37 CFR § 1.173 — Reissue specification, drawings, and (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.173 Reissue specification, drawings, and
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.173, including 145 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The reissue specification process requires patent applicants to submit a comprehensive documentation package that fully reproduces and potentially corrects an existing patent's specification, claims, and drawings.
What this section covers
- Complete documentation requirements for filing a reissue application, including entire patent specification, claims, and drawings.
- Mandatory components that must be included in a reissue application submission.
Key obligations
- Submit a complete reissue oath or declaration that complies with specific USPTO regulatory standards.
- Include any previous disclaimers, correction certificates, or reexamination certificates with the reissue application.
- Prohibit the introduction of new matter into the reissue specification that was not present in the original patent.
Practice notes
- Review and ensure all drawings are accurately reproduced and consistent with the original patent.
- Meticulously document and justify any amendments or corrections being sought in the reissue application.
Official MPEP § 1.173 — Reissue specification, drawings, and
Source: USPTOLast Modified: 10/30/2024 08:50:22
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.
- (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, “Large Tables” (§
1.58(c)
), a “Computer Program
Listing Appendix” (§
1.96(c)
), a “Sequence Listing” (§
1.821(c)
), or a
“Sequence Listing XML” (§
1.831(a)
).
- (i) Changes to the specification, other than to the claims, “Large Tables” (§ 1.58(c) ), a “Computer Program Listing Appendix” (§ 1.96(c) ), a “Sequence Listing” (§ 1.821(c) ), or a “Sequence Listing XML” (§ 1.831(a) ), 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 where any added or rewritten paragraph is located must be identified.
- (ii) Changes to “Large Tables,” a “Computer Program Listing Appendix,” a “Sequence Listing,” or a “Sequence Listing XML” must be made in accordance with § 1.58(g) for “Large Tables,” § 1.96(c)(5) for a “Computer Program Listing Appendix,” § 1.825 for a “Sequence Listing,” and § 1.835 for a “Sequence Listing XML.”
- (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.
- (1)
Specification other than the
claims, “Large Tables” (§
1.58(c)
), a “Computer Program
Listing Appendix” (§
1.96(c)
), a “Sequence Listing” (§
1.821(c)
), or a
“Sequence Listing XML” (§
1.831(a)
).
- (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 that are made to the
specification, including the claims but excluding “Large Tables” (§
1.58(c)
), a “Computer
Program Listing Appendix” (§
1.96(c)
), a “Sequence Listing” (§
1.821(c)
), and a “Sequence
Listing XML” (§
1.831(a)
) 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.
- (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.
[Revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(3) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (b) introductory text revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; paras. (b)(1) and (d) revised, 86 FR 57035, Oct. 14, 2021, effective Nov. 15, 2021; paras. (b)(1) and (d) introductory text revised, 87 FR 30806, May 20, 2022, effective July 1, 2022]
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