Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (19)
A reissue application is necessary to perfect a foreign priority claim in the following situations:
- When the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
- When the requirements of 37 CFR 1.55 are not met.
- When the correction sought would require further examination.
The MPEP provides an example: Further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, the filing of a reissue application with a petition for an unintentionally delayed priority claim would be required.
To learn more:
There is no specific time limit for filing a reissue application. According to MPEP 201.05, ‘A reissue application can be filed at any time during the enforceability of a patent.’ This means that as long as the original patent is still enforceable, a reissue application can be filed.
However, it’s important to note that there are limitations on what can be claimed in a reissue application based on when it’s filed:
- If filed within two years from the grant of the original patent, both narrowing and broadening reissue claims are permitted.
- If filed more than two years from the grant of the original patent, only narrowing reissue claims are allowed.
The MPEP states: ‘A broadening reissue application filed on or after September 16, 2012 must be applied for by all of the inventors (or alternatively the assignee of the entire interest), and the application must be filed within two years from the grant of the original patent.’
To learn more:
When filing a reissue application to correct a priority claim, it’s crucial to adhere to the time limits set by law. The MPEP specifies:
‘The reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).’
This means that the reissue application must typically be filed within 12 months from the filing date of the foreign application. However, there may be exceptions or additional considerations depending on specific circumstances. It’s advisable to consult with a patent attorney or the USPTO directly for guidance on your particular situation.
What is the procedure for correcting or adding a benefit claim in a design application?
The procedure for correcting or adding a benefit claim in a design application differs from that of utility applications. According to MPEP 211.02(a):
“For design applications, an application may be amended to claim priority to or the benefit of a prior-filed application after the application issues as a patent by filing a reissue application. Note that the copendency requirement of 35 U.S.C. 120 must still be met.”
This means that for design applications:
- Corrections or additions to benefit claims cannot be made after the application has issued as a patent through a Certificate of Correction.
- The only way to correct or add a benefit claim after issuance is by filing a reissue application.
- The copendency requirement under 35 U.S.C. 120 must still be satisfied, meaning the applications must have been co-pending at some point.
It’s important to note that this procedure is specific to design applications and differs from the process for utility applications.
To learn more:
Adding a benefit claim after the time period required by 37 CFR 1.78 requires a petition and the petition fee. As stated in MPEP ยง 211.04:
Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted.
In addition to the petition and ADS or amendment, you may need to file one of the following, depending on the status of your application:
- A request for continued examination (RCE) under 37 CFR 1.114, if the application is under final rejection or has been allowed.
- A reissue application or a request for a certificate of correction under 37 CFR 1.323, if the application has already issued as a patent.
It’s important to note that when adding a benefit claim after filing, you cannot include an incorporation by reference statement of the prior application unless such a statement was present upon the initial filing of the application.
To learn more:
A reissue application is a type of patent application used to correct defects in an existing, unexpired patent. According to MPEP 201.05, “A reissue application is an application for a patent to take the place of an unexpired patent that is defective.” This process allows patent holders to address errors or omissions in their original patent, ensuring that their intellectual property rights are properly protected.
To learn more:
A reissue application is a type of patent application used to correct errors in an already issued patent. According to MPEP 201:
“An application for reissue of a patent is an application for a new patent to correct an error in an existing patent.”
Reissue applications are filed when the original patent is wholly or partly inoperative or invalid due to defective specifications, drawings, or by claiming more or less than the patentee had the right to claim. They must be filed by the original patent owner and are subject to specific requirements outlined in 35 U.S.C. 251.
For more information on Patent correction, visit: Patent correction.
For more information on Patent errors, visit: Patent errors.
For more information on reissue application, visit: reissue application.
Reissue applications are used to correct errors in already issued patents. According to MPEP 201:
‘An application for reissue is made by the patentee when the 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.’
Key points about reissue applications:
- They are filed under 35 U.S.C. 251.
- They can be used to broaden or narrow the scope of patent claims.
- There are time limitations for broadening reissues (within two years from the grant of the original patent).
For more information on Patent correction, visit: Patent correction.
For more information on Patent errors, visit: Patent errors.
For more information on reissue application, visit: reissue application.
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:
- If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
- In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
- This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.
The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.
This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.
A reissue application differs from a regular patent application in several key ways:
- Purpose: A reissue application is specifically for correcting defects in an existing, unexpired patent, while a regular application is for obtaining a new patent.
- Timing: Reissue applications can only be filed for unexpired patents, whereas regular applications are filed before a patent is granted.
- Scope: Reissue applications are limited to the invention disclosed in the original patent, with some exceptions for broadening reissues.
- Examination process: The examination of a reissue application focuses on the changes made to correct the defect, in addition to a review of the entire patent.
