are drawn to several separate and
-distinct inventions. In such a situation, the original
-patent claims would be examined in the first reissue
-application, and applicant is permitted to file a divisional
-reissue application for each of the several separate
-and distinct inventions identified in the
-examiner’s restriction requirement.
-A situation will sometimes arise where the examiner
+A design patent cannot be converted to a utility
-makes an election of species requirement
+patent via reissue.
-between the species claimed in the original patent
-claims and a species of claims added in the reissue
-application. In such a situation, if (1) the non-elected
-claims to the added species depend from (or otherwise
-include all limitations of) a generic claim which
-embraces all species claims, and (2) the generic claim
-is found allowable, then the non-elected claims of the
-added species must be rejoined with the elected
-claims of the original patent. See MPEP §
-.04(a).
-Divisional Reissue Applications;
-Continuation Reissue ApplicationsWhere the Parent is Pending [R-3]
-U.S.C. 251. Reissue of defective patents.
+Converting a design patent to a utility patent will,
+in most instances, involve the introduction of new
+matter into the patent. The disclosure of a design
+patent is not directed to how the invention is made
+and used, and the introduction of new matter is
+required to bridge this gap and provide support for the
+utility patent. Accordingly, the examiner should consider
+rejections based on the introduction of new matter
+under 35 U.S.C. 251, first paragraph, and lack of
+enablement and/or description under 35 U.S.C. 112,
+first paragraph, when a reissue application is filed to
+convert a design patent to a utility patent.
+Further, the term of a design patent may not be
+extended by reissue. Ex parte Lawrence, 70 USPQ
+(Comm’r Pat. 1946). Thus, any reissue application
+filed to convert a design patent to a utility patent,
+which conversion would thereby extend the term of
+the patent, should be rejected as failing to comply
+with 35 U.S.C. 251, first paragraph, which permits
+reissue only “for the unexpired part of the term of the
+original patent.” The statute requires that the reissued
+patent shall not extend the term of the original patent.
-The Director may issue several reissued patents for distinct and
+==1460 Effect of Reissue==
-separate parts of the thing patented, upon demand of the applicant,
-and upon payment of the required fee for a reissue for each of
-such reissued patents.
+U.S.C. 252. Effect of reissue.
+The surrender of the original patent shall take effect upon the
+issue of the reissued patent, and every reissued patent shall have
+the same effect and operation in law, on the trial of actions for
+causes thereafter arising, as if the same had been originally
+granted in such amended form, but in so far as the claims of the
+original and reissued patents are substantially identical, such surrender
+shall not affect any action then pending nor abate any cause
+of action then existing, and the reissued patent, to the extent that
+its claims are substantially identical with the original patent, shall
+constitute a continuation thereof and have effect continuously
+from the date of the original patent.
-CFR 1.177. Issuance of multiple reissue patents.
+A reissued patent shall not abridge or affect the right of any
+person or that person’s successors in business who, prior to the
+grant of a reissue, made, purchased, offered to sell, or used within
+the United States, or imported into the United States, anything patented
+by the reissued patent, to continue the use of, to offer to sell,
+or to sell to others to be used, offered for sale, or sold, the specific
+thing so made, purchased, offered for sale, used, or imported
+unless the making, using, offering for sale, or selling of such thing
+infringes a valid claim of the reissued patent which was in the
+original patent. The court before which such matter is in question
+may provide for the continued manufacture, use, offer for sale, or
+sale of the thing made, purchased, offered for sale, used, or
+imported as specified, or for the manufacture, use, offer for sale,
+or sale in the United States of which substantial preparation was
+made before the grant of the reissue, and the court may also provide
+for the continued practice of any process patented by the reissue
+that is practiced, or for the practice of which substantial
+preparation was made, before the grant of the reissue, to the extent
+and under such terms as the court deems equitable for the protection
+of investments made or business commenced before the grant
+of the reissue.
-(a)The Office may reissue a patent as multiple reissue patents.
+The effect of the reissue of a patent is stated in
-If applicant files more than one application for the reissue of
-a single patent, each such application must contain or be amended
+U.S.C. 252. With respect to the Office treatment of
-to contain in the first sentence of the specification a notice stating
+the reissued patent, the reissued patent will be viewed
-that more than one reissue application has been filed and identifying
+as if the original patent had been originally granted in
-each of the reissue applications by relationship, application
+the amended form provided by the reissue. With
-number and filing date. The Office may correct by certificate of
+respect to intervening rights resulting from the reissue
-correction under §
+of an original patent, the second paragraph of 35
+U.S.C. 252 provides for two separate and distinct
-.322 any reissue patent resulting from an
+defenses to patent infringement under the doctrine of
+intervening rights:
+“Absolute” intervening rights are available for a
+party that “prior to the grant of a reissue, made, purchased,
+offered to sell, or used within the United
+States, or imported into the United States, anything
+patented by the reissued patent,” and “equitable”
+intervening rights may be provided where “substantial
+preparation was made before the grant of the reissue.”
+See BIC Leisure Prods., Inc., v. Windsurfing Int’l,
+Inc., 1 F.3d 1214, 1220, 27 USPQ2d 1671, 1676 (Fed.
+Cir. 1993).
+==1470 Public Access of Reissue Applications==
+CFR 1.11(b) opens all reissue applications filed
+after March 1, 1977, to inspection by the general public.
+CFR 1.11(b) also provides for announcement
+of the filings of reissue applications in the Official
+Gazette (except for continued prosecution applications
+filed under 37 CFR 1.53(d)). This announcement
+will give interested members of the public an
+opportunity to submit to the examiner information
+pertinent to patentability of the reissue application.
+The filing of a continued prosecution application
+under 37 CFR 1.53(d) of a reissue application will notbe announced in the Official Gazette. Although the
+filing of a continued prosecution application of a reissue
+application constitutes the filing of a reissue
+application, the announcement of the filing of such
+continued prosecution application would be redundant
+in view of the announcement of the filing of the prior
+reissue application in the Official Gazette.
-application to which this paragraph applies that does not contain
+CFR 1.11(b) is applicable to all reissue
-the required notice.
+applications filed on or after March 1, 1977. Those
+reissue applications previously on file will not be
+automatically open to inspection but a liberal policy
+will be followed in granting petitions for access to
+such applications.
-(b)If applicant files more than one application for the reissue
+IFW reissue application files are open to
-of a single patent, each claim of the patent being reissued must
+inspection by the general public by way of Public
-be presented in each of the reissue applications as an amended,
+PAIR via the USPTO Internet site. In viewing the
-unamended, or canceled (shown in brackets) claim, with each
+images of the files, members of the public will be able
-such claim bearing the same number as in the patent being reissued.
+to view the entire content of the reissue application
-The same claim of the patent being reissued may not be presented
+file history. To access Public PAIR, a member of the
-in its original unamended form for examination in more
+public would (A) go to the USPTO web site at http://
-than one of such multiple reissue applications. The numbering of
+www.uspto.gov, (B) click on “Patents,” (C) under
-any added claims in any of the multiple reissue applications must
+“Check Status, View Papers…” click on “Status &
-follow the number of the highest numbered original patent claim.
+IFW,” and (D) under “Patent Application Information
+Retrieval” enter the reissue application number.
-(c)If any one of the several reissue applications by itself
+Access to a reissue application that is maintained in
-fails to correct an error in the original patent as required by 35
+paper must be obtained from the area of the Office
-U.S.C. 251 but is otherwise in condition for allowance, the Office
+having jurisdiction over the file. The following access
-may suspend action in
+procedure will be observed for reissue application
-the allowable application until all issues
+files that are maintained in paper:
-are resolved as to at least one of the remaining reissue applications.
-The Office may also merge two or more of the multiple reissue
-applications into a single reissue application. No reissue
-application containing only unamended patent claims and not correcting
-an error in the original patent will be passed to issue by
-itself.
-The court in In re Graff, 111 F.3d 874, 876-77,
+(A)Any member of the general public may
+request access to a particular reissue application filed
-USPQ2d 1471, 1473 (Fed. Cir. 1997) stated that
+after March 1, 1977. Since no record of such request
-“[t]he statute does not prohibit divisional or continuation
+is intended to be kept, an oral request will suffice.
-reissue applications, and does not place stricter
+(Reissue applications already on file prior to March 1,
-limitations on such applications when they are presented
+are not automatically open to inspection, but a
-by reissue, provided of course that the statutory
+liberal policy is followed by the Office of Patent
-requirements specific to reissue applications are met.”
+Legal Administration (OPLA) and by the Board of
-Following the decision in Graff, the Office has
+Patent Appeals and Interferences in granting petitions
-adopted a policy of treating continuations and divisionals
+for access to such applications.);
-of reissue applications, to the extent possible,
-in the same manner as continuations and divisionals
-of non-reissue applications.
-Questions relating to the propriety of divisional
+(B)Paper reissue application files will be maintained
-reissue applications and continuation reissue applications
+in the TCs and inspection thereof will be supervised
-should be referred via the Technology Center
+by TC personnel. A TC Director or other
-(TC) Special Program Examiner to the Office of
+appropriate Office official may, under appropriate circumstances,
-Patent Legal Administration.
+postpone access to or the making of copies
+of a paper reissue application file, in order, for
+example, to avoid interruption of the examination or
+other review of the application by an examiner. In
+addition, though no general limit is placed on the
+amount of time spent reviewing the files, the Office
+may impose limitations, if necessary, e.g., where the
+application is actively being processed;
+(C)In any instance where the reissue application
+file has left the TC for administrative processing,
+requests for access should be directed to the appropriate
+supervisory personnel where the application is
+currently located;
+(D)A paper reissue application file is not
+available to the public once the reissue application file
+has been released and forwarded by the TC for publication
+of the reissue patent. This would include any
+reissue application files which have been selected for
+a post-allowance screening at OPLA. Unless
+prosecution is reopened pursuant to the screening, the
+reissue application files are not available to the public
+until the reissue patent issues. This is because the reissue
+application file has been put into a special format
+for printing purposes and public access at this stage
+would disrupt the publication process;
+(E)Requests for copies of papers in the reissue
+application file must be in writing addressed to Mail
+Stop Document Services, Director of the U.S. Patent
+and Trademark Office, P.O. Box 1450, Alexandria,
+VA 22313-1450. Such requests may be either mailed
+or delivered to the Customer Service Window. The
+price for a copy of an application as filed is set forth
+in 37 CFR 1.19(b)(1). Since no useful purpose is seen
+for retaining such written requests for copies of
+papers in reissue applications, the request(s) should be
+destroyed after the order has been completed.
-I. DIVISIONAL REISSUE APPLICATIONS
+See also MPEP § 103.
-CFR 1.176(b) permits the examiner to require
-restriction in a reissue application between the original
-claims of the patent and any newly added claims
-which are directed to a separate and distinct invention(
-s). See also MPEP § 1450. As a result of such a
-restriction requirement, divisional applications may
-be filed for each of the inventions identified in the
-restriction requirement.
- In addition, applicant may initiate a division of the
-claims by filing more than one reissue application in
-accordance with 37 CFR 1.177. The multiple reissue
-applications which are filed may contain different
-groups of claims from among the original patent
-claims, or some of the reissue applications may contain
-newly added groups (not present in the original
-patent). There is no requirement that the claims of the
-multiple reissue applications be independent and distinct
-from one another; if they are not independent
-and distinct from one another, the examiner must
-apply the appropriate double patenting rejections.
- There is no requirement that a family of divisional
+==1480 Certificates of Correction — Office Mistake==
-reissue applications issue at the same time; however,
-it is required that they contain a cross reference to
-each other in the specification. 37 CFR 1.177(a)
-requires that all multiple reissue applications resulting
-from a single patent must include as the first sentence
-of their respective specifications a cross reference to
-the other reissue application(s). Accordingly, the first
-sentence of each reissue specification must provide
-notice stating that more than one reissue application
-has been filed, and it must identify each of the reissue
-applications and their relationship within the family
-of reissue applications, and to the original patent. An
-example of the suggested language to be inserted is as
-follows:
- Notice: More than one reissue application has
+U.S.C. 254. Certificate of correction of Patent and
-been
+Trademark Office mistake.
-filed for the reissue of Patent No. 9,999,999. The
-reissue applications are application numbers 09/
-,994 (the present application), 09/999,995, and 09/
-,998, all of which are divisional reissues of Patent
-No. 9,999,999.
- The examiner should object to the specification
+Whenever a mistake in a patent, incurred through the fault of
-and require an appropriate amendment if applicant
+the Patent and Trademark Office, is clearly disclosed by the
-fails to include such a cross reference to the other reissue
+records of the Office, the Director may issue a certificate of correction
-applications in the first sentence of the specification
+stating the fact and nature of such mistake, under seal,
-of each of the reissue applications.
+without charge, to be recorded in the records of patents. A printed
+copy thereof shall be attached to each printed copy of the patent,
+and such certificate shall be considered as part of the original
+patent. Every such patent, together with such certificate, shall
+have the same effect and operation in law on the trial of actions
+for causes thereafter arising as if the same had been originally
+issued in such corrected form. The Director may issue a corrected
+patent without charge in lieu of and with like effect as a certificate
+of correction.
- Where one of the divisional applications of the
+CFR 1.322. Certificate of correction of Office mistake.
-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
+(a)(1) The Director may issue a certificate of correction pursuant
+to 35 U.S.C. 254 to correct a mistake in a patent, incurred
+through the fault of the Office, which mistake is clearly disclosed
+in the records of the Office:
+(i)At the request of the patentee or the patentee’s
+assignee;
+(ii)Acting sua sponte for mistakes that the Office discovers;
+or
+(iii)Acting on information about a mistake supplied by a
+third party.
-per form paragraph 10.19, the patent file with the
+(2)(i) There is no obligation on the Office to act on or
-memorandum should be forwarded to the Certificates
+respond to a submission of information or request to issue a certificate
-of Correction Branch for issuance of a certificate. The
+of correction by a third party under paragraph (a)(1)(iii) of
-examiner should make a reference in the pending
+this section.
-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
-.177(a), e.g., by an entry in the search notes or in an
-examiner’s amendment.
-¶ 10.19 Memorandum - Certificate of Correction (Cross-
+(ii)Papers submitted by a third party under this section
-Reference to Other Reissues in Family)
+will not be made of record in the file that they relate to nor be
+retained by the Office.
-DATE: [1]
+(3)If the request relates to a patent involved in an
+interference, the request must comply with the requirements of
+this section and be accompanied by a motion under § 41.121(a)(2)
+or § 41.121(a)(3) of this title.
-TO: Certificates of Correction Branch
+(4)The Office will not issue a certificate of correction
+under this section without first notifying the patentee (including
+any assignee of record) at the correspondence address of record as
+specified in § 1.33(a) and affording the patentee or an assignee an
+opportunity to be heard.
-FROM: [2], SPE, Art Unit [3]
+(b)If the nature of the mistake on the part of the Office is
+such that a certificate of correction is deemed inappropriate in
+form, the Director may issue a corrected patent in lieu thereof as a
+more appropriate form for certificate of correction, without
+expense to the patentee.
-SUBJECT: Request for Certificate of Correction
+Mistakes incurred through the fault of the Office
+may be the subject of Certificates of Correction under
-Please issue a Certificate of Correction in U. S. Letters Patent
+CFR 1.322. The Office, however, has discretion
-No. [4] as specified on the attached Certificate.
+under 35 U.S.C. 254 to decline to issue a Certificate
+of Correction even though an Office mistake exists. If
-______________________
+Office mistakes are of such a nature that the meaning
+intended is obvious from the context, the Office may
-[5], SPE
+decline to issue a certificate and merely place the correspondence
+in the patented file, where it serves to
-Art Unit [6]
+call attention to the matter in case any question as to it
+subsequently arises. Such is the case, even where a
+correction is requested by the patentee or patentee’s
+assignee.
-UNITED STATES PATENT AND TRADEMARK OFFICE
+In order to expedite all proper requests, a Certificate
-CERTIFICATE
+of Correction should be requested only for errors
+of consequence. Instead of a request for a Certificate
+of Correction, letters making errors of record should
+be utilized whenever possible. Thus, where errors are
+of a minor typographical nature, or are readily apparent
+to one skilled in the art, a letter making the error(s)
+of record can be submitted in lieu of a request for a
+Certificate of Correction. There is no fee for the submission
+of such a letter.
-Patent No. [7]
+It is strongly advised that the text of the correction
+requested be submitted on a Certificate of Correction
+form, PTO/SB/44 (also referred to as PTO 1050). Submission
+of this form in duplicate is not necessary. The
+location of the error in the printed patent should be
+identified on form PTO/SB/44 by column and line
+number or claim and line number. See MPEP § 1485for a discussion of the preparation and submission of
+a request for a Certificate of Correction.
-Patented: [8]
+I. THIRD PARTY INFORMATION ON
+MISTAKES IN PATENT
-The present reissue patent issued from an application that is
+Third parties do not have standing to demand that
-one of a family of divisional reissue applications resulting from
+the Office issue, or refuse to issue, a Certificate of
-Patent No. [9]. The present reissue patent has issued without the
+Correction. See Hallmark Cards, Inc. v. Lehman, 959
-cross reference to the other reissue application(s) of the family
+F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C.
-which is required pursuant to 37 CFR 1.177(a). Accordingly,
+). 37 CFR 1.322(a)(2) makes it clear that third
-insert in the first sentence of the specification as follows:
+parties do not have standing to demand that the Office
+act on, respond to, issue, or refuse to issue a Certificate
+of Correction. The Office is, however, cognizant
+of the need for the public to have correct information
+about published patents and may therefore accept
+information about mistakes in patents from third parties.
+CFR 1.322(a)(1)(iii). Where appropriate, the
+Office may issue certificates of correction based on
+information supplied by third parties, whether or not
+such information is accompanied by a specific request
+for issuance of a Certificate of Correction.
-Notice: More than one reissue application has been filed for the
+While third parties are permitted to submit information
-reissue of patent [9]. The reissue applications are [10].
+about mistakes in patents which information
+will be reviewed, the Office need not act on that information
+nor deny any accompanying request for issuance
+of a Certificate of Correction. Accordingly, a fee
+for submission of the information by a third party has
+not been imposed. The Office may, however, choose
+to issue a Certificate of Correction on its own initiative
+based on the information supplied by a third
+party, if it desires to do so. Regardless of whether the
+third party information is acted upon, the information
+will not be made of record in the file that it relates to,
+nor be retained by the Office. 37 CFR 1.322(a)(2)(ii).
- _________________________
+When such third party information (about mistakes
+in patents) is received by the Office, the Office will
-[11], Supervisory Patent Examiner
+not correspond with third parties about the information
+they submitted either (1) to inform the third parties
-Art Unit [12]
+of whether it intends to issue a Certificate of
+Correction, or (2) to issue a denial of any request for
-Examiner Note:
+issuance of a Certificate of Correction that may
+accompany the information. The Office will confirm
+to the party submitting such information that the
+Office has in fact received the information if a
+stamped, self-addressed post card has been submitted.
+See MPEP § 503.
-In bracket 9, insert the patent number of the patent for which
+II. PUBLICATION IN THE OFFICIAL
-multiple reissue divisional applications have been filed.
+GAZETTE
-This is an internal memo and must not be mailed to the applicant.
+Each issue of the Official Gazette (patents section)
-This memo should accompany the patented file to the Certificates
+numerically lists all United States patents having Certificates
-of Correction Branch as noted in form paragraphs 10.13 and
+of Correction. The list appears under the
-.14.
+heading “Certificates of Correction for the week of
+(date).”
-.In brackets 5 and 11, insert the name of SPE and provide the
+===1480.01 Expedited Issuance of Certificates of Correction - Error Attributable to Office===
-signature of the SPE above each line.
-.In brackets 6 and 12, insert the Art Unit number.
+In an effort to reduce the overall time required in
+processing and granting Certificate of Correction
+requests, the Office will expedite processing and
+granting of patentee requests where such requests are
+accompanied by evidence to show that the error is
+attributable solely to the Office (i.e., requests filed
+pursuant to 37 CFR 1.322 only).
-.Two separate pages of USPTO letterhead will be printed
+The following requirements must be met for consideration
-when using this form paragraph.
+of expedited issuance of Certificates of
+Correction:
+The text of the correction requested should be submitted
+on a Certificate of Correction form, PTO/SB/
+(also referred to as PTO 1050). Submission of this
+form in duplicate is not necessary. The location of the
+error in the printed patent should be identified on
+form PTO/SB/44 by column and line number or claim
+and line number. See also MPEP § 1485.
-.In bracket 10, identify each of the reissue applications
+Where the correction requested was incurred
-(including the present application) and their relationship within
+through the fault of the Office, and the matter is
-the family of reissue applications, and to the original patent.
+clearly disclosed in the records of the Office, and is
+accompanied by documentation that unequivocally
+supports the patentee’s assertion(s), a Certificate of
+Correction will be expeditiously issued. Such supporting
+documentation can consist of relevant photocopied
+receipts, manuscript pages, correspondence dated
+and received by the Office, photocopies of Examiners’
+responses regarding entry of amendments, or any
+other validation that supports the patentee’s request so
+that the request can be processed without the patent
+file.
-In addition to the amendment to the first sentence
+Where only part of a request can be approved, the
-of the specification, the reissue application cross references
+appropriate modifications will be made on the form
-will also be reflected in the file. For an
+PTO/SB/44 and the patentee then notified by mail.
-IFW reissue application file, a copy of the bibliographic
+Further consideration will be given to initially
-data sheet from the IFW file history should be
+rejected requests upon a request for reconsideration.
-printed and the examiner should annotate the printed
+In this instance, however, or in the case where it is
-sheet such that adequate notice is provided that more
+determined that the Office was not responsible for the
-than one reissue application has been filed for a single
+error(s) cited by the patentee, accelerated issuance of
-original patent. The annotated sheet should be
+Certificates of Correction cannot be anticipated
-scanned into IFW. For reissue application files that are
+(although the Office will make every effort to process
-maintained in paper, the bibliographic data sheet
+the request expeditiously).
-should be reprinted (for 09/ and later series), or
-the front face of the reissue file wrapper should be
-marked (for 08/ and earlier series), for all the multiple
-reissue applications, so that adequate notice is provided
-that more than one reissue application has been
-filed for a single original patent.
-Pursuant to 37 CFR 1.177(b) all of the claims of the
-patent to be reissued must be presented in each reissue
-application in some form, i.e., as amended, as
-unamended or as canceled. Further,  any added
-claims must be numbered beginning with the next
-highest number following the last patent claim. It is
-noted that the same claim of the patent cannot be presented
-for examination in more than one of the divisional
-reissue applications, as a pending claim, in
-either its original or amended versions. Once a claim
-in the patent has been reissued, it does not exist in the
-original patent; thus, it cannot be reissued from the
-original patent in another reissue application. If the
-same claim of the patent, e.g., patent claim 1 is presented
-for examination in more than one of the reissue
-applications, in different amended versions, the following
-rejections should be made in the reissue applications
-with that patent claim:
-A rejection under 35 U.S.C. 251, in that the reissue
+==1481 Certificates of Correction - Applicant’s Mistake==
-application is not correcting an error in the original
-patent, because original claim 1 would be superseded
-by the reissuance of claim 1 in the other reissue application.
+U.S.C. 255. Certificate of correction of applicant’s
+mistake.
-A rejection under 35 U.S.C. 112, in that claim 1 is
+Whenever a mistake of a clerical or typographical nature, or of
-indefinite because the invention of claim 1 is not particularly
+minor character, which was not the fault of the Patent and Trademark
-pointed out and distinctly claimed. Claim 1
+Office, appears in a patent and a showing has been made that
-presents one coverage in divisional reissue application
+such mistake occurred in good faith, the Director may, upon payment
-X and another in the present reissue application. This
+of the required fee, issue a certificate of correction, if the
-is inconsistent.
+correction does not involve such changes in the patent as would
+constitute new matter or would require reexamination. Such
+patent, together with the certificate, shall have the same effect and
+operation in law on the trial of actions for causes thereafter
+arising as if the same had been originally issued in such corrected
+form.
-The reissue applicant should then be advised to follow
+CFR 1.323. Certificate of correction of applicant’s
-a procedure similar to the following example:
+mistake.
+The Office may issue a certificate of correction under the
+conditions specified in 35 U.S.C. 255 at the request of the patentee
+or the patentee’s assignee, upon payment of the fee set forth in
+§ 1.20(a). If the request relates to a patent involved in an interference,
+the request must comply with the requirements of this section
+and be accompanied by a motion under § 41.121(a)(2) or
+§ 41.121(a)(3) of this title.
+CFR 1.323 relates to the issuance of Certificates
+of Correction for the correction of errors which were
+not the fault of the Office. Mistakes in a patent which
+are not correctable by Certificate of Correction may
+be correctable via filing a reissue application (see
+MPEP § 1401 - § 1460). See Novo Industries, L.P. v.
+Micro Molds Corporation, 350 F.3d 1348,
+USPQ2d 1128 (Fed. Cir. 2003) (The Federal Circuit
+stated that when Congress in 1952 defined
+USPTO authority to make corrections with prospective
+effect, it did not deny correction authority to the
+district courts. A court, however, can correct only if
+“(1) the correction is not subject to reasonable debate
+based on consideration of the claim language and the
+specification and (2) the prosecution history does not
+suggest a different interpretation...”).
+In re Arnott, 19 USPQ2d 1049, 1052 (Comm’r Pat.
+) specifies the criteria of 35 U.S.C. 255 (for a
+Certificate of Correction) as follows:
+Two separate statutory requirements must be met
+before a Certificate of Correction for an applicant’s mistake
+may issue. The first statutory requirement concerns
+the nature, i.e., type, of the mistake for which a correction
+is sought. The mistake must be:
+(1) of a clerical nature,
+(2) of a typographical nature, or
+(3) a mistake of minor character.
-If there are patent claims 1 – 10 in two divisional
+The second statutory requirement concerns the nature
-reissue applications and an applicant wishes to revise
+of the proposed correction. The correction must not
-claim 1, which is directed to AB (for example) to
+involve changes which would:
-ABC in one divisional reissue application, and to
-ABD in a second divisional reissue application, applicant
-should do the following: Claim 1 in the first divisional
-reissue application can be revised to recite
-ABC. Claim 1 in the second divisional reissue application
-would be canceled, and new claim 11 would be
-added to recite ABD. The physical cancellation of
-claim 1 in the second divisional reissue application
-will not prejudice applicant’s rights in the amended
-version of claim 1 since those rights are retained via
-the first reissue application. Claim 1 continues to exist
-in the first reissue application, and both the first and
-second reissue applications taken together make up
-the totality of the correction of the original patent.
-If the same or similar claims are presented in more
+(1) constitute new matter or
-than one of the multiple reissue applications, the possibility
-of statutory double patenting (35 U.S.C. 101)
-or non-statutory (judicially created doctrine) double
-patenting should be considered by the examiner during
-examination, and the appropriate rejections made.
-A terminal disclaimer may be filed to overcome an
-obviousness type double patenting rejection. The terminal
-disclaimer is necessary in order to ensure common
-ownership of the reissue patents throughout the
-remainder of the unexpired term of the original patent.
-Whenever a divisional reissue application is filed with
-a copy of the oath/declaration and assignee consent
-from the parent reissue application, the copy of the
-assignee consent from the parent reissue application
-should not be accepted. The copy of the consent from
-the parent reissue application does not indicate that
-the assignee has consented to the addition of the new
-invention of the divisional reissue application to the
-original patent. The Office of Initial Patent Examination
-(OIPE) should accord a filing date and send out a
-notice of missing parts stating that there is no proper
-consent and setting a period of time for filing the
-missing part and for payment of any surcharge
-required under 37 CFR 1.53(f) and 1.16(f). See
-MPEP § 1410.01. The copy of the reissue oath/declaration
-should be accepted by OIPE, since it is an oath/
-declaration, even though it may be improper under
-U.S.C. 251. The examiner should check the copy
-of the oath/declaration to ensure that it identifies an
-error being corrected by the divisional reissue application.
-The copy of the oath/declaration from the parent
-reissue application may or may not cover the error
-being corrected by the divisional reissue application
-since the divisional reissue application is (by definition)
-directed to a new invention. If it does not, the
-examiner should reject the claims of the divisional
-reissue application under 35 U.S.C. 251 as being
-based on an oath/declaration that does not identify an
-error being corrected by the divisional reissue application,
-and require a new oath/declaration. See MPEP §
-. If the copy of the reissue oath/declaration from
-the parent reissue application does in fact cover an
-error being corrected in the divisional reissue application,
-no such rejection should be made. However,
-since a new invention is being added by the filing of
-the divisional reissue application, a supplemental reissue
-oath/declaration pursuant to 37 CFR 1.175 (b)(1)
-will be required. See MPEP § 1414.01.
-Situations yielding divisional reissues occur infrequently
+(2) require reexamination.
-and usually involve only two such files. It
-should be noted, however, that in rare instances in the
-past, there have been more than two (and as many as
-five) divisional reissues of a
-patent. For treatment of a
-plurality of divisional reissue applications resulting
