When should a rejection based on lack of diligence be made in reissue applications?
According to MPEP 1403, rejections based on lack of diligence should generally not be made by patent examiners, especially for reissue applications filed within two years of the original patent grant. The MPEP states:
“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.”
However, it’s important to note that this doesn’t apply to broadening reissue applications filed outside the two-year statutory period. In such cases, rejection under 35 U.S.C. 251 is appropriate. The MPEP clarifies:
“While examiners should not make rejections based on lack of diligence (which does not include rejections under 35 U.S.C. 251 for a broadening reissue that is impermissibly filed outside of the two year time period set in 35 U.S.C. 251), courts have looked to see if a reissue applicant was diligent in correcting the error(s) in the patent.”
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