As stated in MPEP 201.05, “A reissue application is an application for a patent to take the place of an unexpired patent that is defective.” This fundamental difference sets reissue applications apart from regular patent applications. For more detailed information on the reissue process, refer to MPEP Chapter 1400.
To learn more:
A reissue application does not affect the original patent’s term. According to MPEP 201.05, ‘The reissue application is a continuation of the original application and the reissue patent will expire at the same time that the original patent would have expired.’
This means that:
- The term of the reissue patent remains the same as the original patent.
- No additional patent term is granted through the reissue process.
- The expiration date of the reissue patent will be identical to that of the original patent.
It’s important to note that while a reissue doesn’t extend the patent term, it can potentially strengthen or broaden the patent’s claims within the original term, subject to certain limitations such as the two-year rule for broadening reissues.
The patent term is governed by 35 U.S.C. 254, which states: ‘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.’
To learn more:
How can I request a corrected patent with a perfected foreign priority claim?
To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:
- File a reissue application under 35 U.S.C. 251.
- Include a petition for an expedited examination of the reissue application.
- Pay the required fees for both the reissue application and the petition.
- Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.
As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.
To correct the priority claim in an issued patent, you can file a reissue application under 35 U.S.C. 251. The MPEP states:
‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’
This process allows you to amend the specification to include the required reference or correct the priority claim itself. However, it’s important to note that the reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).
Can I perfect a foreign priority claim after my patent has been issued?
No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:
“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”
This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.
Yes, you can perfect a claim for foreign priority after your patent has been issued. There are two main methods:
- Certificate of Correction: This is generally the preferred method if the requirements of 37 CFR 1.55 are met and no further examination is required. As stated in the MPEP,
Except in certain situations, a certificate of correction can generally be used to perfect a claim to foreign priority where a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is filed with a request for a certificate of correction in an issued patent.
- Reissue Application: This method is necessary in situations where further examination would be required or when the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
To learn more:
Yes, it is possible to add a priority claim to a patent after it has been issued, but the process requires filing a reissue application. The MPEP states:
‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’
To add a priority claim, you would need to:
- File a reissue application under 35 U.S.C. 251
- Amend the specification to include the required reference
- Ensure the reissue application is filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f)
It’s important to note that adding a priority claim may affect the patent’s term and could potentially impact its validity if prior art emerges between the new priority date and the original filing date.
Yes, a reissue application can be used to correct inventorship. The MPEP 201.05 states: ‘A reissue application may also be filed to correct inventorship in the patent. The reissue oath or declaration must state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of the incorrect inventorship.’
This means that if the original patent listed incorrect inventors or omitted inventors who should have been included, a reissue application can be filed to rectify this error. However, it’s important to note that:
- The error in inventorship must have been made without deceptive intent.
- The reissue application must be accompanied by a proper reissue oath or declaration explaining the error.
- All current patent owners must consent to the reissue application.
Correcting inventorship through a reissue application is governed by 35 U.S.C. 251 and the procedures outlined in the MPEP.
To learn more:
Yes, a petition for an unintentionally delayed priority claim can be filed after a patent issues, but it requires a different procedure. According to MPEP 214.02:
For applications that have issued as patents, a petition filed under 37 CFR 1.55(e) or 1.78(c) and (e) may be filed as a reissue application, a request for certificate of correction under 37 CFR 1.323, or a petition under 37 CFR 1.78(a) and (b) or 1.55(g), as appropriate.
This means that after a patent has issued, the options for correcting a priority claim are:
- Filing a reissue application
- Requesting a certificate of correction
- Filing a petition under specific regulations
The appropriate method depends on the specific circumstances and the type of priority claim being corrected. It’s important to note that each of these options has its own requirements and limitations. For example, a certificate of correction is generally only available for minor errors that are clerical or typographical in nature.
Given the complexity of post-issuance corrections, it’s advisable to consult with a patent attorney or agent to determine the best course of action for your specific situation.
To learn more:
No, a delayed benefit claim cannot be accepted after the patent has issued. The MPEP 211.04 clearly states:
“A petition under 37 CFR 1.78 to accept an unintentionally delayed claim for the benefit of a prior-filed application will not be granted in an issued patent.”
This means that once a patent has been granted, it is no longer possible to add or correct benefit claims through the petition process. The opportunity to make such changes ends when the patent issues.
If an applicant discovers after issuance that a benefit claim was not properly made or was omitted, they may have limited options:
- Consider filing a reissue application to correct the error, if it qualifies as an error correctable by reissue.
- In some cases, a certificate of correction might be appropriate, but this is generally limited to typographical or clerical errors.
It’s crucial for applicants to ensure all desired benefit claims are properly made and recorded before the patent issues to avoid complications and potential loss of priority rights.