-from a requirement to restrict to distinct inventions or
-a requirement to elect species, see MPEP § 1450.
+If the above criteria are not satisfied, then a Certificate
+of Correction for an applicant’s mistake will not issue,
+and reissue must be employed as the vehicle to “correct”
+the patent. Usually, any mistake affecting claim
+scope must be corrected by reissue.
+A mistake is not considered to be of the “minor”
+character required for the issuance of a Certificate of
+Correction if the requested change would materially
+affect the scope or meaning of the patent. See also
+MPEP § 1412.04 as to correction of inventorship via
+certificate of correction or reissue.
-II. CONTINUATION REISSUE APPLI-
+The fee for providing a correction of applicant’s
-CATIONS
+mistake, other than inventorship, is set forth in
+CFR 1.20(a). The fee for correction of inventorship
+in a patent is set forth in 37 CFR 1.20(b).
-A continuation of a reissue is not ordinarily filed
+===1481.01 Correction of Assignees’ Names===
-“for distinct and separate parts of the thing patented”
-as called for in the second paragraph of 35 U.S.C.
-. The decision of In re Graff, 111 F.3d 874,
-USPQ2d 1471 (Fed. Cir. 1997) interprets
-U.S.C. 251 to permit multiple reissue patents to
-issue even where the multiple reissue patents are not
-for “distinct and separate parts of the thing patented.”
-The court stated:
-Section 251[2] is plainly intended as enabling, not as limiting.
+The Fee(s) Transmittal Form portion (PTOL-
-Section 251[2] has the effect of assuring that a different
+B) of the Notice of Allowance provides a space
-burden is not placed on divisional or continuation
+(item 3) for assignment data which should be completed
-reissue applications, compared with divisions and continuations
+in order to comply with 37 CFR 3.81. Unless
-of original applications, by codifying the Supreme
+an assignee’s name and
-Court decision which recognized that more than one
+address are identified in the
-patent can result from a reissue proceeding. Thus § 251[2]
+appropriate space for
-places no greater burden on Mr. Graff’s continuation reissue
+specifying the assignee, (i.e.,
-application than upon a continuation of an original
+item 3 of the Fee(s) Transmittal Form PTOL-
-application; § 251[2] neither overrides, enlarges, nor lim
+B), the patent will issue to the applicant. Assignment
+data printed on the patent will be based solely on
+the information so supplied.
+Any request for the issuance of an application
+in the name of the assignee submitted after the date of
+payment of the issue fee, and any request for a patent
+to be corrected to state the name of the assignee must:
+(A)state that the assignment was submitted for
+recordation as set forth in 37 CFR 3.11 before issuance
+of the patent;
+(B)include a request for a certificate of correction
+under 37 CFR 1.323 along with the fee set forth in
+CFR 1.20(a); and
+(C)include the processing fee set forth in 37 CFR
+.17(i).
+See 37 CFR 3.81(b).
-its the statement in § 251[3] that the provisions of Title 5
+===1481.02 Correction of Inventors’ Names===
-apply to reissues.
-F.3d at 877, 42 USPQ2d at 1473. Accordingly,
+U.S.C. 256. Correction of named inventor.
-prosecution of a continuation of a reissue application
-will be permitted (despite the existence of the pending
-parent reissue application) where the continuation
-complies with the rules for reissue.
-The parent and the continuation reissue applications
+Whenever through error a person is named in an issued patent
-should be examined together if possible. In
+as the inventor, or through error an inventor is not named in an
-order that the parent-continuation relationship of the
+issued patent and such error arose without any deceptive intention
-reissue applications be specifically identified and
+on his part, the Director may, on application of all the parties and
-notice be provided of both reissue applications for
+assignees, with proof of the facts and such other requirements as
-both the parent and the continuation reissue applications,
+may be imposed, issue a certificate correcting such error.
-the following is done:
-(A) An appropriate amendment to the continuing
+The error of omitting inventors or naming persons who are not
-data entries must be made to the first sentence of
+inventors shall not invalidate the patent in which such error
-the specification, (see the discussion above under the
+occurred if it can be corrected as provided in this section. The
-heading “Divisional Reissue Applications”).
+court before which such matter is called in question may order
+correction of the patent on notice and hearing of all parties concerned
+and the Director shall issue a certificate accordingly.
-(B)For an IFW reissue application file, a copy of
+In requesting the Office to effectuate a court order
-the bibliographic data sheet from the IFW file history
+correcting inventorship in a patent pursuant to
-should be printed and the examiner should annotate
+U.S.C. 256, a copy of the court order and a Certificate
-the printed sheet such that adequate notice is provided
+of Correction under 37 CFR 1.323 should be submitted
-that more than one reissue application has been filed
+to the Certificates of Corrections Branch.
-for a single original patent. The annotated sheet
-should be scanned into IFW. For reissue application
-files that are maintained in paper, the bibliographic
-data sheet should be reprinted (for 09/ and later
-series), or the front face of the reissue file wrapper
-should be marked (for 08/ and earlier series), for all
-the multiple reissue applications, so that adequate
-notice is provided that more than one reissue application
-has been filed for a single original patent.
-As is true for the case of multiple divisional reissue
+CFR 1.324. Correction of inventorship in patent,
-applications, all of the claims of the patent to be reissued
+pursuant to 35 U.S.C. 256.
-must be presented in both the parent reissue
-application and the continuation reissue application in
-some form, i.e., as amended, as unamended, or as canceled.
-The same claim of the patent cannot, however
-be presented for examination in both the parent reissue
-application and the continuation reissue application,
-as a pending claim, in either its original or
-amended versions. See the discussion in subsection I.
-above for treatment of this situation. Further, any
-added claims must be numbered beginning with the
-next highest number following the past patent
-claims.
-Where the parent reissue application issues prior to
+(a)Whenever through error a person is named in an
-the examination of the continuation, the claims of the
+issued patent as the inventor, or through error an inventor is not
-continuation should be carefully reviewed for double
+named in an issued patent and such error arose without any deceptive
-patenting over the claims of the parent. Where the
+intention on his or her part, the Director, pursuant to 35
-parent and the continuation reissue applications are
+U.S.C. 256, may, on application of all the parties and assignees, or
-examined together, a provisional double patenting
+on order of a court before which such matter is called in question,
-rejection should be made in both cases as to any overlapping
+issue a certificate naming only the actual inventor or inventors. A
-claims. See MPEP § 804 - §
+petition to correct inventorship of a patent involved in an interference
+must comply with the requirements of this section and must
-.04 as to double
+be accompanied by a motion under § 41.121(a)(2) or §
-patenting rejections. Any terminal disclaimer filed
+.121(a)(3) of this title.
-to obviate an obviousness-type double patenting
-rejection ensures common ownership of the reissue
-patents throughout the remainder of the unexpired
-term of the original patent.
-If the parent reissue application issues without any
+(b)Any request to correct inventorship of a patent pursuant
-cross reference to the continuation, amendment of the
+to paragraph (a) of this section must be accompanied by:
-parent
-reissue patent to include a cross-reference to
-the continuation must be effected at the time of allowance
-of the continuation application by Certificate of
-Correction. See the discussion above under the heading
-“Divisional Reissue Applications” as to how the
-Certificate of Correction is to be provided.
-Again, the examiner should make reference in the
+(1)Where one or more persons are being added, a statement
-pending divisional reissue application to the fact that
+from each person who is being added as an inventor that the
-an actual request for a Certificate of Correction has
+inventorship error occurred without any deceptive intention on his
-been generated in the first reissue patent pursuant to
+or her part;
-CFR 1.177(a), e.g., by an entry in the search notes
-or in an examiner’s amendment.
-Where a continuation reissue application is filed
+(2)A statement from the current named inventors who
-with a copy of the oath/declaration and assignee consent
+have not submitted a statement under paragraph (b)(1) of this section
-from the parent reissue application, and the parent
+either agreeing to the change of inventorship or stating that
-reissue application is not to be abandoned, the
+they have no disagreement in regard to the requested change;
-copy of the consent of the parent reissue application
-should not be accepted. The copy of the consent of the
-parent reissue application does not indicate that the
-assignee has consented to the addition of the new
-error correction of the continuation reissue application
-to the original patent. Presumably, a new correction
-has been added, since the parent reissue
-application is still pending. OIPE should accord a filing
-date and send out a notice of missing parts stating
-that there is no proper consent and setting a period of
-time for filing the missing part and for payment of any
-surcharge required under 37 CFR 1.53(f) and
-.16(f). See MPEP § 1410.01. The copy of the
-reissue oath/declaration should be accepted by OIPE,
-since it is a oath/declaration, albeit improper under
-U.S.C. 251. The examiner should reject the claims
-of the continuation reissue application under
+(3)A statement from all assignees of the parties submitting
+a statement under paragraphs (b)(1) and (b)(2) of this section
+agreeing to the change of inventorship in the patent, which statement
+must comply with the requirements of § 3.73(b) of this chapter;
+and
+(4)The fee set forth in § 1.20(b).
+(c)For correction of inventorship in an application, see
+§§ 1.48 and 1.497.
+(d)In a contested case before the Board of Patent Appeals
+and Interferences under part 41, subpart D, of this title, a request
+for correction of a patent must be in the form of a motion under
+§ 41.121(a)(2) or § 41.121(a)(3) of this title.
+The petition to correct inventorship under 37 CFR
-U.S.C. 251 as being based on an oath/declaration
+.324 must include the statements and fee required by
-that does not identify an error being corrected by the
+CFR 1.324(b).
-continuation reissue application, and should require a
-new oath/declaration. See 37 CFR 1.175(e). One of
-form paragraphs 14.01.01 through 14.01.03 may be
-used. See MPEP § 1414.
-Where a continuation reissue application is filed
+Under 37 CFR 1.324(b)(1), a statement is required
-with a copy of the oath/declaration and assignee consent
+from each person who is being added as an inventor
-from the parent reissue application, and the parent
+that the inventorship error occurred without any
-reissue application is, or will be abandoned, the
+deceptive intention on their part. In order to satisfy
-copy of the consent should be accepted by both OIPE
+this, a statement such as the following is sufficient:
-and the examiner. The reissue oath/declaration should
-be accepted by OIPE, and the examiner should check
-to ensure that the oath/declaration identifies an error
-that is being corrected in the continuation reissue
-application. See MPEP § 1414. If a preliminary
-amendment was filed with the continuation reissue
-application, the examiner should check for the need of
-a supplemental reissue oath/declaration. Pursuant to
-CFR 1.175 (b)(1), for any error corrected via the
-preliminary amendment which is not covered by the
-oath or declaration submitted in the parent reissue
-application, applicant must submit a supplemental
-oath/declaration stating that every such error arose
-without any deceptive intention on the part of the
-applicant. See MPEP § 1414 and § 1414.01.
-Request for Continued Examination
+“The inventorship error of failing to include John Smith
-of Reissue Application
+as an inventor of the patent occurred without any deceptive
+intention on the part of John Smith.”
-A request for continued examination (RCE) under
+Nothing more is required. The examiner will determine
-CFR 1.114 is available for a reissue application.
+only whether the statement contains the required
-Effective May 29, 2000, an applicant in a reissue
+language; the examiner will not make any commentas to whether or not it appears that there was in fact
-application may file a request for continued examination
+deceptive intention (see MPEP § 2022.05).
-of the reissue application, if the reissue application
-was filed on or after June 8, 1995. This applies
-even where the application, which resulted in the original
-patent, was filed prior to June 8, 1995.
-An RCE continues the prosecution of the existing
+Under 37 CFR 1.324(b)(2), all current inventors
-reissue application and is not a filing of a new reissue
+who did not submit a statement under 37 CFR
-application. Thus, the filing of an RCE will not be
+.324(b)(1) must submit a statement either agreeing to
-announced in the Official Gazette. Additionally, if a
+the change of inventorship, or stating that they have
-reissue application is merged with a reexamination
+no disagreement with regard to the requested change.
-proceeding (see MPEP § 1449.01), the filing of an
+“Current inventors” include the inventor(s) being
-RCE will not dissolve the merger, since the reissue
+retained as such and the inventor(s) to be deleted.
-application does not become abandoned.
+These current inventors need not make a statement as
+to whether the inventorship error occurred without
+deceptive intention.
-Amendments to Reissue Applications
+If an inventor is not available, or refuses, to submit
-[R-5]
+a statement, the assignee of the patent may wish to
+consider filing a reissue application to correct inventorship,
+since the inventor’s statement is not required
+for a non-broadening reissue application to correct
+inventorship. See MPEP § 1412.04.
-CFR 1.121. Manner of making amendments in
+Under 37 CFR 1.324(b)(3), a statement is required
-application.
+from the assignee(s) of the patent agreeing to the
+change of inventorship in the patent. The assignee
+statement agreeing to the change of inventorship must
+be accompanied by a proper statement under 37 CFR
+.73(b) establishing ownership, unless a proper 37
+CFR 3.73(b) statement is already in the file. See
+MPEP § 324 as to the requirements of a statement
+under 37 CFR 3.73(b).
+While a request under 37 CFR 1.48 is appropriate
+to correct inventorship in a nonprovisional application,
+a petition under 37 CFR 1.324 is the appropriate
+vehicle to correct inventorship in a patent. If a request
+under 37 CFR 1.48(a), (b), or (c) is inadvertently filed
+in a patent, the request may be treated as a petition
+under 37 CFR 1.324, and if it is grantable, form paragraph
+.14 set forth below should be used.
+Similarly, if a request under 37 CFR 1.48(a), (b), or
+(c) is filed in a pending application but not acted upon
+until after the application becomes a patent, the
+request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set
+forth below should be used.
-(i)Amendments in reissue applications. Any amendment to
+The statutory basis for correction of inventorship
-the description and claims in reissue applications must be made in
+in a patent under 37 CFR 1.324 is 35 U.S.C. 256. It is
-accordance with § 1.173.
+important to recognize that 35 U.S.C. 256 is stricter
+than 35 U.S.C. 116, the statutory basis for corrections
+of inventorship in applications under 37 CFR 1.48.
+U.S.C. 256 requires “on application of all the parties
+and assignees,” while 35 U.S.C. 116 does not
+have the same requirement. Under 35 U.S.C. 116 and
+CFR 1.48, waiver requests under 37 CFR 1.183may be submitted (see, e.g., MPEP § 201.03, under
+the heading “Statement of Lack of Deceptive Intention”).
+This is not possible under 35 U.S.C. 256 and
+CFR 1.324. In correction of inventorship in a nonprovisional
+application under 37 CFR 1.48(a), the
+requirement for a statement by each originally named
+inventor may be waived pursuant to 37 CFR 1.183;
+however, correction of inventorship in a patent under
+CFR 1.324 requires petition of all the parties, i.e.,
+originally named inventors and assignees, in accordance
+with statute (35 U.S.C. 256) and thus the
+requirement cannot be waived.
+===1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits===
+I.CORRECTION TO PERFECT CLAIM
+FOR 35 U.S.C. 119 (a)-(d) AND (f) BENEFITS
-CFR 1.173. Reissue specification, drawings, and
+See MPEP § 201.16 for a discussion of when
-amendments.
+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
+U.S.C. 119(e) BENEFITS
+A.For Applications Filed Prior to November 29, 2000
-(b)Making amendments in a reissue application. An amendment
+For applications filed prior to November 29, 2000,
-in a reissue application is made either by physically incorporating
+it is the version of 37 CFR 1.78, which was in effect
-the changes into the specification when the application is
+as of November 29, 2000, that applies. The pre-
-filed, or by a separate amendment paper. If amendment is made by
+November 29, 2000 version reads as follows:
-incorporation, markings pursuant to paragraph (d) of this section
-must be used. If amendment is made by an amendment paper, the
-paper must direct that specified changes be made, as follows:
-(1)Specification other than the claims. Changes to the
+CFR 1.78. Claiming benefit of earlier filing date andcross-references to other applications.
-specification, other than to the claims, must be made by submission
-of the entire text of an added or rewritten paragraph, including
-markings pursuant to paragraph (d) of this section, except that
-an entire paragraph may be deleted by a statement deleting the
-paragraph without presentation of the text of the paragraph. The
-precise point in the specification must be identified where any
-added or rewritten paragraph is located. This paragraph applies
-whether the amendment is submitted on paper or compact disc
-(see §§ 1.52(e)(1) and 1.821(c), but not for discs submitted under
-§ 1.821(e)).
-(2)Claims. An amendment paper must include the entire
+(a)(1) A nonprovisional application may claim an invention
-text of each claim being changed by such amendment paper and of
+disclosed in one or more prior filed copending nonprovisional
-each claim being added by such amendment paper. For any claim
+applications or copending international applications designating
-changed by the amendment paper, a parenthetical expression
+the United States of America. In order for a nonprovisional application
-“amended,” “twice amended,” etc., should follow the claim number.
+to claim the benefit of a prior filed copending nonprovisional
-Each changed patent claim and each added claim must
+application or copending international application
-include markings pursuant to paragraph (d) of this section, except
+designating the United States of America, each prior application
-that a patent claim or added claim should be canceled by a statement
+must name as an inventor at least one inventor named in the later
-canceling the claim without presentation of the text of the
+filed nonprovisional application and disclose the named inventor’s
-claim.
+invention claimed in at least one claim of the later filed nonprovisional
+application in the manner provided by the first
-(3)Drawings. One or more patent drawings shall be
+paragraph of 35 U.S.C. 112. In addition, each prior application
-amended in the following manner: Any changes to a patent drawing
+must be:
-must be submitted as a replacement sheet of drawings which
-shall be an attachment to the amendment document. Any replacement
-sheet of drawings must be in compliance with § 1.84 and
-shall include all of the figures appearing on the original version of
-the sheet, even if only one figure is amended. Amended figures
-must be identified as “Amended,” and any added figure must be
-identified as “New.” In the event that a figure is canceled, the figure
-must be surrounded by brackets and identified as “Canceled.”
-All changes to the drawing(s) shall be explained, in detail, begin
+(i)An international application entitled to a filing date in
+accordance with PCT Article 11 and designating the United States
+of America; or
+(ii)Complete as set forth in § 1.51(b); or
+(iii)Entitled to a filing date as set forth in § 1.53(b) or
+§ 1.53(d) and include the basic filing fee set forth in § 1.16; or
+(iv)Entitled to a filing date as set forth in § 1.53(b) and
+have paid therein the processing and retention fee set forth in
+§ 1.21(l) within the time period set forth in § 1.53(f).
+(2)Except for a continued prosecution application filed
+under §
+.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
+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)).
-ning on a separate sheet accompanying the papers including the
+(3)A nonprovisional application other than for a design
-amendment to the drawings.
+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
+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).
-(i)A marked-up copy of any amended drawing figure,
+(4)Any nonprovisional application claiming the benefit
-including annotations indicating the changes made, may be
+of one or more prior filed copending provisional applications must
-included. The marked-up copy must be clearly labeled as “Annotated
+contain a reference to each such prior provisional application,
-Marked-up Drawings” and must be presented in the amendment
+identifying it as a provisional application, and including the provisional
-or remarks section that explains the change to the drawings.
+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.
-(ii)A marked-up copy of any amended drawing figure,
+Under certain conditions specified below, a Certificate
-including annotations indicating the changes made, must be
+of Correction can be used, with respect to
-provided when required by the examiner.
+U.S.C. 120 and 119(e) priority, to correct:
-(c)Status of claims and support for claim changes. Whenever
+(A)the failure to make reference to a prior
-there is an amendment to the claims pursuant to paragraph
+copending application pursuant to 37 CFR 1.78(a)(2)
-(b) of this section, there must also be supplied, on pages separate
+and (a)(4); or
-from the pages containing the changes, the status (i.e., pending or
-canceled), as of the date of the amendment, of all patent claims
-and of all added claims, and an explanation of the support in the
-disclosure of the patent for the changes made to the claims.
-(d)Changes shown by markings. Any changes relative to the
+(B)an incorrect reference to a prior copending
-patent being reissued which are made to the specification, including
+application pursuant to 37 CFR 1.78(a)(2) and (a)(4).
-the claims, upon filing, or by an amendment paper in the reissue
-application, must include the following markings:
-(1)The matter to be omitted by reissue must be enclosed
+For all situations other than where priority is based
-in brackets; and
+upon 35 U.S.C. 365(c), the conditions are as follows:
-(2)The matter to be added by reissue must be underlined,
+(A)for 35 U.S.C. 120 priority, all requirements
-except for amendments submitted on compact discs (§§ 1.96 and
+set forth in 37 CFR 1.78(a)(1) must have been met in
-.821(c)). Matter added by reissue on compact discs must be preceded
+the application which became the patent to be corrected;
-with “U” and end with “/U” to properly identify the
-material being added.
-(e)Numbering of patent claims preserved. Patent claims
+(B)for 35 U.S.C. 119(e) priority, all requirements
-may not be renumbered. The numbering of any claim added in the
+set forth in 37 CFR 1.78(a)(3) must have been met in
-reissue application must follow the number of the highest numbered
+the application which became the patent to be corrected;
-patent claim.
+and
-(f)Amendment of disclosure may be required. The disclosure
+(C)it must be clear from the record of the patent
-must be amended, when required by the Office, to correct
+and the parent application(s) that priority is appropriate.
-inaccuracies of description and definition, and to secure substantial
+See MPEP § 201.1l for requirements under
-correspondence between the claims, the remainder of the specification,
+U.S.C. 119(e) and 120.
-and the drawings.
-(g)Amendments made relative to the patent. All amendments
+Where 35 U.S.C. 120 and 365(c) priority based on
-must be made relative to the patent specification, including
+an international application is to be asserted or corrected
-the claims, and drawings, which are in effect as of the date of filing
+in a patent via a Certificate of Correction, the
-of the reissue application.
+following conditions must be satisfied:
-The provisions of 37 CFR 1.173(b)-(g) and those of
+(A)all requirements set forth in 37 CFR
-CFR 1.121(i) apply to amendments in reissue
+.78(a)(1) must have been met in the application
-applications. Any amendments submitted in a reissue
+which became the patent to be corrected;
-application must comply with 37 CFR 1.173(b).
-Amendments submitted in a reissue application,
+(B)it must be clear from the record of the patent
-including preliminary amendments (i.e., amendments
+and the parent application(s) that priority is appropriate
-filed as a separate paper to accompany the filing of a
+(see MPEP § 201.11); and
-reissue application), must comply with the practice
-outlined below in this section; however, for examiner’s
-amendments to the specification and claims,
-CFR 1.121(g) provides certain exceptions to that
-practice in the interest of expediting prosecution. The
-exceptions set forth in 37 CFR 1.121(g) also apply in
-reissue applications.
-Pursuant to 37 CFR 1.173(a), no amendment in a
+(C)the patentee must submit with the request for
-reissue application may enlarge the scope of the
+the certificate copies of documentation showing designation
-claims, unless “applied for within two years from the
+of states and any other information needed to
-grant of the original patent.” Further, the amendment
+make it clear from the record that the 35 U.S.C. 120priority is appropriate. See MPEP § 201.13(b) as to
-may not introduce new matter. See MPEP § 1412.03for further discussion as to the time limitation on
+the requirements for 35
-enlarging the scope of the patent claims in a reissue
+U.S.C. 120 priority based on
-application.
+an international application.
-All amendment changes must be made relative to
+If all the above-stated conditions are satisfied, a
-the patent to be reissued. Pursuant to 37 CFR
+Certificate of Correction can be used to amend the
-.173(d), any such changes which are made to the
+patent to make reference to a prior copending application,
-specification, including the claims, must be shown by
+or to correct an incorrect reference to the prior
-employing the following “markings:”
+copending application. Note In re Schuurs, 218 USPQ
+(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
+(Comm’r Pat. 1976), citing In re Van Esdonk,
+USPQ 671 (Comm’r Pat. 1975).
-(A)The matter to be omitted by reissue must be
+If any of the above-stated conditions is not satisfied,
-enclosed in brackets; and
+the filing of a reissue application (see MPEP
+§ 1401 - § 1460) would be appropriate to pursue the
+desired correction of the patent.
-(B)The matter to be added by reissue must be
+B.For Applications Filed on or After November
-underlined, except for amendments submitted on
+, 2000
-compact discs (pursuant to 37 CFR 1.96 for computer
-printouts or programs, and 37 CFR 1.825 for
-sequence listings). Matter added by reissue on compact
-discs must be preceded with “U” and end with
-“/U” to properly identify the material being added.
-I.THE SPECIFICATION
+For applications filed on or after November 29,
+, the version of 37 CFR 1.78 reproduced below
-CFR 1.173(b)(1) relates to the manner of making
+applies (note that amendments to 37 CFR 1.78 took
-amendments to the specification other than the
+effect on November 29, 2000, December 28, 2001,
-claims. It is not to be used for making amendments to
+May 1, 2003, January 21, 2004, September 21, 2004,
-the claims or the drawings.
+December 8, 2004,  July 1, 2005, and November
+, 2005).
-All amendments which include any deletions or
+CFR 1.78. Claiming benefit of earlier filing date and
-additions must be made by submission of the entire
+cross-references to other applications.
-text of each added or rewritten paragraph with markings
-(as defined above), except that an entire paragraph
-of specification text may be deleted by a
-statement deleting the paragraph without presentation
-of the text of the paragraph. Applicant must indicate
-the precise point where each amendment is made. All
-bracketing and underlining is made in comparison to
-the original patent, not in comparison to any prior
-amendment in the reissue application. Thus, all paragraphs
-which are newly added to the specification of
-the original patent must be submitted as completely
-underlined each time they are re-submitted in the reissue
-application.
+(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 §
+.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.THE CLAIMS
+(ii)This reference must be submitted during the pendency
+of the later-filed application. If the later-filed application is
-CFR 1.173(b)(2) relates to the manner of making
+an application filed under 35
-amendments to the claims in reissue applications.
+U.S.C. 111(a), this reference must
-It is not to be used for making amendments to the
+also be submitted within the later of four months from the actual
-remainder of the specification or to the drawings. 37
+filing date of the later-filed application or sixteen months from the
-CFR 1.173(b)(2) requires that:
+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
+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)For each claim that is being amended by the
+(A)An application for a design patent;
-amendment being submitted (the current amendment),
-the entire text of the claim must be presented with
-markings as defined above;
-(B)For each new claim added to the reissue by
+(B)An application filed under 35 U.S.C. 111 (a)
-the amendment being submitted (the current amendment),
+before November 29, 2000; or
-the entire text of the added claim must be presented
-completely underlined;
-(C)A patent claim should be canceled by a direction
+(C)A nonprovisional application which entered the
-to cancel that claim, there is no need to present
+national stage after compliance with 35 U.S.C. 371 from an international
-the patent claim surrounded by brackets; and
+application filed under 35 U.S.C. 363 before November
+, 2000.
-(D)A new claim (previously added in the reissue)
+(iii)If the later-filed application is a nonprovisional
-should be canceled by a direction to cancel that claim.
+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.
-Original patent claims are never to be renumbered;
+(iv)The request for a continued prosecution application
-see 37 CFR 1.173(e). A patent claim retains its number
+under § 1.53(d) is the specific reference required by
-even if it is canceled in the reissue proceeding,
+U.S.C. 120 to the prior-filed application. The identification of
-and the numbering of any added claims must begin
+an application by application number under this section is the
-after the last original patent claim.
+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.
-Pursuant to 37 CFR 1.173(c), each amendment submitted
+(3)If the reference required by 35 U.S.C. 120 and paragraph
-must set forth the status of all patent claims
+(a)(2) of this section is presented after the time period provided
-and all added claims as of the date of the submission.
+by paragraph (a)(2)(ii) of this section, the claim under
-The status to be set forth is whether the claim is pending
+U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed
-or canceled. The failure to submit the claim status
+copending nonprovisional application or international application
-will generally result in a notification to applicant that
+designating the United States of America may be accepted if the
-the amendment prior to final rejection is not completely
+reference identifying the prior-filed application by application
-responsive (see 37 CFR 1.135(c)). Such an
+number or international application number and international filing
-amendment after final rejection will not be entered.
+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:
-Also pursuant to 37 CFR 1.173(c), each claim
+(i)The reference required by 35 U.S.C. 120 and paragraph
-amendment must be accompanied by an explanation
+(a)(2) of this section to the prior-filed application, unless
-of the support in the disclosure of the patent for the
+previously submitted;
-amendment (i.e., support for all changes made in the
-claim(s), whether insertions or deletions). The failure
-to submit an explanation will generally result in a
-notification to applicant that the amendment prior to
-final rejection is not completely responsive (see
-CFR 1.135(c)). Such an amendment after final
-rejection will not be entered.
-III.THE DRAWINGS
+(ii)The surcharge set forth in § 1.17(t); and
-CFR 1.173(a)(2) states that amendments to the
+(iii)A statement that the entire delay between the date
-original patent drawings are not permitted, and that
+the claim was due under paragraph (a)(2)(ii) of this section and
-any change to the drawings must be by way of
+the date the claim was filed was unintentional. The Director may
+require additional information where there is a question whether
-CFR 1.173(b)(3). See MPEP § 1413 for the manner
+the delay was unintentional.
-of making amendments to the drawings in a reissue
-application.
-Form paragraph 14.20.01 may be used to advise
+(4)A nonprovisional application, other than for a design
-applicant of the proper manner of making amendments
+patent, or an international application designating the United
-in a reissue application.
+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:
-¶ 14.20.01 Amendments To Reissue-37 CFR 1.173(b)
+(A)An application filed under 35 U.S.C. 111(a)
+before November 29, 2000; or
-Applicant is notified that any subsequent amendment to the
+(B)A nonprovisional application which entered the
-specification and/or claims must comply with 37 CFR 1.173(b).
+national stage after compliance with 35 U.S.C. 371 from an international
-In addition, when any substantive amendment is filed in the reissue
+application filed under 35 U.S.C. 363 before November
-application, which amendment otherwise places the reissue
+, 2000.
-application in condition for allowance, a supplemental oath/declaration
-will be required. See MPEP § 1414.01.
-Examiner Note:
+(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.
-This form paragraph may be used in the first Office action to
+(iv)If the prior-filed provisional application was filed
-advise applicant of the proper manner of making amendments,
+in a language other than English and both an English-language
-and to notify applicant of the need to file a supplemental oath/declaration
+translation of the prior-filed provisional application and a statement
-before the application can be allowed.
+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;
-Form paragraph 14.21.01 may be used to notify
+(ii)The surcharge set forth in § 1.17(t); and
-applicant that proposed amendments filed prior to
-final rejection in the reissue application do not comply
-with 37 CFR 1.173(b).
-¶ 14.21.01 Improper Amendment To Reissue - 37 CFR
-.173(b)
-The amendment filed [1] proposes amendments to [2] that do
+(iii)A statement that the entire delay between the date
-not comply with 37 CFR 1.173(b), which sets forth the manner of
+the claim was due under paragraph (a)(5)(ii) of this section and
-making amendments in reissue applications. A supplemental
+the date the claim was filed was unintentional. The Director may
-paper correctly amending the reissue application is required.
+require additional information where there is a question whether
+the delay was unintentional.
-A shortened statutory period for reply to this letter is set to
+(b)Where two or more applications filed by the same applicant
-expire ONE MONTH or THIRTY DAYS, whichever is longer,
+contain conflicting claims, elimination of such claims from
-from the mailing date of this letter.
+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.
-Examiner Note:
+(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.
-.This form paragraph may be used for any 37 CFR 1.173(b)
+Under no circumstances can a Certificate of Correction
-informality as to an amendment submitted in a reissue application
+be employed to correct an applicant’s mistake
-prior to final rejection. After final rejection, applicant should be
+by adding or correcting a priority claim under
-informed that the amendment will not be entered by way of an
-Advisory Office action.
+U.S.C. 119(e) for an application filed on or after
+November 29, 2000.
-.In bracket 2, specify the proposed amendments that are not in
+Section 4503 of the American Inventors Protection
-compliance.
+Act of 1999 (AIPA) amended 35 U.S.C. 119(e)(1) to
+state that:
-Note that if an informal amendment is submitted
+No application shall be entitled to the benefit of an earlier
-after final rejection, form paragraph 14.21.01 should
+filed provisional application under this subsection
-not be used. Rather, an advisory Office action should
+unless an amendment containing the specific reference to
-be issued using Form PTO-303 indicating that the
+the earlier filed provisional application is submitted at such
-amendment was not entered because it does not comply
+time during the pendency of the application as required by
-with 37 CFR 1.173(b), which sets forth the manner
+the Director. The Director may consider the failure to submit
-of making amendments in reissue applications.
+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
+, 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).
-IV.ALL CHANGES ARE MADE VIS-À-VISTHE PATENT TO BE REISSUED
+Where priority is based upon 35 U.S.C. 120 to a
+national application, the following conditions must
+be satisfied:
-When a reissue patent is printed, all underlined
+(A)all requirements set forth in 37 CFR
-matter is printed in italics and all brackets are printed
+.78(a)(1) must have been met in the application
-as inserted in the application, in order to show exactly
+which became the patent to be corrected;
-which additions and deletions have been made to
-the
-patent being reissued. Therefore, all underlining
-and bracketing in the reissue application should be
-made relative to the text of the patent, as follows. In
-accordance with 37 CFR 1.173(g), all amendments in
-the reissue application must be made relative to (i.e.,
-vis-à-vis) the patent specification in effect as of the
-date of the filing of the reissue application. The patent
-specification includes the claims and drawings. If
-there was a prior change to the patent (made via a
-prior concluded reexamination certificate, reissue of
-the patent, certificate of correction, etc.), the first
-amendment of the subject reissue application must be
-made relative to the patent specification as changed
-by the prior proceeding or other mechanism for
-changing the patent. All amendments subsequent to
-the first amendment must also be made relative to the
-patent specification in effect as of the date of the filing
-of the reissue application, and not relative to the prior
-amendment.
-The Subject Patent Already Has Underlining or
+(B) it must be clear from the record of the patent
-Bracketing
+and the parent application(s) that priority is appropriate
+(see MPEP § 201.11); and
-If the original (or previously changed) patent
+(C)a grantable petition to accept an unintentionally
-includes a formula or equation already having underlining
+delayed claim for the benefit of a prior application
-or bracketing therein as part of the formula or
+must be filed, including a surcharge as set forth in
-equation, any amendment of such formula or equation
+CFR 1.17(t), as required by 37 CFR 1.78(a)(3).
-should be made by bracketing the entire formula and
-rewriting and totally underlining the amended formula
-in the re-presented paragraph of the specification or
-rewritten claim in which the changed formula or
-equation appears. Amendments of segments of a formula
-or equation should not be made. If the original
-patent includes bracketing and underlining from an
-earlier reexamination or reissue, double brackets and
-double underlining should be used in the subject reissue
-application to identify and distinguish the present
-changes being made. The subject reissue, when
-printed, would include double brackets (indicating
-deletions made in the subject reissue) and boldface
-type (indicating material added in the subject reissue).
-V.EXAMPLES OF PROPER AMEND-
+Where 35 U.S.C. 120 and 365(c) priority based on
-MENTS
+an international application is to be asserted or corrected
+in a patent via a Certificate of Correction, the
-A substantial number of problems arise in the
+following conditions must be satisfied:
-Office because of improper submission of amendments
-in reissue applications. The following examples
-are provided to assist in preparation of proper amendments
-to reissue applications.
-A.Original Patent Description or Patent Claim
+(A)all requirements set forth in 37 CFR
-Amended
+.78(a)(1) must have been met in the application
+which became the patent to be corrected;
-Example (1)
+(B)it must be clear from the record of the patent
+and the parent application(s) that priority is appropriate
+(see MPEP § 201.11);
-If it is desired to change the specification at column
+(C)the patentee must submit together with the
-line 23, to replace “is” with --are--, submit a
+request for the certificate, copies of documentation
-copy of the entire paragraph of specification of the
+showing designation of states and any other information
-patent being amended with underlining and bracketing,
+needed to make it clear from the record that the
-and point out where the paragraph is located,
+U.S.C. 120 priority is appropriate (see MPEP
-e.g.,
+§ 201.13(b) as to the requirements for 35 U.S.C. 120priority based on an international application; and
-Replace the paragraph beginning at column 4, line 23
+(D)a grantable petition to accept an unintentionally
-with the following:
+delayed claim for the benefit of a prior application
+must be filed, including a surcharge as set forth in
+CFR 1.17(t), as required by 37 CFR 1.78(a)(3).
-Scanning [is] are controlled by clocks which are, in turn,
+If all the above-stated conditions are satisfied, a
-controlled from the display tube line synchronization. The
+Certificate of Correction can be used to amend the
-signals resulting from scanning the scope of the character
+patent to make reference to a prior copending application,
-are delivered in parallel, then converted into serial mode
+or to correct an incorrect reference to the prior
-through a shift register wherein the shift signal frequency is
+copending application, for benefit claims under
-controlled by a clock that is, in turn, controlled from the display
+U.S.C. 120 and 365(c).
-tube line synchronization.
-Example (2)
+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).
-For changes to the claims, one must submit a copy
+==1485 Handling of Request for Certificates of Correction==
-of the entire patent claim with the amendments
-shown by underlining and bracketing, e.g.,
-Amend claim 6 as follows:
+A request for a Certificate of Correction should be
+addressed to:
-Claim 6 (Amended). The apparatus of claim [5] 1 wherein
+Commissioner for Patents
-the [first] second piezoelectric element is parallel to the
-[second] third piezoelectric element.
-If the dependency of any original patent claim is to
+Office of Patent Publication
-be changed by amendment, it is proper to make
-that original patent claim dependent upon a later
-filed higher numbered claim.
-B.Cancellation of Claim(s)
+ATTN: Certificate of Correction Branch
-Example (3)
+P.O. Box 1450
-To cancel an original patent claim, in writing,
+Alexandria, VA 22313-1450
-direct cancellation of the patent claim, e.g.,
-Cancel claim 6.
+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
+.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.
-Example (4)
+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.
-To cancel a new claim (previously added in the
+The patent grant should be retained by the patentee.
-reissue), in writing, direct cancellation of the new
+The Office does not attach the Certificate of Correction
-claim, e.g.,
+to patentee’s copy of the patent. The patent grant
+will be returned to the patentee if submitted.
-Cancel claim 15.
+Below is a sample form illustrating a variety of corrections
+and the suggested manner of setting out the
+format. Particular attention is directed to:
-C.Presentation of New Claims
+(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.
-Example (5)
+(B)Conservation of space on the form by typing
+single space, beginning two lines down from the
+printed message.
-Each new claim (i.e., a claim not found in the
+(C)Starting the correction to each separate column
-patent, that is newly presented in the reissue application)
+as a sentence, and using semicolons to separate
-should be presented with underlining
+corrections within the same column, where possible.
-throughout the claim, e.g.,
+(D)Leaving a two-inch space blank at bottom of
+the last sheet for the signature of the attesting officer.
-Add claim 7 as follows:
+(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.
-Claim 7. The apparatus of claim 5 further comprising
+(F)Where a formula is involved, setting out
-electrodes attaching to said opposite faces of the first and
+only
-second piezoelectric elements.
+that portion thereof which is to be corrected or,
+if
+necessary, pasting a photocopy onto form PTO/SB/
+.
-Even though original claims may have been canceled,
+ELECTRONIC PUBLICATION OF CERTIFICATES
-the numbering of the original claims does
+OF CORRECTION WITH LATER LISTING
-not change. Accordingly, any added claims are
+IN THE OFFICIAL GAZETTE
-numbered beginning with the number next higher
-than the number of claims in the original patent. If
-new claims have been added to the reissue application
-which are later canceled prior to issuance of
-the reissue patent, the examiner will renumber any
-remaining new claims in numerical order to follow
-the number of claims in the original patent.
-D.Amendment of New Claims
+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.
-An amendment of a “new claim” (i.e., a claim not
+The USPTO is now automating the publication
-found in the patent, that was previously presented
+process for certificates of correction. This new process
-in
+will result in certificates of correction being published
-the reissue application) must be done by presenting
+quicker electronically on the USPTO’s web site
-the amended “new claim” containing the amendatory
+as compared to their paper publication and the listing
-material, and completely underlining the claim. The
+of the certificates of correction in the Official Gazette.
-presentation cannot contain any bracketing or other
+Under the newly automated process, each issue of certificates
-indication of what was in the previous version of
+of correction will be electronically published
-the
+on the USPTO web site at http://www.uspto.gov/web/
-claim. This is because all changes in the
+patents/certofcorrect, and will also subsequently be
-reissue
+listed in the Official Gazette (and in the Official
-are
+Gazette Notices posted at http://www.uspto.gov/web/
-made vis-à-vis the original patent, and not
+offices/com/sol/og) approximately three weeks thereafter.
-in comparison to the prior amendment. Although the
+The listing of certificates of correction in the
-presentation of the amended claim does not contain
+Official Gazette will include the certificate’s date of
-any indication of
+issuance.
-what is changed from the previous
-version of the claim,
-applicant must point out what is
-changed in the “Remarks” portion of the amendment.
-Also, per 37 CFR 1.173(c), each change made in the
-claim must be accompanied by an explanation of the
-support in the disclosure of the patent for the change.
-E.Amendment of Original Patent Claims More
+On the date on which the listing of certificates of
-Than Once
+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 following illustrates proper claim amendment
+The date on which the USPTO makes the certificate
-of original patent claims in reissue applications:
+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
- A. Patent claim.
+U.S.C. 10(a) (authorizing the USPTO to publish in electronic form).
-Claim 1. A cutting means having a handle portion
-and a blade portion.
- B. Proper first amendment format.
-Claim 1 (Amended). A [cutting means] knife having
-a bone handle portion and a notched blade portion.
+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.
- C. Proper second amendment format.
+==1490 Disclaimers==
-Claim 1 (Twice Amended). A [cutting means]
+U.S.C. 253. Disclaimer.
-knife having a handle portion and a serrated blade
-portion.
-Note that the second amendment must include the
+Whenever, without any deceptive intention, a claim of a patent
-changes previously presented in the first amendment,
+is invalid the remaining claims shall not thereby be rendered
-i.e., [cutting means] knife, as well as the new changes
+invalid. A patentee, whether of the whole or any sectional interest
-presented in the second amendment, i.e., serrated.
+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.
-The word bone was presented in the first amendment
+In like manner any patentee or applicant may disclaim or dedicate
-and is now to be deleted in the second amendment.
+to the public the entire term, or any terminal part of the term,
-The word “bone” is NOT to be shown in
+of the patent granted or to be granted.
-brackets in the second amendment. Rather, the word
-“bone” is simply omitted from the claim, since “bone”
-never appeared in the patent. An explanation of the
-deletion should appear in the remarks.
-The word notched which was presented in the first
+CFR 1.321. Statutory disclaimers, including terminal
-amendment is replaced by the word serrated in the
+disclaimers.
-second amendment. The word notched is being
-deleted in the second amendment and did not appear
-in the patent; accordingly, “notched” is not shown in
-any form in the claim. The word serrated is being
-added in the second amendment, and accordingly
-“serrated” is added to the claim and is underlined.
-In the second amendment, the deletions of
+(a)A patentee owning the whole or any sectional interest in
-“notched” and “bone” are not changes from the original
+a patent may disclaim any complete claim or claims in a patent. In
-patent claim text and therefore are not shown in
+like manner any patentee may disclaim or dedicate to the public
-brackets in the second amendment. In both the first
+the entire term, or any terminal part of the term, of the patent
-and the second amendments, the entire claim is presented
+granted. Such disclaimer is binding upon the grantee and its successors
-only with the changes from the original patent
+or assigns. A notice of the disclaimer is published in the
-text.
+Official Gazette and attached to the printed copies of the specification.
+The disclaimer, to be recorded in the Patent and Trademark
+Office, must:
-VI.ADDITIONAL EXAMPLES
+(1)be signed by the patentee, or an attorney or agent of
+record;
-(A)For a reissue application, where the patent
+(2)identify the patent and complete claim or claims, or
-was previously reissued:
+term being disclaimed. A disclaimer which is not a disclaimer of a
+complete claim or claims, or term, will be refused recordation;
-As per MPEP § 1411, double underlining and
+(3)state the present extent of patentee’s ownership interest
-double bracketing are used in the second reissue
+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
-application to show amendments made relative to the
+(ii)if there is an assignee of record of an undivided
-first reissued patent
+part interest, by the applicant and such assignee, or
-(B)For a reissue application, where the patent
+(iii)if there is an assignee of record of the entire interest,
-was previously reexamined and a reexamination certificate
+by such assignee, or
-has issued for the patent:
-An amendment in the reissue application must be
+(iv)by an attorney or agent of record;
-presented as if the changes made to the original patent
-text via the reexamination certificate are a part of the
-original patent. Thus, all italicized text of the reexamination
-certificate is presented in the amendment
-(made in the reissue application) without italics. Further,
-any text found in brackets in the reexamination
-certificate is omitted in the amendment (made in the
-reissue application).
-(C)For a reissue application, where a certificate
+(2)specify the portion of the term of the patent being disclaimed;
-of correction has issued for the patent:
-An amendment in the reissue application must be
-presented as if the changes made to the original patent
-text via the certificate of correction are a part of the
-original patent. Thus, all text added by certificate of
-correction is presented in the amendment (made in the
-reissue application) without italics. Further, any text
-deleted by certificate of correction is entirely omitted
-in the amendment (made in the reissue application).
-(D)For a reissue application, where a statutory
-disclaimer has issued for the patent:
-Any claim statutorily disclaimed is no longer in
+(3)state the present extent of applicant’s or assignee’s
-the patent, and such a claim cannot be amended. The
+ownership interest in the patent to be granted; and
-statutorily disclaimed claim(s) should be lined
-through, and not surrounded by brackets.
-Appeal Brief [R-3]
+(4)be accompanied by the fee set forth in § 1.20(d).
-The requirements for an appeal brief are set forth in
+(c)A terminal disclaimer, when filed to obviate judicially
+created double patenting in a patent application or in a reexamination
-CFR 41.37 and MPEP § 1206, and they apply
+proceeding except as provided for in paragraph (d) of this
-to a reissue application in the same manner that they
+section, must:
-apply to a non-reissue application. There is, however,
-a difference in practice as to presentation of the copy
-of the claims in the appeal brief for a reissue application.
-The claims on appeal presented in an appeal
-brief for a reissue application should include all
-underlining and bracketing necessary to reflect the
-changes made to the patent claims during the prosecution
-of the reissue application. In addition, any new
-claims added in the reissue application should be
-completely underlined.
-Allowance and Issue [R-3]
+(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.
-I.ISSUE CLASSIFICATION SHEET
+(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:
-For IFW reissue applications:
+(1)Comply with the provisions of paragraphs (b)(2)
+through (b)(4) of this section;
-The examiner completes the Issue Classification
+(2)Be signed in accordance with paragraph (b)(1) of this
-sheet in the same manner as for a non-reissue application.
+section if filed in a patent application or be signed in accordance
-In addition, a copy of the “Final SPRE Review”
+with paragraph (a)(1) of this section if filed in a reexamination
-form must also be completed.
+proceeding;
-For reissue application files that are maintained in
+(3)Include a provision waiving the right to separately
-paper:
+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.
-In all reissue applications prepared for issue where
+A disclaimer is a statement filed by an owner (in
-a blue slip is needed (i.e., 08/ and earlier series), the
+part or in entirety) of a patent or of a patent to be
-patent number of the original patent which is being
+granted (i.e., an application), in which said owner
-reissued should be placed in the box provided therefor
+relinquishes certain legal rights to the patent. There
-below the box for the applicant’s name on the blue
+are two types of disclaimers: a statutory disclaimer
-Issue Classification Slip (form PTO-270) or design
+and a terminal disclaimer. The owner of a patent or an
-Issue Classification Slip (form PTO-328). Otherwise,
+application is the original inventor(s) or the assignee
-the Issue Classification Slip is prepared in the same
+of the original inventor(s). The patent or application is
-manner as for a non-reissue application.
+assigned by one assignment or by multiple assignments
+which establish a chain of title from the inventor(
-For 09/ and later series applications, the patent
+s) to the assignee(s). The owner of the patent or
-number of the original patent which is being reissued
+application can sign a disclaimer, and a person
-should be placed on the face of the file wrapper above
+empowered by the owner to sign the disclaimer can
-the box “PREPARED AND APPROVED FOR
+also sign it. Per 37 CFR 1.321(b)(1)(iv), an attorney
-ISSUE” just after “(Exr. Initials)” in the line reading
+or agent of record is permitted to sign the disclaimer.
-“SURRENDER OF ORIGINAL PATENT________
+A registered practitioner acting in a representative
-(Exr. Initials).”
+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:
-II. CHANGES TO THE ORIGINAL
-PATENT
-The specifications of reissue patents will be printed
+(A)A disclaimer filed in an application must be
-in such a manner as to show the changes over the
+signed by
-original patent text by enclosing any material omitted
-by the reissue in heavy brackets [ ] and printing material
-added by the
-reissue in italics. 37 CFR 1.173 (see
-MPEP § 1411) requires the specification of a reissue
-application to be presented in a specified form, specifically
-designed to facilitate this different manner of
-printing, as well as for other reasons.
-The printed reissue patent specification will carry
+(1)the applicant where the application has not
-the following heading, which will be added by the
+been assigned,
-Publishing Division of the Office of Patent Publication:
+(2)the applicant and the assignee where each
+owns a part interest in the application,
-“Matter enclosed in heavy brackets [ ] appears in the original
+(3)the assignee where assignee owns the
-patent but forms no part of this reissue specification;
+entire interest in the application, or
-matter printed in italics indicates the additions made by
-reissue.”
-The examiners should see that the specification is
+(4)an attorney or agent of record.
-in proper form for printing. Examiners should care
+(B)A disclaimer filed in a patent or a reexamination
+proceeding must be signed by either
+(1)the patentee (the assignee, the inventor(s) if
+the patent is not assigned, or the assignee and the
+inventors if the patent is assigned-in-part), or
+(2)an attorney or agent of record.
+(C)Where the assignee (of an application or of a
+patent being reexamined or to be reissued) signs the
+disclaimer, there is a requirement to comply with
+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
+.11, or
-fully check the entry of all amendments to ensure that
+(2)specifying in the record of the application
-the changes directed by applicant will be accurately
+or patent where such evidence is recorded in the
-printed in any reissue patent that may ultimately issue.
+Office (e.g., reel and frame number, etc.).
-Matter appearing in the original patent which is omitted
-by reissue should be enclosed in brackets, while
-matter added by reissue should be underlined.
-Any material added by amendment in the reissue
+The submission with respect to 37 CFR 3.73(b)
-application (as underlined text) which is later canceled
+to establish ownership must be signed by a party
-should be crossed through, and not bracketed.
+authorized to act on behalf of the assignee. See also
-Material cancelled from the original patent should be
+MPEP § 324 as to compliance with 37 CFR 3.73(b).
-enclosed in brackets, and not lined through.
+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).
-All the claims of the original patent should appear
+(D)Where the attorney or agent of record signs
-in the reissue patent, with canceled patent claims
+the disclaimer, there is no need to comply with
-being enclosed in brackets.
+CFR 3.73(b).
+(E)The signature on the disclaimer need not be
+an original signature. Pursuant to 37 CFR
+.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
-III. CLAIM NUMBERING
+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).
-No renumbering of the original patent claims is permitted,
+As noted above, a statutory disclaimer is a statement
-even if the dependency of a dependent patent
+in which a patent owner relinquishes legal rights
-claim is changed by reissue so that it is to be dependent
+to one or more claims of a patent. A statutory disclaimer
-on a subsequent higher numbered claim.
+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
+.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.
-When a dependent claim in a reissue application
+II.TERMINAL DISCLAIMERS
-depends upon a claim which has been canceled, and
-the dependent claim is not thereafter made dependent
-upon a pending claim, such a dependent claim must
-be rewritten in independent form.
-New claims added during the prosecution of the
+CFR 1.321(a) also provides for the filing by an
-reissue application should follow the number of the
+applicant or patentee of a terminal disclaimer which
-highest numbered patent claim and should be completely
+disclaims or dedicates to the public the entire term or
-underlined to indicate they are to be printed in
+any portion of the term of a patent or patent to be
-italics on the printed patent. Often, as a result of the
+granted.
-prosecution and examination, some new claims are
-canceled while other new claims remain. When the
-reissue application is allowed, any claims remaining
-which are additional to the patent claims (i.e., claims
-added via the reissue application) should be renumbered
-in sequence starting with the number next
-higher than the number of the last claim in the original
-patent (the printed patent). Therefore, the number of
-claims allowed will not necessarily correspond to the
-number of the last claim in the reissue application, as
-allowed. The number of claims appearing in the
-“Total Claims Allowed” box on the Issue Classification
-sheet (or for reissue application files that are
-maintained in paper, the “CLAIMS ALLOWED -
-Total Claims” box on the lower right of the file wrapper
-face) at the time of allowance should be consistent
-with the number of claims indicated as allowable
-on the Notice of Allowability (Form PTOL-37).
+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.
+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).
-IV. CLAIM DESIGNATED FOR PRINTING
+III.PROCESSING
-At least one claim of an allowable reissue application
+Certificate of Correction Branch
-must be designated for printing in the Official
-Gazette. Whenever at least one claim has been
-amended or added in the reissue, the claim (claims)
-designated for printing must be (or include) a claim
-which has been changed or added by the reissue. A
-canceled claim is not to be designated as the claim for
-the Official Gazette.
-If there is no change in the claims of the allowable
+The Certificate of Correction Branch is responsible
-reissue application (i.e., when they are the same as the
+for the handling of all statutory disclaimers filed
-claims of the original patent) or, if the only change in
+under the first paragraph of 35 U.S.C. 253, whether
-the claims is the cancellation of claims, then the most
+the case is pending or patented, and all terminal disclaimers
-representative pending allowed claim is designated
+(filed under the second paragraph of
-for printing in the Official Gazette.
+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;
-V. PROVIDING PROPER FORMAT
+(C)Recording the disclaimers in the record of the
+application file; and
-Where a reissue application has not been prepared
+(D)Providing the disclaimer data for printing in
-in the above-indicated manner, the examiner may
+the Official Gazette.
-obtain from the applicant a clean copy of the reissue
-specification prepared in the indicated form, or a
-proper submission of a previously improperly submitted
-amendment. However, if the deletions from the
-original patent are small, the reissue application can
-be prepared for issue by putting the bracketed inserts
-at the appropriate places and suitably numbering the
-added claims.
-When applicant submits a clean copy of the reissue
+IV.TERMINAL DISCLAIMER IN PENDING APPLICATION PRACTICE IN THE TECHNOLOGY CENTERS
-specification, or a proper submission of a previous
-improper amendment, a supplemental reissue declaration
-should not be provided to address this submission,
-because the correction of format does not correct
-a 35 U.S.C. 251 error in the patent.
+Where a terminal disclaimer is filed in an application
+pending in a TC, it will be processed by the paralegal
+of the Office of the Special Program Examiner
+of the TC having responsibility for the application.
+The paralegal will:
+(A)Determine compliance with 35 U.S.C. 253and 37
+CFR 1.321 and 3.73, and ensure that the
+appropriate terminal disclaimer fee set forth in
+CFR 1.20(d) is/was applied;
-VI. PARENT APPLICATION DATA
+(B)Notify the examiner having charge of the
+application whether the terminal disclaimer is acceptable
+or not;
-All parent application data on the bibliographic
+(C)Where the terminal disclaimer is not acceptable,
-data sheet of the original patent file (or front face of
+indicate the nature of the informalities so that the
-the original patent file wrapper if the original patent is
+examiner can inform applicant in the next Office
-a paper file) should be present on the bibliographic
+action. For an IFW application, complete the IFW terminal
-data sheet of the reissue application.
+disclaimer form by checking the “Disapproved”
+box and have the form scanned into IFW;
-It sometimes happens that the reissue is a continuation
+(D)Where the terminal disclaimer is acceptable,
-of another reissue application, and there is also
+record the terminal disclaimer in the record of the
+application as set forth below.
+The paralegal will record an acceptable terminal
+disclaimer as being present in an application by:
+For IFW applications:
+(A)Completing the IFW terminal disclaimer form
+by checking the “Approved” box and having the form
+scanned into IFW; and
+(B)Entering the terminal disclaimer into PALM
+for the application.
-original-patent parent application data. The examiner
+For application files that are maintained in paper:
-should ensure that the parent application data on the
-original patent is properly combined with the parent
-application data of the reissue, in the text of the specification
-and on the bibliographic data sheet (or
-on the front face of the reissue file wrapper for 08/
-and earlier series applications).  The combined
-statement as to parent application data should be
-checked carefully for proper bracketing and underlining.
+For paper applications with 08/ and earlier series
+code
+(A)Attaching a green label to the file wrapper;
+(B)Stamping a notice on the file of the term
+which has been disclaimed (note that the blanks on
+the stamped notice for entering information on the
+patent(s) being disclaimed are no longer filled in);
-VII. REFERENCES CITED AND PRINTED
+(C)Endorsing the paper containing the terminal
+disclaimer submission on the “Contents” flap of the
+application file; and
-The list of references to be printed in the reissue
+(D)Entering the terminal disclaimer into the
-patent includes all the references cited during the
+PALM system records, for the application.
-prosecution of the reissue application. It is noted that
-the Office will not print in the reissue patent “References
-Cited” section any reference cited in the patent
-but not again cited in the reissue application. A patent
-cannot be reissued solely for the purpose of adding
-citations of additional prior art.
+For paper applications with 09/ and later series
+code
+(A)Checking a box on the file wrapper which
+states that the terminal disclaimer has been filed (Any
+blanks for entering information on the patent(s) being
+disclaimed are no longer filled in. Note that applications
+with 10/ and later series codes no longer have
+such blanks to complete);
-VIII. EXAMINER'S AMENDMENT AND SUP-
+(B)Endorsing the paper containing the terminal
-PLEMENTAL DECLARATION
+disclaimer submission on the “Contents” flap of the
+application file; and
-When it is necessary to amend the reissue application
+(C)Entering the terminal disclaimer into the
-in order to place the application in condition for
+PALM system records, for the application.
-allowance, the examiner may:
-(A)request that applicant provide the amendments
+The paralegal completes a Terminal Disclaimer
-(e.g., by facsimile transmission or by hand-
+Informal Memo to notify the examiner of the nature
-carry); or
+of any informalities in the terminal disclaimer. The
+examiner should notify the applicant of the informalities
-(B)make the amendments, with the applicant’s
+in the next Office action, or by interview with
-approval, by a formal examiner’s amendment.
+applicant if such will expedite prosecution of the
+application. Further, the examiner should initial and
-If the changes are made by a formal examiner’s
+date the Terminal Disclaimer Informal Memo and
-amendment, the entire paragraph(s) or claim(s) being
+return it to the paralegal to indicate that the examiner
-amended need not be presented in rewritten form for
+has appropriately notified applicant about the terminal
-any deletions or additions. Changes to the specification
+disclaimer. The paralegal will then discard the Terminal
-including the claims of an application made by
+Disclaimer Informal Memo.
-the Office in an examiner’s amendment may be made
-by specific instructions to insert or delete subject matter
-set forth in the examiner’s amendment by identifying
-the precise point in the specification or the
-claim(s) where the insertion or deletion is to be made.
-CFR 1.121(g).
-If it is necessary to amend a claim or the specification
+V.OTHER MATTERS DIRECTED TO TERMINAL DISCLAIMERS
-in order to correct an “error” under 35 U.S.C. 251and thereby place the application in condition for
-allowance, then a supplemental oath or declaration
-will be required. See MPEP § 1444. The examiner
-should telephone applicant and request the supplemental
-oath or declaration, which must be filed before
-the application can be counted as an allowance.
+A.Requirements of Terminal Disclaimers
+A proper terminal disclaimer must disclaim the terminal
+part of the statutory term of any patent granted
+on the application being examined which would
+extend beyond the expiration date of the full statutory
+term, shortened by any terminal disclaimer, of the
+patent (or of any patent granted on the application) to
+which the disclaimer is directed. Note the exculpatory
+language in the second paragraph of the sample terminal
+disclaimer forms, PTO/SB/25 and PTO/SB/26,
+provided at the end of this Chapter. That language
+(“In making the above disclaimer, the owner does not
+disclaim...”) is permissible in a terminal disclaimer.
-IX. FINAL REVIEW OF THE REISSUE
+A terminal disclaimer filed to obviate a nonstatutory
-APPLICATION BY THE EXAMINER
+double patenting rejection based on a commonly
+owned patent or application must comply with the
+requirements of 37 CFR 1.321(c). The terminal disclaimer
+must state that any patent granted on the
+application being examined will be enforceable only
+for and during the period that it and the patent to
+which the disclaimer is directed or the patent granted
+on the application to which the disclaimer is directed
+are commonly owned. See MPEP § 706.02(1)(2) for
+examples of common ownership, or lack thereof.
-Prior to forwarding a reissue application to the
+A terminal disclaimer filed to obviate a nonstatutory
-Technology Center (TC) Special Program Examiner
+double patenting rejection based on a non-commonly
-(SPRE) for final review, the examiner should complete
+owned patent or application disqualified under
-and initial an Examiner Reissue Checklist. A
+U.S.C. 103(c) as a result of activities undertaken
-copy of the checklist should be available from the
+within the scope of a joint research agreement under
-SPRE or from the Paralegal Specialist of the TC.
+U.S.C. 103(c)(2) and (3) must comply with 37
+CFR 1.321(d), which sets forth signature, waiver
+rights and enforceability requirements.
-Reissue Review [R-3]
+The terminal disclaimer must include a provision:
-All reissue applications are monitored and
+(1)waiving the right to separately enforce (a) any
-reviewed in the Technology Centers (TCs) by the
+patent granted on that application or the patent being
-Office of TC Special Program Examiners (which
+reexamined and (b) the reference patent, or any patent
-includes TC SPREs, paralegals or other technical support
+granted on the reference application which formed the
-who might be assigned as backup) at several
+basis for the double patenting; and
-stages during the prosecution. The review by the
-Office of the TC SPREs is made to check that practice
-and procedure unique to reissue has been carried out
-for the reissue application. In addition to the SPRE
-review of the reissue applications, a patentability
-review is made in a sample of reissue applications by
-the TC Quality Assurance Specialist (QAS) in the
-manner previously carried out by the former Office of
-Patent Quality Review. In order to ensure that SPREs
-are aware of the reissue applications in their TCs, a
-pair of terminal-specific PALM flags have been created
-which must be set by the SPRE before certain
-PALM transactions can be completed. First, when a
-new reissue application enters the TC, a SPRE must
-set a PALM “flag” by entering the reissue application
-number in an Office-wide computer grouping before a
-docketing transaction will be accepted. By having to
-set this first flag, the SPRE is made aware of the
-assignment of the reissue application to the TC and
-can take steps, as may be appropriate, to instruct the
-examiner on reissue-specific procedures before the
-examination process begins, as well as throughout the
-period that the examiner is handling the reissue application.
-Second, the SPRE must remove the above-
-described PALM “flag” before a Notice of Allowance
-can be generated or the PALM transaction for an issue
+(2)agreeing that any patent granted on that application
+or patent being reexamined shall be enforceable
+only for and during such period that said patent
+and the reference patent, or any patent granted on the
+reference application, which formed the basis for the
+double patenting are not separately enforced.
+A terminal disclaimer must state that the agreement
+is to run with any patent granted on the application
+being examined and is to be binding upon the grantee,
+its successors, or assigns.
+A statement of assignee interest in a terminal disclaimer
+that “A and B are the owners of 100% of the
+instant application...” is sufficient to satisfy the
+CFR 1.321(b)(3) requirement that a terminal disclaimer
+“state the present extent of applicant’s or
+assignee’s ownership interest in the patent to be
+granted.” Although the quoted statement does not
+identify what specific percentage is owned by A and
+what specific percentage is owned by B, the statement
+does provide consent to the terminal disclaimer by the
+entirety of the ownership of the application (A and B
+own all of the invention, regardless of the individual
+percentages they own).
+  The appropriate one of form paragraphs 14.27.04to 14.27.08 (reproduced below) may be used to provide
+applicant or patent owner with an example of
+acceptable terminal disclaimer language. Additionally,
+copies of forms PTO/SB/25 and PTO/SB/26 (provided
+at the end of this Chapter) may be attached to
+the Office action to provide sample terminal disclaimers.
-revision can be entered, thereby ensuring that the
+Pursuant to the last sentence of 35 U.S.C. 253, “any
-SPRE is made aware of when the reissue application
+patentee or applicant may disclaim or dedicate to the
-is being allowed so that the SPRE may be able to conduct
+public... any terminal part of the term, of the patent
-a final review of the reissue application, if appropriate.
+granted or to be granted”. Accordingly, the disclaimer
+must be of a terminal portion of the term of the entire
+patent to be granted. A disclaimer of a terminal portion
+of the term of an individual claim, or individual
+claims will not be accepted. It is further noted that a
+disclaimer of the term of individual claims would not
+be appropriate since the claims of a pending application
+or proceeding are subject to cancelation, amendment,
+or renumbering. The statute does not provide
+for conditional disclaimers and accordingly, a proposed
+disclaimer which is made contingent on the
+allowance of certain claims cannot be accepted. The
+disclaimer should identify the disclaimant and his or
+her interest in the application and should specify the
+date when the disclaimer is to become effective.
+B.Effect of Disclaimers in Continuing Applications
+and in Reissues
-When the reissue application has been reviewed
+A terminal disclaimer filed to obviate a double patenting
-and is ready to be released to issue, the TC SPRE
+rejection is effective only with respect to the
-should do the following:
+application identified in the disclaimer unless by its
+terms it extends to continuing applications. For example,
-For IFW reissue applications:
+a terminal disclaimer filed in a parent application
+normally has no effect on a continuing application
-The SPRE should complete the “Final SPRE
+claiming filing date benefits of the parent application
-Review” form. The SPRE will discard any informal
+under 35 U.S.C. 120. A terminal disclaimer filed in a
-papers that were forwarded to the SPRE, such as the
+parent application to obviate a double patenting rejection
-informal Reissue Check List that was filled out by the
+does, however, carry over to a continued prosecution
-examiner. The SPRE will then forward (message) the
+application (CPA) filed under 37 CFR 1.53(d)
-reissue file to the Office of Patent Legal Administration
+(effective July 14, 2003, CPAs are only available in
-(OPLA). The file for any original paper patent
+design applications). The terminal disclaimer filed in
-should be forwarded to OPLA.
+the parent application carries over because the CPA
+retains the same application number as the parent
-For reissue application files that are maintained in
+application, i.e., the application number to which the
-paper:
+previously filed terminal disclaimer is directed. If
+applicant does not want the terminal disclaimer to
-The SPRE should initial the face of the file wrapper,
+carry over to the CPA, applicant must file a petition
-and forward the reissue file to  OPLA.
+under 37 CFR 1.182, along with the required petition
-Along with the reissue file, the file for the original
+fee, requesting the terminal disclaimer filed in the parent
-patent should be forwarded to OPLA.
+application not be carried over to the CPA; see
+below “Withdrawing a Terminal Disclaimer” (paragraph
-After leaving the TC, all reissue applications go
+“A. Before Issuance of Patent”). If applicant
-through a screening process which is currently performed
+files a Request for Continued Examination (RCE) of
-in OPLA. The screening process which
+an application under 37 CFR 1.114 (which can be
-includes review of the reissue oath or declaration for
+filed on or after May 29, 2000 for an application filed
-compliance with 37 CFR 1.175, review of the presentation
+on or after June 8, 1995), any terminal disclaimer
-and entry of reissue amendments for compliance
+present will continue to operate, since a new application
-with 37 CFR 1.173(b), and review of other
+has not been filed, but rather prosecution has
-matters to ensure adherence to current reissue practices.
+been continued in the existing application. A petition
-The above identified review processes are
+under 37 CFR 1.182, along with the required petition
-appropriate vehicles for correcting errors, identifying
+fee, may be filed, if withdrawal of the terminal disclaimer
-problem areas and recognizing trends, providing
+is to be requested.
-information on the uniformity of practice, and providing
-feedback to the TC personnel responsible for processing
+Reissue applications: Where a terminal disclaimer
-and examining reissue applications.
+was filed in an original application, a copy of that terminal
+disclaimer is not required be filed by applicant
-Design Reissue Applications and
+in the reissue.
-Patents [R-3]
-A reissue application can be filed for a design
-patent in the same manner that a reissue application is
-filed for a utility patent. There are, however, a few
-aspects of a design reissue application that are
-addressed as follows:
-I.EXPEDITED EXAMINATION PROCE-
+For reissue application files that are maintained in
-DURE
+paper:
-Design reissue applications requesting expedited
+The face of the file wrapper of the reissue application
-examination and complying with the requirements of
+should, however, be marked by the examiner in
-CFR 1.155 are examined with priority and undergo
+order to indicate that a terminal disclaimer has been
-expedited processing throughout the entire course of
+filed for the patent (and will be effective for the patent
-prosecution in the Office, including appeal, if any, to
+as it will be reissued). Further, a copy of the terminal
-the Board of Patent Appeals and Interferences. All
+disclaimer should be placed in the reissue application
-processing is expedited from the date the request is
+file by the Technology Center.
-granted.
-Design reissue applicants seeking expedited examination
+For IFW reissue applications:
-may file a design reissue application in the
-Office together with a corresponding request under 37
-CFR 1.155 pursuant to the guidelines set forth in
-MPEP § 1504.30.
-The design reissue application and the request are
+The “Final SPRE Review” form will be filled in to
-processed by the Office of Initial Patent Examination
+indicate that a terminal disclaimer has been filed for
-(OIPE). OIPE enters the appropriate information
+the patent (and will be effective for the patent as it
-into PALM specifying when notice of the design
+will be reissued). Further, a copy of the terminal disclaimer
-reissue application will be published in the Official
+should be scanned into the reissue application
-Gazette (see MPEP § 1441).  After processing in
+file history by the Technology Center.
-OIPE, the design reissue application and the request
-are forwarded to the Design TC Director’s Office.
-Upon a decision by the Design TC Director to grant
-the request for expedited examination, fees are immediately
-processed, and the application papers are
-promptly assigned an application number. The design
-reissue application file is then forwarded to the Office
-of Patent Legal Administration (OPLA) for a decision
-under 37 CFR 1.182 to sua sponte waive the requirement
-for delaying action in the application until 2
-months after announcement of the design reissue
-application filing is published in the Official Gazette(see MPEP § 1441). Once the decision under 37 CFR
-.182 is mailed, the design reissue application file
-will be returned to the Design TC Director’s Office. In
-accordance with the waiver, the Design Group will
-begin expedited examination of the application under
-CFR 1.155 promptly after the return of the design
-reissue application file from OPLA, rather than delay
-examination until after 2 months from the date the
-announcement is published in the Official Gazette and
-the applicant will be notified that examination is
-being expedited. The decision under 37 CFR 1.182will require that no Notice of Allowance be mailed in
-the design reissue application until after 2 months
-from the date the announcement is published in the
-Official Gazette. For example, if the design reissue
+C.Disclaimer Identifies the Wrong Target
+Application or Patent
+In some instances a terminal disclaimer filed to
+obviate an obviousness type double patenting rejection
+will identify the wrong target application or
+patent (i.e., an application or patent which is not the
+basis for the double patenting rejection). In these
+instances, a replacement terminal disclaimer identifying
+the correct target application or patent would be
+required by the examiner. Once a correct replacement
+terminal disclaimer is received, the next Office action
+should make it clear that “the second terminal disclaimer
+replaces the first terminal disclaimer, and the
+first terminal disclaimer is thus void.” A second terminal
+disclaimer fee should not be assessed/charged,
+since the first fee is applied to the second terminal disclaimer.
+D.Two or More Copending Applications
+If two (or more) pending applications are filed, in
+each of which a rejection of one claimed invention
+over the other on the ground of provisional obviousness-
+type double patenting (ODP) is proper, the ODP
+rejection will be made in each application. If the ODP
+rejection is the only rejection remaining in the earlier
+filed of the two pending applications, (but the later-
+filed application is rejectable on other grounds),
+the examiner should then withdraw that rejection
+and permit the earlier-filed application to issue as a
+patent without a terminal disclaimer. If the ODP rejection
+is the only rejection remaining in the later-filed
+application, (while the earlier-filed application is
+rejectable on other grounds), a terminal disclaimer
+must be required in the later-filed application, before
+the ODP rejection can be withdrawn.
-application is allowed on the first Office action, then
+If the ODP rejections in both applications are the
-jurisdiction over the reissue application will be
+only rejections remaining in those applications, the
-retained in the TC, and the Notice of Allowance
+examiner should then withdraw the ODP rejection in
-will not be mailed until the expiration of 2 months
+the earlier filed application thereby permitting that
-after publication of the filing of the design reissue
+application to issue without need of a terminal disclaimer.
-application in the Official Gazette (plus time for
+A terminal disclaimer must be required in the
-matching any protest filed with the application). (For
+later-filed application before the ODP rejection can be
-IFW processing, see IFW Manual.) The examiner will
+withdrawn and the application be permitted to issue.
-check  the PALM contents to ascertain when publication
-actually occurred. The delay in the mailing of
-the Notice of Allowance is to ensure that any potential
-protests complying with 37 CFR 1.291 submitted
-within the 2-month delay period will be considered by
-the Office. (see MPEP § 1441.01).
-The expedited examination procedure under
+If both applications are filed on the same day, the
+examiner should determine which application claims
-CFR 1.155 occurs through initial examination processing
+the base invention and which application claims the
-and throughout the entire prosecution in the
+improvement (added limitations). The ODP rejection
-Office. Once a request for expedited examination is
+in the base application can be withdrawn without a
-granted, prosecution of the design reissue application
+terminal disclaimer, while the ODP rejection in the
-will proceed according to the procedure under
+improvement application cannot be withdrawn without
+a terminal disclaimer.
-CFR 1.155, and there is no provision for “withdrawal”
-from expedited examination procedure.
-II.DESIGN REISSUE FEE
+Where there are three applications containing
+claims that conflict such that an ODP rejection is
+made in each application based upon the other two, it
+is not sufficient to file a terminal disclaimer in only
+one of the applications addressing the other two applications.
+Rather, an appropriate terminal disclaimer
+must be filed in at least two of the applications to link
+all three together. This is because a terminal disclaimer
+filed to obviate a double patenting rejection is
+effective only with respect to the application in which
+the terminal disclaimer is filed; it is not effective to
+link the other two applications to each other.
-The design reissue application fee is set forth for in
+VI. WITHDRAWING A RECORDED TERMINAL DISCLAIMER
-CFR 1.16(e). For design reissue applications
-filed on or after December 8, 2004, a search fee
-(37
-CFR 1.16(n)) and an examination fee (37 CFR
-.16(r)) are also required. The additional fees in
-CFR 1.16(h) and 37 CFR 1.16(i) do not
-apply for a design reissue application since more than
-one claim in not permitted in a design application pursuant
-to the last sentence of 37 CFR 1.153(a).
-The fee for issuing a design reissue patent is set
+If timely requested, a recorded terminal disclaimer
-forth in 37 CFR 1.18(a).
+may be withdrawn before the application in which it
+is filed issues as a patent, or in a reexamination proceeding,
+before the reexamination certificate issues.
+After a patent or reexamination certificate issues, it is
+unlikely that a recorded terminal disclaimer will be
+nullified.
+A. Before Issuance Of Patent
+While the filing and recordation of an unnecessary
+terminal disclaimer has been characterized as an
+“unhappy circumstance” in In re Jentoft, 392 F.2d
+, 157 USPQ 363 (CCPA 1968), there is no statutory
+prohibition against nullifying or otherwise canceling
+the effect of a recorded terminal disclaimer
+which was erroneously filed before the patent issues.
+Since the terminal disclaimer would not take effect
+until the patent is granted, and the public has not had
+the opportunity to rely on the terminal disclaimer,
+relief from this unhappy circumstance may be available
+by way of petition or by refiling the application
+(other than by refiling it as a CPA).
-III.MULTIPLE DESIGN REISSUE APPLICATIONS
+Under appropriate circumstances, consistent with
+the orderly administration of the examination process, the nullification of a recorded terminal disclaimer
+may be addressed by filing a petition under 37 CFR
+.182 requesting withdrawal of the recorded terminal
+disclaimer. Petitions seeking to reopen the question of
+the propriety of the double patenting rejection that
+prompted the filing of the terminal disclaimer have
+not been favorably considered. The filing of a continuing
+application other than a CPA, while abandoning
+the application in which the terminal disclaimer
+has been filed, will typically nullify the effect of a terminal
+disclaimer. The filing of a Request for Continued
+Examination (RCE) of an application under
+CFR 1.114 will not nullify the effect of a terminal
+disclaimer, since a new application has not been filed,
+but rather prosecution has been continued in the existing
+application.
+B.After Issuance Of Patent
-The design reissue application can be filed based on
+The mechanisms to correct a patent — Certificate
-the “error” of failing to include a design for a patentably
+of Correction (35 U.S.C. 255), reissue (35 U.S.C.
-distinct segregable part of the design claimed in
+), and reexamination (35 U.S.C. 305) — are not
-the original patent or a patentably distinct subcombination
+available to withdraw or otherwise nullify the effect
-of the claimed design. A reissue design application
+of a recorded terminal disclaimer. As a general principle,
-claiming both the entire article and the
+public policy does not favor the restoration to the
-patentably distinct subcombination or segregable part
+patent owner of something that has been freely dedicated
-would be proper under 35 U.S.C. 251, if such a reissue
+to the public, particularly where the public interest
-application is filed within two years of the issuance
+is not protected in some manner — e.g.,
-of the design patent, since it is considered a
+intervening rights in the case of a reissue patent. See,
-broadening of the scope of the patent claim. Restriction
+e.g., Altoona Publix Theatres v. American Tri-Ergon
-will be required under 37 CFR 1.176(b) in such a
+Corp., 294
-reissue design application, and the added design to the
+U.S. 477, 24 USPQ 308 (1935).
-segregable part or subcombination will be held to be
-constructively non-elected and withdrawn from consideration.
-See MPEP § 1450. In the Office action
-containing the restriction requirement, the examiner
-should suggest to the applicant that a divisional
-design reissue application directed to the constructively
-non-elected segregable part or subcombination
-subject matter may be filed. The claim to the patented
-design for the entire article will then be examined and,
-if found allowable without change from the patent, a
-rejection will be made under 35 U.S.C. 251 based on
-the fact that there is no “error” in the non-amended
-original patent claim. In the Office action making this
-rejection, applicant should be advised that a proper
-response to the rejection must include (A) a request to
-suspend action in this original reissue application
-pending completion of examination of a divisional
-reissue application directed to the constructively non-
-elected segregable part or subcombination subject
-matter, (B) the filing of the divisional reissue application,
-or a statement that one has already been filed
-(identifying it at least by application number), and (C)
-an argument that a complete response to the rejection
-has been made based upon the filing of the divisional
-reissue application and the request for suspension.
-Action in the original design reissue application will
-then be suspended, and the divisional will be examined.
+Certificates of Correction (35 U.S.C. 255) are
+available for the correction of an applicant’s mistake.
+The scope of this remedial provision is limited in
+two
+ways — by the nature of the mistake for which
+correction is sought and the nature of the proposed
+correction. In re Arnott, 19 USPQ2d 1049 (Comm’r
+Pat. 1991). The nature of the mistake for which correction
+is sought is limited to those mistakes that are:
-If, after examination, the divisional design reissue
+(A)of a clerical nature,
-application is also determined to be allowable, a
-requirement must be made in the divisional design
-reissue application to submit a petition under 37 CFR
-.183 requesting waiver of 37 CFR 1.153 in order to
-permit the rejoining of the designs to the entire article
-(of the original application) and the segregable part or
-subcombination (of the divisional) under a single
-claim into a single design reissue application for issuance,
-the single application being the first design reissue
-application.
-It should be noted that the filing of a design reissue
+(B)of a typographical nature, or
-application would not be proper if applicant did in
-fact include the design for a segregable part or subcombination
-thereof in the original design patent
-application, a restriction was thus made, and then
-applicant failed to file a divisional reissue application
+(C)of a minor character.
+The nature of the proposed correction is limited to
+those situations where the correction does not involve
+changes which would:
+(A)constitute new matter, or
+(B)require reexamination.
-for a non-elected invention that was canceled in view
+A mistake in filing a terminal disclaimer does not
-of a restriction requirement (prior to issue of the original
+fall within any of the categories of mistake for which
-application. See In re Watkinson, 900 F.2d 230,
+a certificate of correction of applicant’s mistake is
+permissible, and any attempt to remove or nullify the
-USPQ2d 1407 (Fed. Cir. 1990); In re Orita,
+effect of the terminal disclaimer would typically
+require reexamination of the circumstances under
-F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA
+which it was filed.
-).
-IV.CONVERSION TO UTILITY PATENT
+Although the remedial nature of reissue (35 U.S.C. 251) is well recognized, reissue is not available to correct all errors. It has been the Office position that reissue is not available to withdraw or otherwise nullify the effect of a terminal disclaimer recorded in an issued patent. First, the reissue statute only authorizes the Director of the USPTO to reissue a patent “for the unexpired part of the term of the original patent.” Since the granting of a reissue patent without the
+effect of a recorded terminal disclaimer would result
+in extending the term of the original patent, reissue
+under these circumstances would be contrary to the
+statute. Second, the principle against recapturing
+something that has been intentionally dedicated to the
+public dates back to Leggett v. Avery, 101 U.S. 256
+(1879). The attempt to restore that portion of the
+patent term that was dedicated to the public to secure
+the grant of the original patent would be contrary to
+this recapture principle. Finally, applicants have the
+opportunity to challenge the need for a terminal disclaimer
+during the prosecution of the application that
+issues as a patent. “Reissue is not a substitute for
+Patent Office appeal procedures.” Ball Corp. v. United
+States, 729
+F.2d 1429, 1435, 221 USPQ 289, 293
+(Fed. Cir. 1984). Where applicants did not challenge
+the propriety of the examiner’s obvious-type double
+patenting rejection, but filed a terminal disclaimer to
+avoid the rejection, the filing of the terminal disclaimer
+did not constitute error within the meaning of
+U.S.C. 251. Ex parte Anthony, 230 USPQ 467 (Bd.
+App. 1982), aff’d, No. 84-1357 (Fed. Cir. June 14,
+).
-A design patent cannot be converted to a utility
+Finally, the nullification of a recorded terminal disclaimer
-patent via reissue.
+would not be appropriate in a reexamination
+proceeding. There is a prohibition (35 U.S.C. 305)
-Converting a design patent to a utility patent will,
+against enlarging the scope of a claim during a reexamination
-in most instances, involve the introduction of new
+proceeding. As noted by the Board in
-matter into the patent. The disclosure of a design
+Anthony, supra, if a terminal disclaimer was nullified,
-patent is not directed to how the invention is made
+“claims would be able to be sued upon for a longer
-and used, and the introduction of new matter is
+period than would the claims of the original patent.
-required to bridge this gap and provide support for the
+Therefore, the vertical scope, as opposed to the horizontal
-utility patent. Accordingly, the examiner should consider
+scope (where the subject matter is enlarged),
-rejections based on the introduction of new matter
+would be enlarged.”
-under 35 U.S.C. 251, first paragraph, and lack of
+{{MPEP Chapter|1300|1500}}
-enablement and/or description under 35 U.S.C. 112,
-first paragraph, when a reissue application is filed to
-convert a design patent to a utility patent.
-Further, the term of a design patent may not be
-extended by reissue. Ex parte Lawrence, 70 USPQ
-(Comm’r Pat. 1946). Thus, any reissue application
-filed to convert a design patent to a utility patent,
-which conversion would thereby extend the term of
-the patent, should be rejected as failing to comply
-with 35 U.S.C. 251, first paragraph, which permits
-reissue only “for the unexpired part of the term of the
-original patent.” The statute requires that the reissued
-patent shall not extend the term of the original patent.
-Effect of Reissue [R-2]
-U.S.C. 252. Effect of reissue.
-The surrender of the original patent shall take effect upon the
-issue of the reissued patent, and every reissued patent shall have
-the same effect and operation in law, on the trial of actions for
-causes thereafter arising, as if the same had been originally
-granted in such amended form, but in so far as the claims of the
-original and reissued patents are substantially identical, such surrender
-shall not affect any action then pending nor abate any cause
-of action then existing, and the reissued patent, to the extent that
-its claims are substantially identical with the original patent, shall
-constitute a continuation thereof and have effect continuously
-from the date of the original patent.
-A reissued patent shall not abridge or affect the right of any
-person or that person’s successors in business who, prior to the
-grant of a reissue, made, purchased, offered to sell, or used within
-the United States, or imported into the United States, anything patented
-by the reissued patent, to continue the use of, to offer to sell,
-or to sell to others to be used, offered for sale, or sold, the specific
-thing so made, purchased, offered for sale, used, or imported
-unless the making, using, offering for sale, or selling of such thing
-infringes a valid claim of the reissued patent which was in the
-original patent. The court before which such matter is in question
-may provide for the continued manufacture, use, offer for sale, or
-sale of the thing made, purchased, offered for sale, used, or
-imported as specified, or for the manufacture, use, offer for sale,
-or sale in the United States of which substantial preparation was
-made before the grant of the reissue, and the court may also provide
-for the continued practice of any process patented by the reissue
-that is practiced, or for the practice of which substantial
-preparation was made, before the grant of the reissue, to the extent
-and under such terms as the court deems equitable for the protection
-of investments made or business commenced before the grant
-of the reissue.
-The effect of the reissue of a patent is stated in
-U.S.C. 252. With respect to the Office treatment of
-the reissued patent, the reissued patent will be viewed
-as if the original patent had been originally granted in
-the amended form provided by the reissue. With
-respect to intervening rights resulting from the reissue
-of an original patent, the second paragraph of 35
-U.S.C. 252 provides for two separate and distinct
-defenses to patent infringement under the doctrine of
-intervening rights:
-“Absolute” intervening rights are available for a
-party that “prior to the grant of a reissue, made, purchased,
-offered to sell, or used within the United
-States, or imported into the United States, anything
-patented by the reissued patent,” and “equitable”
-intervening rights may be provided where “substantial
-preparation was made before the grant of the reissue.”
-See BIC Leisure Prods., Inc., v. Windsurfing Int’l,
-Inc., 1 F.3d 1214, 1220, 27 USPQ2d 1671, 1676 (Fed.
-Cir. 1993).
-Public Access of Reissue Applications
-[R-3]
-CFR 1.11(b) opens all reissue applications filed
-after March 1, 1977, to inspection by the general public.
-CFR 1.11(b) also provides for announcement
-of the filings of reissue applications in the Official
-Gazette (except for continued prosecution applications
-filed under 37 CFR 1.53(d)). This announcement
-will give interested members of the public an
-opportunity to submit to the examiner information
-pertinent to patentability of the reissue application.
-The filing of a continued prosecution application
-under 37 CFR 1.53(d) of a reissue application will notbe announced in the Official Gazette. Although the
-filing of a continued prosecution application of a reissue
-application constitutes the filing of a reissue
-application, the announcement of the filing of such
-continued prosecution application would be redundant
-in view of the announcement of the filing of the prior
-reissue application in the Official Gazette.
-CFR 1.11(b) is applicable to all reissue
-applications filed on or after March 1, 1977. Those
-reissue applications previously on file will not be
-automatically open to inspection but a liberal policy
-will be followed in granting petitions for access to
-such applications.
-IFW reissue application files are open to
-inspection by the general public by way of Public
-PAIR via the USPTO Internet site. In viewing the
-images of the files, members of the public will be able
-to view the entire content of the reissue application
-file history. To access Public PAIR, a member of the
-public would (A) go to the USPTO web site at http://
-www.uspto.gov, (B) click on “Patents,” (C) under
-“Check Status, View Papers…” click on “Status &
-IFW,” and (D) under “Patent Application Information
-Retrieval” enter the reissue application number.
-Access to a reissue application that is maintained in
-paper must be obtained from the area of the Office
-having jurisdiction over the file. The following access
-procedure will be observed for reissue application
-files that are maintained in paper:
-(A)Any member of the general public may
-request access to a particular reissue application filed
-after March 1, 1977. Since no record of such request
-is intended to be kept, an oral request will suffice.
-(Reissue applications already on file prior to March 1,
-are not automatically open to inspection, but a
-liberal policy is followed by the Office of Patent
-Legal Administration (OPLA) and by the Board of
-Patent Appeals and Interferences in granting petitions
-for access to such applications.);
-(B)Paper reissue application files will be maintained
-in the TCs and inspection thereof will be supervised
-by TC personnel. A TC Director or other
-appropriate Office official may, under appropriate circumstances,
-postpone access to or the making of copies
-of a paper reissue application file, in order, for
-example, to avoid interruption of the examination or
-other review of the application by an examiner. In
-addition, though no general limit is placed on the
-amount of time spent reviewing the files, the Office
-may impose limitations, if necessary, e.g., where the
-application is actively being processed;
-(C)In any instance where the reissue application
-file has left the TC for administrative processing,
-requests for access should be directed to the appropriate
-supervisory personnel where the application is
-currently located;
-(D)A paper reissue application file is not
-available to the public once the reissue application file
-has been released and forwarded by the TC for publication
-of the reissue patent. This would include any
-reissue application files which have been selected for
-a post-allowance screening at OPLA. Unless
-prosecution is reopened pursuant to the screening, the
-reissue application files are not available to the public
-until the reissue patent issues. This is because the reissue
-application file has been put into a special format
-for printing purposes and public access at this stage
-would disrupt the publication process;
-(E)Requests for copies of papers in the reissue
-application file must be in writing addressed to Mail
-Stop Document Services, Director of the U.S. Patent
-and Trademark Office, P.O. Box 1450, Alexandria,
-VA 22313-1450. Such requests may be either mailed
-or delivered to the Customer Service Window. The
-price for a copy of an application as filed is set forth
-in 37 CFR 1.19(b)(1). Since no useful purpose is seen
-for retaining such written requests for copies of
-papers in reissue applications, the request(s) should be
-destroyed after the order has been completed.
- See also MPEP § 103.
-Certificates of Correction — OfficeMistake [R-3]
-U.S.C. 254. Certificate of correction of Patent and
-Trademark Office mistake.
-Whenever a mistake in a patent, incurred through the fault of
-the Patent and Trademark Office, is clearly disclosed by the
-records of the Office, the Director may issue a certificate of correction
-stating the fact and nature of such mistake, under seal,
-without charge, to be recorded in the records of patents. A printed
-copy thereof shall be attached to each printed copy of the patent,
-and such certificate shall be considered as part of the original
-patent. Every such patent, together with such certificate, shall
-have the same effect and operation in law on the trial of actions
-for causes thereafter arising as if the same had been originally
-issued in such corrected form. The Director may issue a corrected
-patent without charge in lieu of and with like effect as a certificate
-of correction.
-CFR 1.322. Certificate of correction of Office mistake.
-(a)(1) The Director may issue a certificate of correction pursuant
-to 35 U.S.C. 254 to correct a mistake in a patent, incurred
-through the fault of the Office, which mistake is clearly disclosed
-in the records of the Office:
-(i)At the request of the patentee or the patentee’s
-assignee;
-(ii)Acting sua sponte for mistakes that the Office discovers;
-or
-(iii)Acting on information about a mistake supplied by a
-third party.
-(2)(i) There is no obligation on the Office to act on or
-respond to a submission of information or request to issue a certificate
-of correction by a third party under paragraph (a)(1)(iii) of
-this section.
-(ii)Papers submitted by a third party under this section
-will not be made of record in the file that they relate to nor be
-retained by the Office.
-(3)If the request relates to a patent involved in an
-interference, the request must comply with the requirements of
-this section and be accompanied by a motion under § 41.121(a)(2)
-or § 41.121(a)(3) of this title.
-(4)The Office will not issue a certificate of correction
-under this section without first notifying the patentee (including
-any assignee of record) at the correspondence address of record as
-specified in § 1.33(a) and affording the patentee or an assignee an
-opportunity to be heard.
-(b)If the nature of the mistake on the part of the Office is
-such that a certificate of correction is deemed inappropriate in
-form, the Director may issue a corrected patent in lieu thereof as a
-more appropriate form for certificate of correction, without
-expense to the patentee.
-Mistakes incurred through the fault of the Office
-may be the subject of Certificates of Correction under
-CFR 1.322. The Office, however, has discretion
-under 35 U.S.C. 254 to decline to issue a Certificate
-of Correction even though an Office mistake exists. If
-Office mistakes are of such a nature that the meaning
-intended is obvious from the context, the Office may
-decline to issue a certificate and merely place the correspondence
-in the patented file, where it serves to
-call attention to the matter in case any question as to it
-subsequently arises. Such is the case, even where a
-correction is requested by the patentee or patentee’s
-assignee.
-In order to expedite all proper requests, a Certificate
-of Correction should be requested only for errors
-of consequence. Instead of a request for a Certificate
-of Correction, letters making errors of record should
-be utilized whenever possible. Thus, where errors are
-of a minor typographical nature, or are readily apparent
-to one skilled in the art, a letter making the error(s)
-of record can be submitted in lieu of a request for a
-Certificate of Correction. There is no fee for the submission
-of such a letter.
-It is strongly advised that the text of the correction
-requested be submitted on a Certificate of Correction
-form, PTO/SB/44 (also referred to as PTO 1050). Submission
-of this form in duplicate is not necessary. The
-location of the error in the printed patent should be
-identified on form PTO/SB/44 by column and line
-number or claim and line number. See MPEP § 1485for a discussion of the preparation and submission of
-a request for a Certificate of Correction.
-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
-MISTAKES IN PATENT
- Third parties do not have standing to demand that
-the Office issue, or refuse to issue, a Certificate of
-Correction. See Hallmark Cards, Inc. v. Lehman, 959
-F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C.
-). 37 CFR 1.322(a)(2) makes it clear that third
-parties do not have standing to demand that the Office
-act on, respond to, issue, or refuse to issue a Certificate
-of Correction. The Office is, however, cognizant
-of the need for the public to have correct information
-about published patents and may therefore accept
-information about mistakes in patents from third parties.
-CFR 1.322(a)(1)(iii). Where appropriate, the
-Office may issue certificates of correction based on
-information supplied by third parties, whether or not
-such information is accompanied by a specific request
-for issuance of a Certificate of Correction.
- While third parties are permitted to submit information
-about mistakes in patents which information
-will be reviewed, the Office need not act on that information
-nor deny any accompanying request for issuance
-of a Certificate of Correction. Accordingly, a fee
-for submission of the information by a third party has
-not been imposed. The Office may, however, choose
-to issue a Certificate of Correction on its own initiative
-based on the information supplied by a third
-party, if it desires to do so. Regardless of whether the
-third party information is acted upon, the information
-will not be made of record in the file that it relates to,
-nor be retained by the Office. 37 CFR 1.322(a)(2)(ii).
- When such third party information (about mistakes
-in patents) is received by the Office, the Office will
-not correspond with third parties about the information
-they submitted either (1) to inform the third parties
-of whether it intends to issue a Certificate of
-Correction, or (2) to issue a denial of any request for
-issuance of a Certificate of Correction that may
-accompany the information. The Office will confirm
-to the party submitting such information that the
-Office has in fact received the information if a
-stamped, self-addressed post card has been submitted.
-See MPEP § 503.
-II. PUBLICATION IN THE OFFICIAL
-GAZETTE
-Each issue of the Official Gazette (patents section)
-numerically lists all United States patents having Certificates
-of Correction. The list appears under the
-heading “Certificates of Correction for the week of
-(date).”
-.01Expedited Issuance of
-Certificates of Correction -
-Error Attributable to Office [R-
-]
-In an effort to reduce the overall time required in
-processing and granting Certificate of Correction
-requests, the Office will expedite processing and
-granting of patentee requests where such requests are
-accompanied by evidence to show that the error is
-attributable solely to the Office (i.e., requests filed
-pursuant to 37 CFR 1.322 only).
-The following requirements must be met for consideration
-of expedited issuance of Certificates of
-Correction:
-The text of the correction requested should be submitted
-on a Certificate of Correction form, PTO/SB/
-(also referred to as PTO 1050). Submission of this
-form in duplicate is not necessary. The location of the
-error in the printed patent should be identified on
-form PTO/SB/44 by column and line number or claim
-and line number. See also MPEP § 1485.
-Where the correction requested was incurred
-through the fault of the Office, and the matter is
-clearly disclosed in the records of the Office, and is
-accompanied by documentation that unequivocally
-supports the patentee’s assertion(s), a Certificate of
-Correction will be expeditiously issued. Such supporting
-documentation can consist of relevant photocopied
-receipts, manuscript pages, correspondence dated
-and received by the Office, photocopies of Examiners’
-responses regarding entry of amendments, or any
-other validation that supports the patentee’s request so
-that the request can be processed without the patent
-file.
-Where only part of a request can be approved, the
-appropriate modifications will be made on the form
-PTO/SB/44 and the patentee then notified by mail.
-Further consideration will be given to initially
-rejected requests upon a request for reconsideration.
-In this instance, however, or in the case where it is
-determined that the Office was not responsible for the
-error(s) cited by the patentee, accelerated issuance of
-Certificates of Correction cannot be anticipated
-(although the Office will make every effort to process
-the request expeditiously).
-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
-Certificates of Correction - Applicant’s
-Mistake [R-3]
-U.S.C. 255. Certificate of correction of applicant’s
-mistake.
-Whenever a mistake of a clerical or typographical nature, or of
-minor character, which was not the fault of the Patent and Trademark
-Office, appears in a patent and a showing has been made that
-such mistake occurred in good faith, the Director may, upon payment
-of the required fee, issue a certificate of correction, if the
-correction does not involve such changes in the patent as would
-constitute new matter or would require reexamination. Such
-patent, together with the certificate, shall have the same effect and
-operation in law on the trial of actions for causes thereafter
-arising
-as if the same had been originally issued in such corrected
-form.
-CFR 1.323. Certificate of correction of applicant’s
-mistake.
-The Office may issue a certificate of correction under the
-conditions specified in 35 U.S.C. 255 at the request of the patentee
-or the patentee’s assignee, upon payment of the fee set forth in
-§ 1.20(a). If the request relates to a patent involved in an interference,
-the request must comply with the requirements of this section
-and be accompanied by a motion under § 41.121(a)(2) or
-§
-.121(a)(3) of this title.
-CFR 1.323 relates to the issuance of Certificates
-of Correction for the correction of errors which were
-not the fault of the Office. Mistakes in a patent which
-are not correctable by Certificate of Correction may
-be correctable via filing a reissue application (see
-MPEP § 1401 - § 1460). See Novo Industries, L.P. v.
-Micro Molds Corporation, 350 F.3d 1348,
-USPQ2d 1128 (Fed. Cir. 2003) (The Federal Circuit
-stated that when Congress in 1952 defined
-USPTO authority to make corrections with prospective
-effect, it did not deny correction authority to the
-district courts. A court, however, can correct only if
-“(1) the correction is not subject to reasonable debate
-based on consideration of the claim language and the
-specification and (2) the prosecution history does not
-suggest a different interpretation...”).
-In re Arnott, 19 USPQ2d 1049, 1052 (Comm’r Pat.
-) specifies the criteria of 35 U.S.C. 255 (for a
-Certificate of Correction) as follows:
-Two separate statutory requirements must be met
-before a Certificate of Correction for an applicant’s mistake
-may issue. The first statutory requirement concerns
-the nature, i.e., type, of the mistake for which a correction
-is sought. The mistake must be:
-(1) of a clerical nature,
-(2) of a typographical nature, or
-(3) a mistake of minor character.
-The second statutory requirement concerns the nature
-of the proposed correction. The correction must not
-involve changes which would:
-(1) constitute new matter or
-(2) require reexamination.
-If the above criteria are not satisfied, then a Certificate
-of Correction for an applicant’s mistake will not issue,
-and reissue must be employed as the vehicle to “correct”
-the patent. Usually, any mistake affecting claim
-scope must be corrected by reissue.
-A mistake is not considered to be of the “minor”
-character required for the issuance of a Certificate of
-Correction if the requested change would materially
-affect the scope or meaning of the patent. See also
-MPEP § 1412.04 as to correction of inventorship via
-certificate of correction or reissue.
-The fee for providing a correction of applicant’s
-mistake, other than inventorship, is set forth in
-CFR 1.20(a). The fee for correction of inventorship
-in a patent is set forth in 37 CFR 1.20(b).
-.01Correction of Assignees’ Names[R-3]
-The Fee(s) Transmittal Form portion (PTOL-
-B) of the Notice of Allowance provides a space
-(item 3) for assignment data which should be completed
-in order to comply with 37 CFR 3.81. Unless
-an assignee’s name and
-address are identified in the
-appropriate space for
-specifying the assignee, (i.e.,
-item 3 of the Fee(s) Transmittal Form PTOL-
-B), the patent will issue to the applicant. Assignment
-data printed on the patent will be based solely on
-the information so supplied.
-Any request for the issuance of an application
-in the name of the assignee submitted after the date of
-payment of the issue fee, and any request for a patent
-to be corrected to state the name of the assignee must:
-(A)state that the assignment was submitted for
-recordation as set forth in 37 CFR 3.11 before issuance
-of the patent;
-(B)include a request for a certificate of correction
-under 37 CFR 1.323 along with the fee set forth in
-CFR 1.20(a); and
-(C)include the processing fee set forth in 37 CFR
-.17(i).
-See 37 CFR 3.81(b).
-.02Correction of Inventors’ Names[R-3]
-U.S.C. 256. Correction of named inventor.
-Whenever through error a person is named in an issued patent
-as the inventor, or through error an inventor is not named in an
-issued patent and such error arose without any deceptive intention
-on his part, the Director may, on application of all the parties and
-assignees, with proof of the facts and such other requirements as
-may be imposed, issue a certificate correcting such error.
-The error of omitting inventors or naming persons who are not
-inventors shall not invalidate the patent in which such error
-occurred if it can be corrected as provided in this section. The
-court before which such matter is called in question may order
-correction of the patent on notice and hearing of all parties concerned
-and the Director shall issue a certificate accordingly.
-In requesting the Office to effectuate a court order
-correcting inventorship in a patent pursuant to
-U.S.C. 256, a copy of the court order and a Certificate
-of Correction under 37 CFR 1.323 should be submitted
-to the Certificates of Corrections Branch.
-CFR 1.324. Correction of inventorship in patent,
-pursuant to 35 U.S.C. 256.
-(a)Whenever through error a person is named in an
-issued patent as the inventor, or through error an inventor is not
-named in an issued patent and such error arose without any deceptive
-intention on his or her part, the Director, pursuant to 35
-U.S.C. 256, may, on application of all the parties and assignees, or
-on order of a court before which such matter is called in question,
-issue a certificate naming only the actual inventor or inventors. A
-petition to correct inventorship of a patent involved in an interference
-must comply with the requirements of this section and must
-be accompanied by a motion under § 41.121(a)(2) or §
-.121(a)(3) of this title.
-(b)Any request to correct inventorship of a patent pursuant
-to paragraph (a) of this section must be accompanied by:
-(1)Where one or more persons are being added, a statement
-from each person who is being added as an inventor that the
-inventorship error occurred without any deceptive intention on his
-or her part;
-(2)A statement from the current named inventors who
-have not submitted a statement under paragraph (b)(1) of this section
-either agreeing to the change of inventorship or stating that
-they have no disagreement in regard to the requested change;
-(3)A statement from all assignees of the parties submitting
-a statement under paragraphs (b)(1) and (b)(2) of this section
-agreeing to the change of inventorship in the patent, which statement
-must comply with the requirements of § 3.73(b) of this chapter;
-and
-(4)The fee set forth in § 1.20(b).
-(c)For correction of inventorship in an application, see
-§§ 1.48 and 1.497.
-(d)In a contested case before the Board of Patent Appeals
-and Interferences under part 41, subpart D, of this title, a request
-for correction of a patent must be in the form of a motion under
-§
-.121(a)(2) or § 41.121(a)(3) of this title.
-The petition to correct inventorship under 37 CFR
-.324 must include the statements and fee required by
-CFR 1.324(b).
-Under 37 CFR 1.324(b)(1), a statement is required
-from each person who is being added as an inventor
-that the inventorship error occurred without any
-deceptive intention on their part. In order to satisfy
-this, a statement such as the following is sufficient:
-“The inventorship error of failing to include John Smith
-as an inventor of the patent occurred without any deceptive
-intention on the part of John Smith.”
-Nothing more is required. The examiner will determine
-only whether the statement contains the required
-language; the examiner will not make any commentas to whether or not it appears that there was in fact
-deceptive intention (see MPEP § 2022.05).
-Under 37 CFR 1.324(b)(2), all current inventors
-who did not submit a statement under 37 CFR
-.324(b)(1) must submit a statement either agreeing to
-the change of inventorship, or stating that they have
-no disagreement with regard to the requested change.
-“Current inventors” include the inventor(s) being
-retained as such and the inventor(s) to be deleted.
-These current inventors need not make a statement as
-to whether the inventorship error occurred without
-deceptive intention.
- If an inventor is not available, or refuses, to submit
-a statement, the assignee of the patent may wish to
-consider filing a reissue application to correct inventorship,
-since the inventor’s statement is not required
-for a non-broadening reissue application to correct
-inventorship. See MPEP § 1412.04.
-Under 37 CFR 1.324(b)(3), a statement is required
-from the assignee(s) of the patent agreeing to the
-change of inventorship in the patent. The assignee
-statement agreeing to the change of inventorship must
-be accompanied by a proper statement under 37 CFR
-.73(b) establishing ownership, unless a proper 37
-CFR 3.73(b) statement is already in the file. See
-MPEP § 324 as to the requirements of a statement
-under 37 CFR 3.73(b).
-While a request under 37 CFR 1.48 is appropriate
-to correct inventorship in a nonprovisional application,
-a petition under 37 CFR 1.324 is the appropriate
-vehicle to correct inventorship in a patent. If a request
-under 37 CFR 1.48(a), (b), or (c) is inadvertently filed
-in a patent, the request may be treated as a petition
-under 37 CFR 1.324, and if it is grantable, form paragraph
-.14 set forth below should be used.
- Similarly, if a request under 37 CFR 1.48(a), (b), or
-(c) is filed in a pending application but not acted upon
-until after the application becomes a patent, the
-request may be treated as a petition under 37 CFR
-.324, and if it is grantable, form paragraph 10.14 set
-forth below should be used.
- The statutory basis for correction of inventorship
-in a patent under 37 CFR 1.324 is 35 U.S.C. 256. It is
-important to recognize that 35 U.S.C. 256 is stricter
-than 35 U.S.C. 116, the statutory basis for corrections
-of inventorship in applications under 37 CFR 1.48.
-U.S.C. 256 requires “on application of all the parties
-and assignees,” while 35 U.S.C. 116 does not
-have the same requirement. Under 35 U.S.C. 116 and
-CFR 1.48, waiver requests under 37 CFR 1.183may be submitted (see, e.g., MPEP § 201.03, under
-the heading “Statement of Lack of Deceptive Intention”).
-This is not possible under 35 U.S.C. 256 and
-CFR 1.324. In correction of inventorship in a nonprovisional
-application under 37 CFR 1.48(a), the
-requirement for a statement by each originally named
-inventor may be waived pursuant to 37 CFR 1.183;
-however, correction of inventorship in a patent under
-CFR 1.324 requires petition of all the parties, i.e.,
-originally named inventors and assignees, in accordance
-with statute (35 U.S.C. 256) and thus the
-requirement cannot be waived. 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:
-.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.
-.In bracket 10, insert the correspondence address of record.
-.This form paragraph is printed with the USPTO letterhead.
-.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].
-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
-inventor or inventors.
-_______________________
-[7]
-Supervisory Patent Examiner,
-Art Unit [8],
-Technology Center [9]
-[10]
-Examiner Note:
-.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.
-.This form paragraph is printed with the USPTO letterhead.
-.Prepare Certificate using form paragraph 10.15.
-.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]
-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:
-.In bracket 9, insert the full name and residence (City, State)
-of each actual inventor.
-.This is an internal memo, not to be mailed to applicant,
-which accompanies the patented file to Certificates of Correction
-Branch as noted in form paragraphs 10.13 and 10.14.
-.In brackets 5 and 10, insert name of SPE; in brackets 6 and
-the Art Unit and sign above each line.
-.Two separate pages of USPTO letterhead will be printed
-when using this form paragraph.
-¶ 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:
-.If each of the four specified items has been submitted but one
-or more is insufficient, the petition should be denied. See paragraph
-.17. However, if the above noted deficiency can be cured
-by the submission of a renewed petition, a dismissal would be
-appropriate.
-.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.
-.In bracket 7, pluralize as necessary and insert the item number(
-s) which are missing.
-.In bracket 11, insert correspondence address of record.
-.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
-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:
-.In bracket 7, a full explanation of the deficiency must be provided.
-.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
-.14 or 10.20, rather than being denied.
-.In bracket 11, insert correspondence address of record.
-.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:
-. 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.
-.
-. If the petition requests waiver of requirements of 37 CFR
-.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.
-.03Correction of 35 U.S.C. 119 and
-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
-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
-U.S.C. 119(e) BENEFITS
-A.For Applications Filed Prior to November 29,
-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:
-CFR 1.78. Claiming benefit of earlier filing date andcross-references to other applications.
-(a)(1) A nonprovisional application may claim an invention
-disclosed in one or more prior filed copending nonprovisional
-applications or copending international applications designating
-the United States of America. In order for a nonprovisional application
-to claim the benefit of a prior filed copending nonprovisional
-application or copending international application
-designating the United States of America, each prior application
-must name as an inventor at least one inventor named in the later
-filed nonprovisional application and disclose the named inventor’s
-invention claimed in at least one claim of the later filed nonprovisional
-application in the manner provided by the first
-paragraph of 35 U.S.C. 112. In addition, each prior application
-must be:
-(i)An international application entitled to a filing date in
-accordance with PCT Article 11 and designating the United States
-of America; or
-(ii)Complete as set forth in § 1.51(b); or
-(iii)Entitled to a filing date as set forth in § 1.53(b) or
-§
-.53(d) and include the basic filing fee set forth in § 1.16; or
-(iv)Entitled to a filing date as set forth in § 1.53(b) and
-have paid therein the processing and retention fee set forth in
-§
-.21(l) within the time period set forth in § 1.53(f).
-(2)Except for a continued prosecution application filed
-under §
-.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
-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
-§
-.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
-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
-§
-.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
-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
-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
-.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
-(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
-(Comm’r Pat. 1976), citing In re Van Esdonk,
-USPQ 671 (Comm’r Pat. 1975).
-If any of the above-stated conditions is not satisfied,
-the filing of a reissue application (see MPEP
-§
-- § 1460) would be appropriate to pursue the
-desired correction of the patent.
-B.For Applications Filed on or After November
-, 2000
-For applications filed on or after November 29,
-, 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
-, 2005).
-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 §
-.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
-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
-, 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
-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
-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
-§
-.16(d) must be paid within the time period set forth in
-§
-.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
-, 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
-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
-, 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
-.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
-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
-.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
-U.S.C. 120 priority is appropriate (see MPEP
-§
-.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
-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
-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
-§
-- § 1460) may be appropriate to pursue the
-desired correction of the patent for benefit claims
-under 35 U.S.C. 120 and 365(c).
-Handling of Request for Certificates
-of Correction [R-5]
-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
-.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/
-.
-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
-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
-, line 10, and insert the following claim:
-. A control circuit of the character set forth in claim
-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
-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:
-. 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.
-. 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.
-. 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.
-. 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).
-. 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.
-. 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)).
-. 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.
-. 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.
-. 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.
-Disclaimers [R-5]
-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.
-CFR 1.321. Statutory disclaimers, including terminal
-disclaimers.
-(a)A patentee owning the whole or any sectional interest in
-a patent may disclaim any complete claim or claims in a patent. In
-like manner any patentee may disclaim or dedicate to the public
-the entire term, or any terminal part of the term, of the patent
-granted. Such disclaimer is binding upon the grantee and its successors
-or assigns. A notice of the disclaimer is published in the
-Official Gazette and attached to the printed copies of the specification.
-The disclaimer, to be recorded in the Patent and Trademark
-Office, must:
-(1)be signed by the patentee, or an attorney or agent of
-record;
-(2)identify the patent and complete claim or claims, or
-term being disclaimed. A disclaimer which is not a disclaimer of a
-complete claim or claims, or term, will be refused recordation;
-(3)state the present extent of patentee’s ownership interest
-in the patent; and
-(4)be accompanied by the fee set forth in § 1.20(d).
-(b)An applicant or assignee may disclaim or dedicate to the
-public the entire term, or any terminal part of the term, of a patent
-to be granted. Such terminal disclaimer is binding upon the
-grantee and its successors or assigns. The terminal disclaimer, to
-be recorded in the Patent and Trademark Office, must:
-(1)be signed:
-(i)by the applicant, or
-(ii)if there is an assignee of record of an undivided
-part interest, by the applicant and such assignee, or
-(iii)if there is an assignee of record of the entire interest,
-by such assignee, or
-(iv)by an attorney or agent of record;
-(2)specify the portion of the term of the patent being disclaimed;
-(3)state the present extent of applicant’s or assignee’s
-ownership interest in the patent to be granted; and
-(4)be accompanied by the fee set forth in § 1.20(d).
-(c)A terminal disclaimer, when filed to obviate judicially
-created double patenting in a patent application or in a reexamination
-proceeding except as provided for in paragraph (d) of this
-section, must:
-(1)Comply with the provisions of paragraphs (b)(2)
-through (b)(4) of this section;
-(2)Be signed in accordance with paragraph (b)(1) of this
-section if filed in a patent application or in accordance with paragraph
-(a)(1) of this section if filed in a reexamination proceeding;
-and
-(3)Include a provision that any patent granted on that
-application or any patent subject to the reexamination proceeding
-shall be enforceable only for and during such period that said
-patent is commonly owned with the application or patent which
-formed the basis for the judicially created double patenting.
-(d)A terminal disclaimer, when filed in a patent application
-or in a reexamination proceeding to obviate double patenting
-based upon a patent or application that is not commonly owned
-but was disqualified under 35 U.S.C. 103(c) as resulting from
-activities undertaken within the scope of a joint research agreement,
-must:
-(1)Comply with the provisions of paragraphs (b)(2)
-through (b)(4) of this section;
-(2)Be signed in accordance with paragraph (b)(1) of this
-section if filed in a patent application or be signed in accordance
-with paragraph (a)(1) of this section if filed in a reexamination
-proceeding;
-(3)Include a provision waiving the right to separately
-enforce any patent granted on that application or any patent subject
-to the reexamination proceeding and the patent or any patent
-granted on the application which formed the basis for the double
-patenting, and that any patent granted on that application or any
-patent subject to the reexamination proceeding shall be enforceable
-only for and during such period that said patent and the
-patent, or any patent granted on the application, which formed the
-basis for the double patenting are not separately enforced.
-A disclaimer is a statement filed by an owner (in
-part or in entirety) of a patent or of a patent to be
-granted (i.e., an application), in which said owner
-relinquishes certain legal rights to the patent. There
-are two types of disclaimers: a statutory disclaimer
-and a terminal disclaimer. The owner of a patent or an
-application is the original inventor(s) or the assignee
-of the original inventor(s). The patent or application is
-assigned by one assignment or by multiple assignments
-which establish a chain of title from the inventor(
-s) to the assignee(s). The owner of the patent or
-application can sign a disclaimer, and a person
-empowered by the owner to sign the disclaimer can
-also sign it. Per 37 CFR 1.321(b)(1)(iv), an attorney
-or agent of record is permitted to sign the disclaimer.
-A registered practitioner acting in a representative
-capacity under 37 CFR 1.34 is not permitted to sign
-the disclaimer. For a disclaimer to be accepted, it must
-be signed by the proper party as follows:
-(A)A disclaimer filed in an application must be
-signed by
-(1)the applicant where the application has not
-been assigned,
-(2)the applicant and the assignee where each
-owns a part interest in the application,
-(3)the assignee where assignee owns the
-entire interest in the application, or
-(4)an attorney or agent of record.
-(B)A disclaimer filed in a patent or a reexamination
-proceeding must be signed by either
-(1)the patentee (the assignee, the inventor(s) if
-the patent is not assigned, or the assignee and the
-inventors if the patent is assigned-in-part), or
-(2)an attorney or agent of record.
-(C)Where the assignee (of an application or of a
-patent being reexamined or to be reissued) signs the
-disclaimer, there is a requirement to comply with
-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
-.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
-CFR 3.73(b).
-(E)The signature on the disclaimer need not be
-an original signature. Pursuant to 37 CFR
-.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
-.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
-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.
-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.
-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
-U.S.C. 253) except for those filed in an application
-or reexamination proceeding pending in a Technology
-Center (TC). This involves:
-(A)Determining the compliance of the disclaimer
-with 35 U.S.C. 253 and 37 CFR 1.321 and 3.73;
-(B)Notifying applicant or patentee when the disclaimer
-is informal and thus not acceptable;
-(C)Recording the disclaimers in the record of the
-application file; and
-(D)Providing the disclaimer data for printing in
-the Official Gazette.
-IV.TERMINAL DISCLAIMER IN PENDING
-APPLICATION PRACTICE IN THE
-TECHNOLOGY CENTERS
-Where a terminal disclaimer is filed in an application
-pending in a TC, it will be processed by the paralegal
-of the Office of the Special Program Examiner
-of the TC having responsibility for the application.
-The paralegal will:
-(A)Determine compliance with 35 U.S.C. 253and 37
-CFR 1.321 and 3.73, and ensure that the
-appropriate terminal disclaimer fee set forth in
-CFR 1.20(d) is/was applied;
-(B)Notify the examiner having charge of the
-application whether the terminal disclaimer is acceptable
-or not;
-(C)Where the terminal disclaimer is not acceptable,
-indicate the nature of the informalities so that the
-examiner can inform applicant in the next Office
-action. For an IFW application, complete the IFW terminal
-disclaimer form by checking the “Disapproved”
-box and have the form scanned into IFW;
-(D)Where the terminal disclaimer is acceptable,
-record the terminal disclaimer in the record of the
-application as set forth below.
-The paralegal will record an acceptable terminal
-disclaimer as being present in an application by:
-For IFW applications:
-(A)Completing the IFW terminal disclaimer form
-by checking the “Approved” box and having the form
-scanned into IFW; and
-(B)Entering the terminal disclaimer into PALM
-for the application.
-For application files that are maintained in paper:
-For paper applications with 08/ and earlier series
-code
-(A)Attaching a green label to the file wrapper;
-(B)Stamping a notice on the file of the term
-which has been disclaimed (note that the blanks on
-the stamped notice for entering information on the
-patent(s) being disclaimed are no longer filled in);
-(C)Endorsing the paper containing the terminal
-disclaimer submission on the “Contents” flap of the
-application file; and
-(D)Entering the terminal disclaimer into the
-PALM system records, for the application.
-For paper applications with 09/ and later series
-code
-(A)Checking a box on the file wrapper which
-states that the terminal disclaimer has been filed (Any
-blanks for entering information on the patent(s) being
-disclaimed are no longer filled in. Note that applications
-with 10/ and later series codes no longer have
-such blanks to complete);
-(B)Endorsing the paper containing the terminal
-disclaimer submission on the “Contents” flap of the
-application file; and
-(C)Entering the terminal disclaimer into the
-PALM system records, for the application.
-The paralegal completes a Terminal Disclaimer
-Informal Memo to notify the examiner of the nature
-of any informalities in the terminal disclaimer. The
-examiner should notify the applicant of the informalities
-in the next Office action, or by interview with
-applicant if such will expedite prosecution of the
-application. Further, the examiner should initial and
-date the Terminal Disclaimer Informal Memo and
-return it to the paralegal to indicate that the examiner
-has appropriately notified applicant about the terminal
-disclaimer. The paralegal will then discard the Terminal
-Disclaimer Informal Memo.
-V.OTHER MATTERS DIRECTED TO
-TERMINAL DISCLAIMERS
-A.Requirements of Terminal Disclaimers
- A proper terminal disclaimer must disclaim the terminal
-part of the statutory term of any patent granted
-on the application being examined which would
-extend beyond the expiration date of the full statutory
-term, shortened by any terminal disclaimer, of the
-patent (or of any patent granted on the application) to
-which the disclaimer is directed. Note the exculpatory
-language in the second paragraph of the sample terminal
-disclaimer forms, PTO/SB/25 and PTO/SB/26,
-provided at the end of this Chapter. That language
-(“In making the above disclaimer, the owner does not
-disclaim...”) is permissible in a terminal disclaimer.
-A terminal disclaimer filed to obviate a nonstatutory
-double patenting rejection based on a commonly
-owned patent or application must comply with the
-requirements of 37 CFR 1.321(c). The terminal disclaimer
-must state that any patent granted on the
-application being examined will be enforceable only
-for and during the period that it and the patent to
-which the disclaimer is directed or the patent granted
-on the application to which the disclaimer is directed
-are commonly owned. See MPEP § 706.02(1)(2) for
-examples of common ownership, or lack thereof.
-A terminal disclaimer filed to obviate a nonstatutory
-double patenting rejection based on a non-commonly
-owned patent or application disqualified under
-U.S.C. 103(c) as a result of activities undertaken
-within the scope of a joint research agreement under
-U.S.C. 103(c)(2) and (3) must comply with 37
-CFR 1.321(d), which sets forth signature, waiver
-rights and enforceability requirements.
-The terminal disclaimer must include a provision:
-(1)waiving the right to separately enforce (a) any
-patent granted on that application or the patent being
-reexamined and (b) the reference patent, or any patent
-granted on the reference application which formed the
-basis for the double patenting; and
-(2)agreeing that any patent granted on that application
-or patent being reexamined shall be enforceable
-only for and during such period that said patent
-and the reference patent, or any patent granted on the
-reference application, which formed the basis for the
-double patenting are not separately enforced.
-A terminal disclaimer must state that the agreement
-is to run with any patent granted on the application
-being examined and is to be binding upon the grantee,
-its successors, or assigns.
-A statement of assignee interest in a terminal disclaimer
-that “A and B are the owners of 100% of the
-instant application...” is sufficient to satisfy the
-CFR 1.321(b)(3) requirement that a terminal disclaimer
-“state the present extent of applicant’s or
-assignee’s ownership interest in the patent to be
-granted.” Although the quoted statement does not
-identify what specific percentage is owned by A and
-what specific percentage is owned by B, the statement
-does provide consent to the terminal disclaimer by the
-entirety of the ownership of the application (A and B
-own all of the invention, regardless of the individual
-percentages they own).
- The appropriate one of form paragraphs 14.27.04to 14.27.08 (reproduced below) may be used to provide
-applicant or patent owner with an example of
-acceptable terminal disclaimer language. Additionally,
-copies of forms PTO/SB/25 and PTO/SB/26 (provided
-at the end of this Chapter) may be attached to
-the Office action to provide sample terminal disclaimers.
-Pursuant to the last sentence of 35 U.S.C. 253, “any
-patentee or applicant may disclaim or dedicate to the
-public... any terminal part of the term, of the patent
-granted or to be granted”. Accordingly, the disclaimer
-must be of a terminal portion of the term of the entire
-patent to be granted. A disclaimer of a terminal portion
-of the term of an individual claim, or individual
-claims will not be accepted. It is further noted that a
-disclaimer of the term of individual claims would not
-be appropriate since the claims of a pending application
-or proceeding are subject to cancelation, amendment,
-or renumbering. The statute does not provide
-for conditional disclaimers and accordingly, a proposed
-disclaimer which is made contingent on the
-allowance of certain claims cannot be accepted. The
-disclaimer should identify the disclaimant and his or
-her interest in the application and should specify the
-date when the disclaimer is to become effective.
-B.Effect of Disclaimers in Continuing Applications
-and in Reissues
-A terminal disclaimer filed to obviate a double patenting
-rejection is effective only with respect to the
-application identified in the disclaimer unless by its
-terms it extends to continuing applications. For example,
-a terminal disclaimer filed in a parent application
-normally has no effect on a continuing application
-claiming filing date benefits of the parent application
-under 35 U.S.C. 120. A terminal disclaimer filed in a
-parent application to obviate a double patenting rejection
-does, however, carry over to a continued prosecution
-application (CPA) filed under 37 CFR 1.53(d)
-(effective July 14, 2003, CPAs are only available in
-design applications). The terminal disclaimer filed in
-the parent application carries over because the CPA
-retains the same application number as the parent
-application, i.e., the application number to which the
-previously filed terminal disclaimer is directed. If
-applicant does not want the terminal disclaimer to
-carry over to the CPA, applicant must file a petition
-under 37 CFR 1.182, along with the required petition
-fee, requesting the terminal disclaimer filed in the parent
-application not be carried over to the CPA; see
-below “Withdrawing a Terminal Disclaimer” (paragraph
-“A. Before Issuance of Patent”). If applicant
-files a Request for Continued Examination (RCE) of
-an application under 37 CFR 1.114 (which can be
-filed on or after May 29, 2000 for an application filed
-on or after June 8, 1995), any terminal disclaimer
-present will continue to operate, since a new application
-has not been filed, but rather prosecution has
-been continued in the existing application. A petition
-under 37 CFR 1.182, along with the required petition
-fee, may be filed, if withdrawal of the terminal disclaimer
-is to be requested.
-Reissue applications: Where a terminal disclaimer
-was filed in an original application, a copy of that terminal
-disclaimer is not required be filed by applicant
-in the reissue.
-For reissue application files that are maintained in
-paper:
-The face of the file wrapper of the reissue application
-should, however, be marked by the examiner in
-order to indicate that a terminal disclaimer has been
-filed for the patent (and will be effective for the patent
-as it will be reissued). Further, a copy of the terminal
-disclaimer should be placed in the reissue application
-file by the Technology Center.
-For IFW reissue applications:
-The “Final SPRE Review” form will be filled in to
-indicate that a terminal disclaimer has been filed for
-the patent (and will be effective for the patent as it
-will be reissued). Further, a copy of the terminal disclaimer
-should be scanned into the reissue application
-file history by the Technology Center.
-C.Disclaimer Identifies the Wrong Target
-Application or Patent
-In some instances a terminal disclaimer filed to
-obviate an obviousness type double patenting rejection
-will identify the wrong target application or
-patent (i.e., an application or patent which is not the
-basis for the double patenting rejection). In these
-instances, a replacement terminal disclaimer identifying
-the correct target application or patent would be
-required by the examiner. Once a correct replacement
-terminal disclaimer is received, the next Office action
-should make it clear that “the second terminal disclaimer
-replaces the first terminal disclaimer, and the
-first terminal disclaimer is thus void.” A second terminal
-disclaimer fee should not be assessed/charged,
-since the first fee is applied to the second terminal disclaimer.
-D.Two or More Copending Applications
-If two (or more) pending applications are filed, in
-each of which a rejection of one claimed invention
-over the other on the ground of provisional obviousness-
-type double patenting (ODP) is proper, the ODP
-rejection will be made in each application. If the ODP
-rejection is the only rejection remaining in the earlier
-filed of the two pending applications, (but the later-
-filed application is rejectable on other grounds),
-the
-examiner should then withdraw that rejection
-and
-permit the earlier-filed application to issue as a
-patent without a terminal disclaimer. If the ODP rejection
-is the only rejection remaining in the later-filed
-application, (while the earlier-filed application is
-rejectable on other grounds), a terminal disclaimer
-must be required in the later-filed application, before
-the ODP rejection can be withdrawn.
-If the ODP rejections in both applications are the
-only rejections remaining in those applications, the
-examiner should then withdraw the ODP rejection in
-the earlier filed application thereby permitting that
-application to issue without need of a terminal disclaimer.
-A terminal disclaimer must be required in the
-later-filed application before the ODP rejection can be
-withdrawn and the application be permitted to issue.
-If both applications are filed on the same day, the
-examiner should determine which application claims
-the base invention and which application claims the
-improvement (added limitations). The ODP rejection
-in the base application can be withdrawn without a
-terminal disclaimer, while the ODP rejection in the
-improvement application cannot be withdrawn without
-a terminal disclaimer.
-Where there are three applications containing
-claims that conflict such that an ODP rejection is
-made in each application based upon the other two, it
-is not sufficient to file a terminal disclaimer in only
-one of the applications addressing the other two applications.
-Rather, an appropriate terminal disclaimer
-must be filed in at least two of the applications to link
-all three together. This is because a terminal disclaimer
-filed to obviate a double patenting rejection is
-effective only with respect to the application in which
-the terminal disclaimer is filed; it is not effective to
-link the other two applications to each other.
-VI.FORM PARAGRAPHS
-The following form paragraphs may be used to
-inform the applicant (or patent owner) of the status of
-a submitted terminal disclaimer.
-¶ 14.23 Terminal Disclaimer Proper
-The terminal disclaimer filed on [1] disclaiming the terminal
-portion of any patent granted on this application which would
-extend beyond the expiration date of [2] has been reviewed and is
-accepted. The terminal disclaimer has been recorded.
-Examiner Note:
-.In bracket 1, insert the date the terminal disclaimer was filed.
-.In bracket 2, list the Patent Number and/or Application Number
-(including series code and serial no.). Where an Application
-Number is listed, it must be preceded by the phrase --any patent
-granted on Application Number--.
-.If an assignment is submitted to support the terminal disclaimer,
-also use form paragraph 14.34 to suggest that the assignment
-be separately submitted for recording in the Office.
-.See MPEP § 1490 for discussion of requirements for a
-proper terminal disclaimer.
-.Use form paragraph 14.23.01 for reexamination proceedings.
-.For improper terminal disclaimers, see form paragraphs14.24et seq.
-¶ 14.23.01 Terminal Disclaimer Proper (Reexamination
-Only)
-The terminal disclaimer filed on [1] disclaiming the terminal
-portion of the patent being reexamined which would extend
-beyond the expiration date of [2] has been reviewed and is
-accepted. The terminal disclaimer has been recorded.
-Examiner Note:
-.In bracket 1, insert the date the terminal disclaimer was filed.
-.In bracket 2, list the Patent Number and/or Application Number
-(including series code and serial no.). Where an Application
-Number is listed, it must be preceded by the phrase --any patent
-granted on Application Number--.
-.If an assignment is submitted to support the terminal disclaimer,
-also use 14.34 to suggest that the assignment be separately
-submitted for recording in the Office.
-.See MPEP § 1490 for discussion of requirements for a
-proper terminal disclaimer.
-.For improper terminal disclaimers, see the form paragraphs
-which follow.
-¶ 14.24 Terminal Disclaimer Not Proper - Introductory
-Paragraph
-The terminal disclaimer filed on [1] disclaiming the terminal
-portion of any patent granted on this application which would
-extend beyond the expiration date of [2] has been reviewed and is
-NOT accepted.
-Examiner Note:
-.In bracket 1, insert the date the terminal disclaimer was filed.
-.In bracket 2, list the Patent Number and/or Application Number
-(including series code and serial no.). Where an Application
-Number is listed, it must be preceded by the phrase --any patent
-granted on Application Number--.
-.One or more of the appropriate form paragraphs 14.26 to
-.32 MUST follow this form paragraph to indicate why the terminal
-disclaimer is not accepted.
-.Form paragraph 14.33 includes the full text of 37 CFR 3.73and may be included in the Office action when deemed appropriate.
-.Form paragraph 14.35 may be used to inform applicant that
-an additional disclaimer fee will not be required for the submission
-of a replacement or supplemental terminal disclaimer.
-.Do not use in reexamination proceedings, use form paragraph
-.25 instead.
-¶ 14.25 Terminal Disclaimer Not Proper - Introductory
-Paragraph (Reexamination Only)
-The terminal disclaimer filed on [1] disclaiming the terminal
-portion of the patent being reexamined which would extend
-beyond the expiration date of [2] has been reviewed and is NOT
-accepted.
-Examiner Note:
-.In bracket 1, insert the date the terminal disclaimer was filed.
-.In bracket 2, list the Patent Number and/or the Application
-Number (including series code and serial no.). Where an Application
-Number is listed, it must be preceded by the phrase --any
-patent granted on Application Number--.
-.One or more of the appropriate form paragraphs 14.26 to
-.32 MUST follow this form paragraph to indicate why the terminal
-disclaimer is not accepted.
-.Form paragraph 14.33 includes the full text of 37 CFR 3.73and may be included in the Office action when deemed appropriate.
-.Form paragraph 14.35 may be used to inform applicant that
-an additional disclaimer fee will not be required for the submission
-of a replacement or supplemental terminal disclaimer.
-¶ 14.26 Does Not Comply With 37 CFR 1.321(b) and/or
-(c) “Sub-Heading” Only
-The terminal disclaimer does not comply with 37 CFR
-.321(b) and/or (c) because:
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 and followed by one or more of the appropriate
-form paragraphs 14.26.01 to 14.27.03.
-¶ 14.26.01 Extent of Interest Not Stated
-The person who has signed the disclaimer has not stated the
-extent of his/her interest, or the business entity’s interest, in the
-application/patent. See 37 CFR 1.321(b)(3).
-Examiner Note:
-This form paragraph MUST be preceded by form paragraph
-.24 or 14.25 AND 14.26.
-¶ 14.26.02 Directed to Particular Claim(s)
-It is directed to a particular claim or claims, which is not
-acceptable, since “the disclaimer must be of a terminal portion of
-the term of the entire [patent or] patent to be granted.” See MPEP
-§ 1490.
-Examiner Note:
-This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.26.
-¶ 14.26.03 Not Signed
-The terminal disclaimer was not signed.
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.26.
-¶ 14.26.04 Application/Patent Not Identified
-The application/patent being disclaimed has not been identified.
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.26.
-¶ 14.26.05 Application/Patent Improperly Identified
-The application/patent being disclaimed has been improperly
-identified since the number used to identify the [1] being disclaimed
-is incorrect. The correct number is [2].
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.26.
-.In bracket 1, insert --application-- or --patent--.
-.In bracket 2, insert the correct Application Number (including
-series code and serial no.) or the correct Patent Number being
-disclaimed.
-.A terminal disclaimer is acceptable if it includes the correct
-Patent Number or the correct Application Number or the serial
-number together with the proper filing date or the proper series
-code.
-¶ 14.26.06 Not Signed by All Owners
-It was not signed by all owners and, therefore, supplemental
-terminal disclaimers are required from the remaining owners.
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.26.
-¶ 14.26.07 No Disclaimer Fee Submitted
-The disclaimer fee of $ [1] in accordance with 37 CFR 1.20(d)
-has not been submitted, nor is there any authorization in the application
-file to charge a specified Deposit Account or credit card.
-Examiner Note:
-.In bracket 1, insert the fee for a disclaimer.
-.This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.26. If the disclaimer fee was paid for a
-terminal disclaimer which was not accepted, applicant does nothave to pay another disclaimer fee when submitting a replacement
-or supplemental terminal disclaimer, and this form paragraph
-should not be used.
-¶ 14.27.01 Lacks Clause of Enforceable Only During
-Period of Common Ownership
-It does not include a recitation that any patent granted shall be
-enforceable only for and during such period that said patent is
-commonly owned with the application(s) or patent(s) which
-formed the basis for the double patenting rejection. See 37 CFR
-.321(c)(3).
-Examiner Note:
-This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.26.
-¶ 14.27.011 Lacks 37 CFR 1.321(d) statement for joint
-research agreement under 35 U.S.C. 103(c)(2)&(3)
-It does not include the waiver and enforceability provisions of
-CFR 1.321(d). The terminal disclaimer must include a provision:
-(1) waiving the right to separately enforce (a) any patent
-granted on that application or the patent being reexamined and (b)
-the reference patent, or any patent granted on the reference application
-which formed the basis of the double patenting; and
-(2) agreeing that any patent granted on that application or
-patent being reexamined shall be enforceable only for and during
-such period that said patent and the reference patent, or any patent
-granted on the reference application, which formed the basis for
-the double patenting are not separately enforced.
-See 37 CFR 1.321(d)(3).
-Examiner Note:
-This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.26, and this paragraph should be followed
-by either form paragraph 14.27.07 or form paragraph 14.27.08.
-¶ 14.27.02 Fails To Disclaim Terminal Portion of Any
-Patent Granted On Subject Application
-It fails to disclaim the terminal portion of any patent granted on
-the subject application.
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraph
-.24 or 14.25 AND 14.26.
-.Use this form paragraph when the period disclaimed is not
-the correct period or when no period is specified at all.
-.When using this form paragraph, give an example of proper
-terminal disclaimer language using form paragraph 14.27.04 following
-this or the series of statements concerning the defective
-terminal disclaimer.
-¶ 14.27.03 Fails To Disclaim Terminal Portion of Subject
-Patent
-It fails to disclaim the terminal portion of the subject patent.
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraph
-.24 or 14.25 AND 14.26.
-.Use this form paragraph in a reissue application or reexamination
-proceeding when the period disclaimed is not the correct
-period or when no period is specified at all.
-¶ 14.27.04 Examples of Acceptable Terminal Disclaimer
-Language in Patent To Be Granted
-Examples of acceptable language for making the disclaimer of
-the terminal portion of any patent granted on the subject application
-follow:
-I. If a Provisional Obviousness-Type Double Patenting
-Rejection Over A Pending Application was made, use:
-The owner, _________________________________,
-of ____________ percent interest in the instant application
-hereby disclaims the terminal part of the statutory term of
-any patent granted on the instant application which would
-extend beyond the expiration date of the full statutory term
-of any patent granted on pending reference Application
-Number ________________, filed on _____________, as
-such term is defined in 35 U.S.C. 154 and 173, and as the
-term of any patent granted on said reference application
-may be shortened by any terminal disclaimer filed prior to
-the grant of any patent on the pending reference application.
-The owner hereby agrees that any patent so granted on
-the instant application shall be enforceable only for and during
-such period that it and any patent granted on the reference
-application are commonly owned. This agreement
-runs with any patent granted on the instant application and
-is binding upon the grantee, its successors or assigns.
-II. If an Obviousness-Type Double Patenting Rejection
-Over A Prior Patent was made, use:
-The owner, _________________________________,
-of ____________ percent interest in the instant application
-hereby disclaims the terminal part of the statutory term of
-any patent granted on the instant application which would
-extend beyond the expiration date of the full statutory term
-of reference patent No. ________________ as the term of
-said prior patent is defined in 35 U.S.C. 154 and 173 , and
-as the term of said reference patent is presently shortened
-by any terminal disclaimer. The owner hereby agrees that
-any patent so granted on the instant application shall be
-enforceable only for and during such period that it and the
-reference patent are commonly owned. This agreement
-runs with any patent granted on the instant application and
-is binding upon the grantee, its successors or assigns.
-Alternatively, Form PTO/SB/25 may be used for situation I,
-and Form PTO/SB/26 may be used for situation II; a copy of each
-form may be found at the end of MPEP § 1490.
-Examiner Note:
-.To provide examples of acceptable terminal disclaimer language
-in a patent (e.g., for a reexamination situation), other than
-for a terminal disclaimer based on activities undertaken within the
-scope of a joint research agreement, use form paragraph 14.27.06.
-.To provide examples of acceptable terminal disclaimer language
-for a terminal disclaimer based on activities undertaken
-within the scope of a joint research agreement, (a) use form paragraph
-.27.07 for making the disclaimer of the terminal portion
-of a patent to be granted on an application (generally, an application
-being examined), and (b) use form paragraph 14.27.08 for
-making the disclaimer of the terminal portion of an existing patent
-(e.g., for a reexamination situation).
-¶ 14.27.06 Examples of Acceptable Terminal Disclaimer
-Language in Patent (Reexamination Situation)
-Examples of acceptable language for making the disclaimer of
-the terminal portion of the patent being reexamined (or otherwise
-for an existing patent) follow:
-I. If a Provisional Obviousness-Type Double Patenting
-Rejection Over A Pending Application was made, or is
-otherwise believed to be applicable to the patent, use:
-The patent owner hereby disclaims the terminal part of
-the instant patent, which would extend beyond the expiration
-date of the full statutory term of any patent granted on
-pending Application Number ______________, filed on
-______________, as such term is defined in 35 U.S.C. 154and 173, and as the term of any patent granted on said application
-may be shortened by any terminal disclaimer filed
-prior to the grant of any patent on the pending application.
-The patent owner hereby agrees that the instant patent shall
-be enforceable only for and during such period that the
-instant patent and any patent granted on the above-listed
-pending application are commonly owned. This agreement
-is binding upon the patent owner, its successors, or assigns.
-II. If an Obviousness-Type Double Patenting Rejection
-Over A Prior Patent was made, or is otherwise believed
-to be applicable to the patent, use:
-The patent owner hereby disclaims the terminal part of
-the instant patent, which would extend beyond the expiration
-date of the full statutory term of reference patent No.
-______________ as the term of said reference patent is
-defined in 35 U.S.C. 154 and 173, and as the term of said
-reference patent is presently shortened by any terminal disclaimer.
-The patent owner hereby agrees that the instant
-patent shall be enforceable only for and during such period
-that the instant patent and the reference patent are commonly
-owned. This agreement is binding upon the patent
-owner, its successors, or assign.
-Examiner Note:
-.To provide examples of acceptable terminal disclaimer language
-in a patent to be granted on an application (generally, an
-application being examined), other than for a terminal disclaimer
-based on activities undertaken within the scope of a joint research
-agreement, use form paragraph 14.27.04.
-.To provide examples of acceptable terminal disclaimer language
-for a terminal disclaimer based on activities undertaken
-within the scope of a joint research agreement, (a) use form paragraph
-.27.07 for making the disclaimer of the terminal portion
-of a patent to be granted on an application (generally, an application
-being examined), and (b) use form paragraph 14.27.08 for
-making the disclaimer of the terminal portion of an existing patent
-(e.g., for a reexamination situation).
-¶ 14.27.07 Examples of Acceptable Terminal Disclaimer
-Language in Patent To Be Granted (activities undertaken
-within the scope of a joint research agreement)
-Examples of acceptable language for making the disclaimer of
-the terminal portion of any patent granted on the subject application
-follow:
-I. If a Provisional Obviousness-Type Double Patenting
-Rejection Over A Pending Application was made, use:
-The owner, __________________, of _______ percent
-interest in the instant application hereby disclaims the terminal
-part of the statutory term of any patent granted on the
-instant application which would extend beyond the expiration
-date of the full statutory term of any patent granted on
-pending reference Application Number ______________,
-filed on ______________, as such term is defined in 35
-U.S.C. 154 and 173, and as the term of any patent granted
-on said reference application may be shortened by any terminal
-disclaimer filed prior to the grant of any patent on the
-pending reference application.
-The owner of the instant application waives the right to
-separately enforce any patent granted on the instant application
-and any patent granted on the reference application.
-The owner of the instant application hereby agrees that any
-patent granted on the instant application and any patent
-granted on the reference application shall be enforceable
-only for and during such period that the instant application
-and the reference application are not separately enforced.
-The waiver, and this agreement, run with any patent granted
-on the instant application and any patent granted on the reference
-application, and are binding upon the owner of the
-instant application, its successors, or assigns.
-Owner, or attorney/agent of record, of the instant application:
-Signature:__________________________
-Printed/Typed name:_________________
-II. If an Obviousness-Type Double Patenting Rejection
-Over A Prior Patent was made, use:
-The owner, __________________, of _______ percent
-interest in the instant application hereby disclaims the terminal
-part of the statutory term of any patent granted on the
-instant application which would extend beyond the expiration
-date of the full statutory term of reference patent No.
-_________________, as the term of said prior patent is
-defined in 35 U.S.C. 154 and 173, and as the term of said
-reference patent is presently shortened by any terminal disclaimer.
-The owner of the instant application waives the right to
-separately enforce the reference patent and any patent
-granted on the instant application. The owner of the instant
-application hereby agrees that the reference patent and any
-patent granted on the instant application shall be enforce
-able only for and during such period that the reference
-patent and any patent granted on the instant application are
-not separately enforced. The waiver, and this agreement, run
-with any patent granted on the instant application and are
-binding upon the owner of the instant application, its successors,
-or assigns.
-Owner, or attorney/agent of record, of the instant application:
-Signature:___________________________
-Printed/Typed name:__________________
-Examiner Note:
-.To provide examples of acceptable terminal disclaimer language
-in a patent (e.g., for a reexamination situation) for a terminal
-disclaimer based on activities undertaken within the scope of a
-joint research agreement, use form paragraph 14.27.08.
-.To provide examples of acceptable terminal disclaimer language
-for a terminal disclaimer in a situation other than one based
-on activities undertaken within the scope of a joint research agreement,
-(a) use form paragraph 14.27.04 for making the disclaimer
-of the terminal portion of a patent to be granted on an application
-(generally, an application being examined), and (b) use form paragraph
-.27.06 for making the disclaimer of the terminal portion
-of an existing patent (e.g., for a reexamination situation).
-¶ 14.27.08 Examples of Acceptable Terminal Disclaimer
-Language in Patent (Reexamination Situation; activities
-undertaken within the scope of a joint research agreement)
-Examples of acceptable language for making the disclaimer of
-the terminal portion of the patent being reexamined (or otherwise
-for an existing patent) follow:
-I. If a provisional obviousness-type double patenting
-rejection over a Pending Application was made, or is otherwise
-believed to be applicable to the patent, use:
-The patent owner hereby disclaims the terminal part of
-the instant patent, which would extend beyond the expiration
-date of the full statutory term of any patent granted on
-pending Application Number ______________, filed on
-______________, as such term is defined in 35 U.S.C. 154and 173, and as the term of any patent granted on said application
-may be shortened by any terminal disclaimer filed
-prior to the grant of any patent on the pending application.
-The patent owner waives the right to separately enforce
-the instant patent and the above-listed pending application.
-The patent owner agrees that the instant patent and any
-patent granted on the above-listed pending application shall
-be enforceable only for and during such period that the
-instant patent and the patent granted on the above-listed
-pending application are not separately enforced. The
-waiver, and this agreement, run with any patent granted on
-the above-listed pending application, and are binding upon
-the patent owner, its successors, or assigns.
-Patent Owner, or attorney/agent of record:
-Signature:_________________________
-Printed/Typed name:________________
-II. If an obviousness-type double patenting rejection
-over a Reference Patent was made, or is otherwise believed
-to be applicable to the patent, use:
-The patent owner hereby disclaims the terminal part of
-the instant patent, which would extend beyond the expiration
-date of the full statutory term of reference patent No.
-_________________, as the term of said reference patentis defined in 35 U.S.C. 154 and 173, and as the term of said
-reference patent is presently shortened by any terminal disclaimer.
-The patent owner waives the right to separately enforce
-the instant patent and the reference patent. The patent
-owner agrees that the instant patent and the reference
-patent shall be enforceable only for and during such period
-that the instant patent and the reference patent are not separately
-enforced. The waiver, and this agreement, are binding
-upon the patent owner, its successors, or assigns.
-Patent Owner, or attorney/agent of record:
-Signature:_________________________
-Printed/Typed name:________________
-Examiner Note:
-.To provide examples of acceptable terminal disclaimer language
-in a patent to be granted on an application (generally, an
-application being examined) for a terminal disclaimer based on
-activities undertaken within the scope of a joint research agreement,
-use form paragraph 14.27.07.
-.To provide examples of acceptable terminal disclaimer language
-for a terminal disclaimer in a situation other than one based
-on activities undertaken within the scope of a joint research agreement,
-(a) use form paragraph 14.27.04 for making the disclaimer
-of the terminal portion of a patent to be granted on an application
-(generally, an application being examined), and (b) use form paragraph
-.27.06 for making the disclaimer of the terminal portion
-of an existing patent (e.g., for a reexamination situation).
-¶ 14.28 Failure To State Capacity To Sign
-The person who signed the terminal disclaimer has failed to
-state his/her capacity to sign for the corporation, or other business
-entity or organization, and he/she has not been established as
-being authorized to act on behalf of the assignee.
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraph
-.24 or 14.25 AND 14.26.
-¶ 14.29 Not Recognized as Officer of Assignee - “Sub-
-Heading” Only
-The person who signed the terminal disclaimer is not recognized
-as an officer of the assignee, and he/she has not been established
-as being authorized to act on behalf of the assignee. See
-MPEP § 324.
-Examiner Note:
-.This form paragraph is to be used when the person signing
-the terminal disclaimer is not an authorized officer as defined in
-MPEP § 324.
-.This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 and followed by form paragraphs 14.29.01 and/or
-.29.02 when appropriate. An attorney or agent of record is
-always authorized to sign the terminal disclaimer, even though
-there is no indication that he or she is an officer of the assignee.
-.Use form paragraph 14.29.02 to explain how an official,
-other than a recognized officer, may properly sign a terminal disclaimer.
-¶ 14.29.01 Attorney/Agent Not of Record
-An attorney or agent, not of record, is not authorized to sign a
-terminal disclaimer in the capacity as an attorney or agent acting
-in a representative capacity as provided by 37 CFR 1.34 (a). See
-CFR 1.321(b) and/or
-(c).
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.29.
-.An attorney or agent, however, may sign a terminal disclaimer
-provided he/she is an attorney or agent of record or is
-established as an appropriate official of the assignee. To suggest to
-the attorney or agent, not of record, how he/she may establish status
-as an appropriate official of the assignee to sign a terminal disclaimer,
-use form paragraph 14.29.02.
-¶ 14.29.02 Criteria To Accept Terminal Disclaimer When
-Signed by a Non-Recognized Officer
-It would be acceptable for a person, other than a recognized
-officer, to sign a terminal disclaimer, provided the record for the
-application includes a statement that the person is empowered to
-sign terminal disclaimers and/or act on behalf of the assignee.
-Accordingly, a new terminal disclaimer which includes the
-above empowerment statement will be considered to be signed by
-an appropriate official of the assignee. A separately filed paper
-referencing the previously filed terminal disclaimer and containing
-a proper empowerment statement would also be acceptable.
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraphs
-.24 or 14.25 AND 14.29.
-.When form paragraph 14.29 is used to indicate that a terminal
-disclaimer is denied because it was not signed by a recognized
-officer nor by an attorney or agent of record, this form paragraph
-should be used to point out one way to correct the problem.
-.While an indication of the person’s title is desirable, its inclusion
-is not mandatory when this option is employed.
-.A sample terminal disclaimer should be sent with the Office
-action.
-¶ 14.30 No Evidence of Chain of Title to Assignee -
-Application
-The assignee has not established its ownership interest in the
-application, in order to support the terminal disclaimer. There is
-no submission in the record establishing the ownership interest by
-either (a) providing documentary evidence of a chain of title from
-the original inventor(s) to the assignee and a statement affirming
-that the documentary evidence of the chain of title form the original
-owner to the assignee was, or concurrently is being, submitted
-for recordatoin pursuant to 37 CFR 3.11, or (b) specifying (by reel
-and frame number) where such documentary evidence is recorded
-in the Office (37 CFR 3.73(b)).
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraph
-.24 or 14.25.
-.Where an attorney or agent of record signs a terminal disclaimer,
-there is no need to provide a statement under 37 CFR
-.73(b). Thus, this form paragraph should not be used.
-.It should be noted that the documentary evidence or the specifying
-of reel and frame number may be found in the terminal disclaimer
-itself or in a separate paper.
-¶ 14.30.01 No Evidence of Chain of Title to Assignee -
-Patent
-The assignee has not established its ownership interest in the
-patent, in order to support the terminal disclaimer. There is no
-submission in the record establishing the ownership interest by
-either (a) providing documentary evidence of a chain of title from
-the original inventor(s) to the assignee and a statement affirming
-that the documentary evidence of the chain of title form the original
-owner to the assignee was, or concurrently is being, submitted
-for recordatoin pursuant to 37 CFR 3.11, or (b) specifying (by reel
-and frame number) where such documentary evidence is recorded
-in the Office (37 CFR 3.73(b)).
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraph
-.24 or 14.25.
-.Where an attorney or agent of record signs a terminal disclaimer,
-there is no need to provide a statement under 37 CFR
-.73(b). Thus, this form paragraph should not be used.
-.It should be noted that the documentary evidence or the specifying
-of reel and frame number may be found in the terminal disclaimer
-itself or in a separate paper in the application.
-¶ 14.30.02 Evidence of Chain of Title to Assignee -
-Submission Not Signed by Appropriate Party - Terminal
-Disclaimer Is Thus Not Entered
-The submission establishing the ownership interest of the
-assignee is informal. There is no indication of record that the party
-who signed the submission establishing the ownership interest is
-authorized to sign the submission (37 CFR 3.73(b)).
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraph
-.24 or 14.25.
-.Where an attorney or agent of record signs a terminal disclaimer,
-there is no need to provide any statement under 37 CFR
-.73(b). Thus, this form paragraph should not be used.
-.This form paragraph should be followed by one of form paragraphs
-.16.02 or 14.16.03. In rare situations where BOTH form
-paragraphs 14.16.02 and 14.16.03 do not apply and thus cannot be
-used, the examiner should instead follow this form paragraph with
-a detailed statement of why the there is no authorization to sign.
-.Use form paragraph 14.16.06 to point out one way to correct
-the problem.
-¶ 14.32 Application/Patent Which Forms Basis for
-Rejection Not Identified
-The application/patent which forms the basis for the double
-patenting rejection is not identified in the terminal disclaimer.
-Examiner Note:
-.This form paragraph MUST be preceded by form paragraph
-.24 or 14.25.
-.Use this form paragraph when no information is presented. If
-incorrect information is contained in the terminal disclaimer, use
-form paragraphs 14.26 and 14.26.05.
-¶ 14.33 37 CFR 3.73 - Establishing Right of Assignee To
-Take Action
-The following is a statement of 37 CFR 3.73:
-CFR 3.73 Establishing right of assignee to take action.
-(a) The inventor is presumed to be the owner of a patent
-application, and any patent that may issue therefrom, unless
-there is an assignment. The original applicant is presumed
-to be the owner of a trademark application or registration,
-unless there is an assignment.
-(b)(1) In order to request or take action in a patent or trademark
-matter, the assignee must establish its ownership of
-the patent or trademark property of paragraph (a) of this section
-to the satisfaction of the Director. The establishment of
-ownership by the assignee may be combined with the paper
-that requests or takes the action. Ownership is established
-by submitting to the Office a signed statement identifying
-the assignee, accompanied by either:
-(i) Documentary evidence of a chain of title from the original
-owner to the assignee (e.g., copy of an executed assignment).
-For trademark matters only, the documents submitted
-to establish ownership may be required to be recorded pursuant
-to § 3.11 in the assignment records of the Office as a
-condition to permitting the assignee to take action in a matter
-pending before the Office. For patent matters only, the
-submission of the documentary evidence must be accompanied
-by a statement affirming that the documentary evidence
-of the chain of title from the original owner to the
-assignee was, or concurrently is being, submitted for recordation
-pursuant to § 3.11; or
-(ii) A statement specifying where documentary evidence of
-a chain of title from the original owner to the assignee is
-recorded in the assignment records of the Office (e.g., reel
-and frame number).
-(2) The submission establishing ownership must show that
-the person signing the submission is a person authorized to
-act on behalf of the assignee by:
-(i) Including a statement that the person signing the submission
-is authorized to act on behalf of the assignee; or
-(ii) Being signed by a person having apparent authority to
-sign on behalf of the assignee, e.g., an officer of the
-assignee.
-(c) For patent matters only:
-(1) Establishment of ownership by the assignee must be
-submitted prior to, or at the same time as, the paper requesting
-or taking action is submitted.
-(2) If the submission under this section is by an assignee of
-less than the entire right, title and interest, such assignee
-must indicate the extent (by percentage) of its ownership
-interest, or the Office may refuse to accept the submission
-as an establishment of ownership.
-¶ 14.34 Requirement for Statement To Record Assignment
-Submitted With Terminal Disclaimer
-The assignment document filed on [1] is not acceptable as the
-documentary evidence required by 37 CFR 3.73. The submission
-of the documentary evidence was not accompanied by a statement
-affirming that the documentary evidence of the chain of title from
-the original owner to the assignee was, or concurrently is being,
-submitted for recordation pursuant to 37 CFR 3.11. See 37 CFR
-.11 and MPEP § 302.
-Examiner Note:
-.In bracket 1, insert the date the assignment document was
-filed.
-.This form paragraph should be used when an assignment
-document (an original, facsimile, or copy) is submitted to satisfy
-CFR 3.73(b) was not accompanied by a statement affirming
-that the documentary evidence of the chain of title from the original
-owner to the assignee was, or concurrently is being, submitted
-for recordation, and the documentary evidence has not been
-recorded among the assignment records of the Office.
-¶ 14.35 Disclaimer Fee Not Required Twice - Applicant
-It should be noted that applicant is not required to pay another
-disclaimer fee as set forth in 37 CFR 1.20(d) when submitting a
-replacement or supplemental terminal disclaimer.
-Examiner Note:
-.This form paragraph can be used to notify an applicant that
-another disclaimer fee will not be required when a replacement or
-supplemental terminal disclaimer is submitted.
-.Use form paragraph 14.35.01 for providing notification to
-patent owner, rather than an applicant.
-¶ 14.35.01 Disclaimer Fee Not Required Twice - Patent
-Owner
-It should be noted that patent owner is not required to pay
-another disclaimer fee as set forth in 37 CFR 1.20(d) when submitting
-a replacement or supplemental terminal disclaimer.
-Examiner Note:
-This form paragraph can be used to notify a patent owner that
-another disclaimer fee will not be required when a replacement or
-supplemental terminal disclaimer is submitted.
-¶ 14.36 Suggestion That “Applicant” Request a Refund
-Since the required fee for the terminal disclaimer was previously
-paid, applicant’s payment of an additional terminal disclaimer
-fee is not required. Applicant may request a refund of this
-additional terminal disclaimer fee by submitting a written request
-for a refund and a copy of this Office action to: Mail Stop 16,
-Director of the United States Patent and Trademark Office, P.O.
-Box 1450, Alexandria, Virginia 22313-1450.
-Examiner Note:
-.This form paragraph should be used to notify applicant that a
-refund can be obtained if another terminal disclaimer fee was paid
-when a replacement or supplemental terminal disclaimer was submitted.
-.Note - If applicant has authorized or requested a fee refund to
-be credited to a specific Deposit Account or credit card, then an
-appropriate credit should be made to that Deposit Account or
-credit card and this paragraph should NOT be used.
-.Use form paragraph 14.36.01 for providing notification to
-patent owner, rather than an applicant.
-¶ 14.36.01 Suggestion That “Patent Owner” Request a
-Refund
-Since the required fee for the terminal disclaimer was previously
-paid, patent owner’s payment of an additional terminal disclaimer
-fee is not required. Patent owner may request a refund of
-this additional terminal disclaimer fee by submitting a written
-request for a refund and a copy of this Office action to: Mail Stop
-, Director of the United States Patent and Trademark Office,
-P.O. Box 1450, Alexandria, Virginia 22313-1450.
-Examiner Note:
-.This form paragraph should be used to notify patent owner
-that a refund can be obtained if another terminal disclaimer fee
-was paid when a replacement or supplemental terminal disclaimer
-was submitted.
-.Note - If patent owner has authorized or requested a fee
-refund to be credited to a specific Deposit Account or credit card,
-then an appropriate credit should be made to that Deposit Account
-or credit card and this form paragraph should NOT be used.
-¶ 14.37 Samples of a Terminal Disclaimer Over a Pending
-Application and Assignee Statement Enclosed
-Enclosed with this Office action is a sample terminal disclaimer
-which is effective to overcome a provisional obviousness-
-type double patenting rejection over a pending application (37
-CFR 1.321(b) and (c)).
-Also enclosed is a sample Statement Under 37 CFR 3.73(b)
-(Form PTO/SB/96) which an assignee may use in order to ensure
-compliance with the rule. Part A of the Statement is used when
-there is a single assignment from the inventor(s). Part B of the
-Statement is used when there is a chain of title. The “Copies of
-assignments...” box should be checked when the assignment document(
-s) (set forth in part A or part B) is/are not recorded in the
-Office, and a copy of the assignment document(s) is/are attached.
-When the “Copies of assignments...” box is checked, either the
-part A box or the part B box, as appropriate, must be checked, and
-the “Reel_____, Frame_____” entries should be left blank. If the
-part B box is checked, and copies of assignments are not included,
-the “From:______ To:______” blank(s) must be filled in. This
-statement should be used the first time an assignee seeks to take
-action in an application under 37 CFR 3.73(b), e.g., when signing
-a terminal disclaimer or a power of attorney.
-Examiner Note:
-.This form paragraph can be used to provide applicant samples
-of a terminal disclaimer which contains the necessary clauses
-to overcome a provisional obviousness-type double patenting
-rejection over a pending application and a Statement to be signed
-by an assignee to ensure compliance with 37 CFR 3.73(b).
-.Note that the requirements for compliance with 37 CFR 3.73(b) have been made more liberal, such that certain specifics of the
-sample statement are no longer required. At present, in order to
-comply with 37
-CFR 3.73(b), the assignee’s ownership interest
-must be established by (a) 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
-.11, or (b) 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 (a) and (b) to establish
-ownership must be signed by a party authorized to act on
-behalf of the assignee.
-(See your Technology Center Paralegal or Special Program Examiner
-for copies of the sample terminal disclaimer and Statement
-Under 37 CFR 3.73(b) to enclose with the Office action. Alternatively,
-it is permissible to copy the sample terminal disclaimer
-found after MPEP § 1490 and the Sample Statement Under 37
-CFR 3.73(b) found after MPEP § 324.)
-¶ 14.38 Samples of a Terminal Disclaimer Over a Prior
-Patent and Assignee Statement Enclosed
-Enclosed with this Office action is a sample terminal disclaimer
-which is effective to overcome an obviousness-type double
-patenting rejection over a prior patent (37 CFR 1.321(b) and
-(c)).
-Also enclosed is a sample Statement Under 37 CFR 3.73(b)
-(Form PTO/SB/96) which an assignee may use in order to ensure
-compliance with the rule. Part A of the Statement is used when
-there is a single assignment from the inventor(s). Part B of the
-Statement is used when there is a chain of title. The “Copies of
-assignments...” box should be checked when the assignment doc
-ument(s) (set forth in part A or part B) is/are not recorded in the
-Office, and a copy of the assignment document(s) is/are attached.
-When the “Copies of assignments...” box is checked, either the
-part A box or the part B box, as appropriate, must be checked, and
-the “Reel_____, Frame_____” entries should be left blank. If the
-part B box is checked, and copies of assignments are not included,
-the “From:______ To:______” blank(s) must be filled in. This
-statement should be used the first time an assignee seeks to take
-action in an application under 37 CFR 3.73(b), e.g., when signing
-a terminal disclaimer or a power of attorney.
-Examiner Note:
-.This form paragraph can be used to provide applicant samples
-of a terminal disclaimer which contains the necessary clauses
-to overcome an obviousness-type double patenting rejection over
-a prior patent and a Statement to be signed by an assignee to
-ensure compliance with 37 CFR 3.73(b).
-.Note that the requirements for compliance with 37 CFR 3.73(b) have been made more liberal, such that certain specifics of the
-sample statement are no longer required. At present, in order to
-comply with 37
-CFR 3.73(b), the assignee’s ownership interest
-must be established by (a) 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
-.11, or (b) 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 (a) and (b) to establish
-ownership must be signed by a party authorized to act on
-behalf of the assignee.
-(See your Technology Center Paralegal or Special Program Examiner
-for copies of the sample terminal disclaimer and Statement
-Under 37 CFR 3.73(b) to enclose with the Office action. Alternatively,
-it is permissible to copy the sample terminal disclaimer
-found after MPEP § 1490 and the Sample Statement Under 37
-CFR 3.73(b) found after MPEP § 324.)
-¶ 14.39 Sample Assignee Statement Under 37 CFR 3.73(b)
-Enclosed
-Enclosed with this Office action is a sample Statement under
-CFR 3.73(b) which an assignee may use in order to ensure
-compliance with the Rule. Part A of the Statement is used when
-there is a single assignment from the inventor(s). Part B of the
-Statement is used when there is a chain of title. The “Copies of
-assignments...” box should be checked when the assignment document(
-s) (set forth in part A or part B) is/are not recorded in the
-Office, and a copy of the assignment document(s) is/are attached.
-When the “Copies of assignments...” box is checked, either the
-part A box or the part B box, as appropriate, must be checked, and
-the “Reel_____, Frame_____” entries should be left blank. If the
-part B box is checked, and copies of assignments are not included,
-the “From:______ To:______” blank(s) must be filled in. This
-statement should be used the first time an assignee seeks to take
-action in an application under 37 CFR 3.73(b).
-Examiner Note:
-.This form paragraph can be used to provide applicant a sample
-of a Statement to be signed by an assignee to ensure compliance
-with 37 CFR 3.73(b).
-.Note that the requirements for compliance with 37 CFR 3.73(b) have been made more liberal, such that certain specifics of the
-sample statement are no longer required. At present, in order to
-comply with 37
-CFR 3.73(b), the assignee’s ownership interest
-must be established by (a) 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
-.11, or (b) 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 (a) and (b) to establish
-ownership must be signed by a party authorized to act on
-behalf of the assignee.
-(See your Technology Center Paralegal or Special Program Examiner
-for a copy of the sample Statement Under 37 CFR 3.73(b) to
-enclose with the Office action. Alternatively, it is permissible to
-copy the sample Statement Under 37
-CFR 3.73(b) found after
-MPEP § 324.)
-VII.WITHDRAWING A RECORDED TER-
-MINAL DISCLAIMER
-If timely requested, a recorded terminal disclaimer
-may be withdrawn before the application in which it
-is filed issues as a patent, or in a reexamination proceeding,
-before the reexamination certificate issues.
-After a patent or reexamination certificate issues, it is
-unlikely that a recorded terminal disclaimer will be
-nullified.
-A. Before Issuance Of Patent
-While the filing and recordation of an unnecessary
-terminal disclaimer has been characterized as an
-“unhappy circumstance” in In re Jentoft, 392 F.2d
-, 157 USPQ 363 (CCPA 1968), there is no statutory
-prohibition against nullifying or otherwise canceling
-the effect of a recorded terminal disclaimer
-which was erroneously filed before the patent issues.
-Since the terminal disclaimer would not take effect
-until the patent is granted, and the public has not had
-the opportunity to rely on the terminal disclaimer,
-relief from this unhappy circumstance may be available
-by way of petition or by refiling the application
-(other than by refiling it as a CPA).
-Under appropriate circumstances, consistent with
-the orderly administration of the examination process,
-the nullification of a recorded terminal disclaimer
-may be addressed by filing a petition under 37 CFR
-.182 requesting withdrawal of the recorded terminal
-disclaimer. Petitions seeking to reopen the question of
-the propriety of the double patenting rejection that
-prompted the filing of the terminal disclaimer have
-not been favorably considered. The filing of a continuing
-application other than a CPA, while abandoning
-the application in which the terminal disclaimer
-has been filed, will typically nullify the effect of a terminal
-disclaimer. The filing of a Request for Continued
-Examination (RCE) of an application under
-CFR 1.114 will not nullify the effect of a terminal
-disclaimer, since a new application has not been filed,
-but rather prosecution has been continued in the existing
-application.
-B.After Issuance Of Patent
-The mechanisms to correct a patent — Certificate
-of Correction (35 U.S.C. 255), reissue (35 U.S.C.
-), and reexamination (35 U.S.C. 305) — are not
-available to withdraw or otherwise nullify the effect
-of a recorded terminal disclaimer. As a general principle,
-public policy does not favor the restoration to the
-patent owner of something that has been freely dedicated
-to the public, particularly where the public interest
-is not protected in some manner — e.g.,
-intervening rights in the case of a reissue patent. See,
-e.g., Altoona Publix Theatres v. American Tri-Ergon
-Corp., 294
-U.S. 477, 24 USPQ 308 (1935).
-Certificates of Correction (35 U.S.C. 255) are
-available for the correction of an applicant’s mistake.
-The scope of this remedial provision is limited in
-two
-ways — by the nature of the mistake for which
-correction is sought and the nature of the proposed
-correction. In re Arnott, 19 USPQ2d 1049 (Comm’r
-Pat. 1991). The nature of the mistake for which correction
-is sought is limited to those mistakes that are:
-(A)of a clerical nature,
-(B)of a typographical nature, or
-(C)of a minor character.
-The nature of the proposed correction is limited to
-those situations where the correction does not involve
-changes which would:
-(A)constitute new matter, or
-(B)require reexamination.
-A mistake in filing a terminal disclaimer does not
-fall within any of the categories of mistake for which
-a certificate of correction of applicant’s mistake is
-permissible, and any attempt to remove or nullify the
-effect of the terminal disclaimer would typically
-require reexamination of the circumstances under
-which it was filed.
-Although the remedial nature of reissue (35 U.S.C.
-) is well recognized, reissue is not available to correct
-all errors. It has been the Office position that reissue
-is not available to withdraw or otherwise nullify
-the effect of a terminal disclaimer recorded in an
-issued patent. First, the reissue statute only authorizes
-the Director of the USPTO to reissue a patent “for the
-unexpired part of the term of the original patent.”
-Since the
-granting of a reissue patent without the
-effect of
-a
-recorded terminal disclaimer would result
-in extending the term of the original patent, reissue
-under these circumstances would be contrary to the
-statute. Second, the principle against recapturing
-something that has been intentionally dedicated to the
-public dates back to Leggett v. Avery, 101 U.S. 256
-(1879). The attempt to restore that portion of the
-patent term that was dedicated to the public to secure
-the grant of the original patent would be contrary to
-this recapture principle. Finally, applicants have the
-opportunity to challenge the need for a terminal disclaimer
-during the prosecution of the application that
-issues as a patent. “Reissue is not a substitute for
-Patent Office appeal procedures.” Ball Corp. v. United
-States, 729
-F.2d 1429, 1435, 221 USPQ 289, 293
-(Fed. Cir. 1984). Where applicants did not challenge
-the propriety of the examiner’s obvious-type double
-patenting rejection, but filed a terminal disclaimer to
-avoid the rejection, the filing of the terminal disclaimer
-did not constitute error within the meaning of
-U.S.C. 251. Ex parte Anthony, 230 USPQ 467 (Bd.
-App. 1982), aff’d, No. 84-1357 (Fed. Cir. June 14,
-).
-Finally, the nullification of a recorded terminal disclaimer
-would not be appropriate in a reexamination
-proceeding. There is a prohibition (35 U.S.C. 305)
-against enlarging the scope of a claim during a reexamination
-proceeding. As noted by the Board in
-Anthony, supra, if a terminal disclaimer was nullified,
-“claims would be able to be sued upon for a longer
-period than would the claims of the original patent.
-Therefore, the vertical scope, as opposed to the horizontal
-scope (where the subject matter is enlarged),
-would be enlarged.”
-TERMINAL DISCLAIMER TO OBVIATE A PROVISIONAL DOUBLE PATENTING REJECTION OVER A PENDING “REFERENCE” APPLICATION
-PTO/SB/25(07-06)
-Approved for use through 09/30/2006. OMB 0651-0031
-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.
-TERMINAL DISCLAIMER TO OBVIATE A PROVISIONAL DOUBLE PATENTING
-REJECTION OVER A PENDING “REFERENCE” APPLICATIONDocket Number (Optional)
-In re Application of:
-Application No.:
-Filed:
-For:
-The owner, ________________________________________, of ________ percent interest in the instant application hereby disclaims,
-except as provided below, the terminal part of the statutory term of any patent granted on the instant application which would extend beyond
-the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________________, filed
-on ____________________, as such term is defined in 35 U.S.C. 154 and 173, and as the term of any patent granted on said referenceapplication may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The owner
-hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent
-granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is
-binding upon the grantee, its successors or assigns.
-In making the above disclaimer, the owner does not disclaim the terminal part of any patent granted on the instant application that would
-extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 and 173 of any patent granted on said referenceapplication, “as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the
-grant of any patent on the pending reference application,” in the event that: any such patent: granted on the pending reference application:
-expires for failure to pay a maintenance fee, is held unenforceable, is found invalid by a court of competent jurisdiction, is statutorily disclaimed
-in whole or terminally disclaimed under 37 CFR 1.321, has all claims canceled by a reexamination certificate, is reissued, or is in any manner
-terminated prior to the expiration of its full statutory term as shortened by any terminal disclaimer filed prior to its grant.
-Check either box 1 or 2 below, if appropriate.
-. For submissions on behalf of a business/organization (e.g., corporation, partnership, university, government agency,
-etc.), the undersigned is empowered to act on behalf of the business/organization.
-I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and
-belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so
-made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false
-statements may jeopardize the validity of the application or any patent issued thereon.
-. The undersigned is an attorney or agent of record. Reg. No. __________________
-________________________________________________________________________ _______________________
-Signature Date
-________________________________________________________________________________________________
-Typed or printed name
-_________________________________
-Telephone Number
-Terminal disclaimer fee under 37 CFR 1.20(d) is included.
-WARNING: Information on this form may become public. Credit card information should not
-be included on this form. Provide credit card information and authorizationon PTO-2038.
-Statement under 37 CFR 3.73(b) is required if terminal disclaimer is signed by the assignee (owner).
-Form PTO/SB/96 may be used for making this statement. See MPEP § 324.
-This collection of information is required by 37 CFR 1.321. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
-to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete,
-including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
-the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
-Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
-ADDRESS.SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
-If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
-Doc Code:
-Privacy Act Statment
-TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING REJECTION OVER A “PRIOR” PATENT
-PTO/SB/26(07-06)
-Approved for use through 09/30/2006. OMB 0651-0031
-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.
-TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING
-REJECTION OVER A “PRIOR” PATENTDocket Number (Optional)
-In re Application of:
-Application No.:
-Filed:
-For:
-The owner, _________________________________________, of ____________ percent interest in the instant application hereby disclaims,
-except as provided below, the terminal part of the statutory term of any patent granted on the instant application which would extend beyond
-the expiration date of the full statutory term prior patent No. __________________ as the term of said prior patent is defined in 35 U.S.C. 154
-and 173, and as the term of said prior patent is presently shortened by any terminal disclaimer. The owner hereby agrees that any patent so
-granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned. This
-agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
-In making the above disclaimer, the owner does not disclaim the terminal part of the term of any patent granted on the instant application that
-would extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 and 173 of the prior patent, “as the term of said prior
-patent is presently shortened by any terminal disclaimer,” in the event that said prior patent later:
-expires for failure to pay a maintenance fee;
-is held unenforceable;
-is found invalid by a court of competent jurisdiction;
-is statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321;
-has all claims canceled by a reexamination certificate;
-is reissued; or
-is in any manner terminated prior to the expiration of its full statutory term as presently shortened by any terminal disclaimer.
-Check either box 1 or 2 below, if appropriate.
-. For submissions on behalf of a business/organization (e.g., corporation, partnership, university, government agency,
-etc.), the undersigned is empowered to act on behalf of the business/organization.
-I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and
-belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so
-made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false
-statements may jeopardize the validity of the application or any patent issued thereon.
-. The undersigned is an attorney or agent of record. Reg. No.___________________
-_______________________________________________________________________ _____________________
-Signature Date
-______________________________________________________________________________________________
-Typed or printed name
-_______________________________
-Telephone Number
-Terminal disclaimer fee under 37 CFR 1.20(d) included.
-WARNING: Information on this form may become public. Credit card information should not
-be included on this form. Provide credit card information and authorization on PTO-2038.
-Statement under 37 CFR 3.73(b) is required if terminal disclaimer is signed by the assignee (owner).
-Form PTO/SB/96 may be used for making this certification. See MPEP § 324.
-This collection of information is required by 37 CFR 1.321. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
-to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete,
-including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments
-on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent
-and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
-ADDRESS.SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
-If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
-Doc Code:
-Privacy Act StatementrPrivacy Act Statement
-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:
-. 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.
-. 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.
-. 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.
-. 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).
-. 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.
-. 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)).
-. 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.
-. 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.
-. 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.

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MPEP 1400: Difference between revisions

Latest revision as of 22:42, May 31, 2020

1400 [No Text][edit | edit source]

1400.01Introduction[edit | edit source]

1401 Reissue[edit | edit source]

1402 Grounds for Filing[edit | edit source]

1403 Diligence in Filing[edit | edit source]

1404 Submission of Papers Where Reissue Patent Is in Litigation[edit | edit source]

1405 Reissue and Patent Term[edit | edit source]

1406 Citation and Consideration of References Cited in Original Patent[edit | edit source]

1410 Content of Reissue Application[edit | edit source]

1410.01 Reissue Applicant, Oath or Declaration, and Consent of all Assignees[edit | edit source]

1411 Form of Specification[edit | edit source]

1411.01 Certificate of Correction or Disclaimer in Original Patent[edit | edit source]

1411.02 New Matter[edit | edit source]

1412 Content of Claims[edit | edit source]

1413 Drawings[edit | edit source]

1414 Content of Reissue Oath/Declaration[edit | edit source]

1415 Reissue Application and Issue Fees[edit | edit source]

1416 No Physical Surrender of Original Patent[edit | edit source]

1417 Claim for Benefit Under 35 U.S.C. 119(a)-(d)[edit | edit source]

1418 Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known to be Material to Patentability[edit | edit source]

1430 Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette[edit | edit source]

1440 Examination of Reissue Application[edit | edit source]

1441 Two-Month Delay Period[edit | edit source]

1442 Special Status[edit | edit source]

1442.02 Concurrent Litigation[edit | edit source]

1442.03 Litigation Stayed[edit | edit source]

1442.04 Litigation Involving Patent[edit | edit source]

1442.05 Court Ordered Filing of Reissue Application[edit | edit source]

1443 Initial Examiner Review[edit | edit source]

1444 Review of Reissue Oath/Declaration[edit | edit source]

1445 Reissue Application Examined in Same Manner as Original Application[edit | edit source]

1448 Fraud, Inequitable Conduct, or Duty of Disclosure Issues[edit | edit source]

1449 Protest Filed in Reissue Where Patent Is in Interference[edit | edit source]

1449.01 Concurrent Office Proceedings[edit | edit source]

1450 Restriction and Election of Species Made in Reissue Application[edit | edit source]

1451 Divisional Reissue Applications;Continuation Reissue Applications Where the Parent is Pending[edit | edit source]

1452 Request for Continued Examination of Reissue Application[edit | edit source]

1453 Amendments to Reissue Applications[edit | edit source]

1454 Appeal Brief[edit | edit source]

1455 Allowance and Issue[edit | edit source]

1456 Reissue Review[edit | edit source]

1457 Design Reissue Applications and Patents[edit | edit source]

1460 Effect of Reissue[edit | edit source]

1470 Public Access of Reissue Applications[edit | edit source]

1480 Certificates of Correction — Office Mistake[edit | edit source]

1480.01 Expedited Issuance of Certificates of Correction - Error Attributable to Office[edit | edit source]

1481 Certificates of Correction - Applicant’s Mistake[edit | edit source]

1481.01 Correction of Assignees’ Names[edit | edit source]

1481.02 Correction of Inventors’ Names[edit | edit source]

1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits[edit | edit source]

1485 Handling of Request for Certificates of Correction[edit | edit source]

1490 Disclaimers[edit | edit source]

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