To learn more:
MPEP 201 - Types of Applications (2)
A reissue application is a type of patent application used to correct errors in an already issued patent. According to MPEP 201:
“An application for reissue of a patent is an application for a new patent to correct an error in an existing patent.”
Reissue applications are filed when the original patent is wholly or partly inoperative or invalid due to defective specifications, drawings, or by claiming more or less than the patentee had the right to claim. They must be filed by the original patent owner and are subject to specific requirements outlined in 35 U.S.C. 251.
For more information on Patent correction, visit: Patent correction.
For more information on Patent errors, visit: Patent errors.
For more information on reissue application, visit: reissue application.
Reissue applications are used to correct errors in already issued patents. According to MPEP 201:
‘An application for reissue is made by the patentee when the 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.’
Key points about reissue applications:
- They are filed under 35 U.S.C. 251.
- They can be used to broaden or narrow the scope of patent claims.
- There are time limitations for broadening reissues (within two years from the grant of the original patent).
For more information on Patent correction, visit: Patent correction.
For more information on Patent errors, visit: Patent errors.
For more information on reissue application, visit: reissue application.
MPEP 216 - Entitlement to Priority (6)
When filing a reissue application to correct a priority claim, it’s crucial to adhere to the time limits set by law. The MPEP specifies:
‘The reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).’
This means that the reissue application must typically be filed within 12 months from the filing date of the foreign application. However, there may be exceptions or additional considerations depending on specific circumstances. It’s advisable to consult with a patent attorney or the USPTO directly for guidance on your particular situation.
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:
- If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
- In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
- This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.
The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.
This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.
How can I request a corrected patent with a perfected foreign priority claim?
To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:
- File a reissue application under 35 U.S.C. 251.
- Include a petition for an expedited examination of the reissue application.
- Pay the required fees for both the reissue application and the petition.
- Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.
As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.
To correct the priority claim in an issued patent, you can file a reissue application under 35 U.S.C. 251. The MPEP states:
‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’
This process allows you to amend the specification to include the required reference or correct the priority claim itself. However, it’s important to note that the reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).
Can I perfect a foreign priority claim after my patent has been issued?
No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:
“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”
This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.
Yes, it is possible to add a priority claim to a patent after it has been issued, but the process requires filing a reissue application. The MPEP states:
‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’
To add a priority claim, you would need to:
- File a reissue application under 35 U.S.C. 251
- Amend the specification to include the required reference
- Ensure the reissue application is filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f)
It’s important to note that adding a priority claim may affect the patent’s term and could potentially impact its validity if prior art emerges between the new priority date and the original filing date.
MPEP 500 - Receipt and Handling of Mail and Papers (1)
USPTO employees are generally not permitted to initiate email communications with patent applicants unless there is a written authorization on record. According to MPEP 502.03:
‘USPTO employees are NOT permitted to initiate communications with applicants via Internet email unless there is a written authorization of record in the patent application by the applicant.’
However, if an applicant has provided written authorization for Internet communications:
‘USPTO employees may respond to Internet email and initiate communications with applicants via Internet email.’
It’s important to note that this policy applies to regular patent applications. For reissue applications and reexamination proceedings, which are open to public inspection, additional restrictions apply:
‘USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet email unless written authorization is given by the applicant or patentee.’
To learn more:
Patent Law (22)
A reissue application is necessary to perfect a foreign priority claim in the following situations:
- When the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
- When the requirements of 37 CFR 1.55 are not met.
- When the correction sought would require further examination.
The MPEP provides an example: Further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, the filing of a reissue application with a petition for an unintentionally delayed priority claim would be required.
To learn more:
There is no specific time limit for filing a reissue application. According to MPEP 201.05, ‘A reissue application can be filed at any time during the enforceability of a patent.’ This means that as long as the original patent is still enforceable, a reissue application can be filed.
However, it’s important to note that there are limitations on what can be claimed in a reissue application based on when it’s filed:
- If filed within two years from the grant of the original patent, both narrowing and broadening reissue claims are permitted.
- If filed more than two years from the grant of the original patent, only narrowing reissue claims are allowed.
The MPEP states: ‘A broadening reissue application filed on or after September 16, 2012 must be applied for by all of the inventors (or alternatively the assignee of the entire interest), and the application must be filed within two years from the grant of the original patent.’
To learn more:
When filing a reissue application to correct a priority claim, it’s crucial to adhere to the time limits set by law. The MPEP specifies:
‘The reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).’
This means that the reissue application must typically be filed within 12 months from the filing date of the foreign application. However, there may be exceptions or additional considerations depending on specific circumstances. It’s advisable to consult with a patent attorney or the USPTO directly for guidance on your particular situation.
What is the procedure for correcting or adding a benefit claim in a design application?
The procedure for correcting or adding a benefit claim in a design application differs from that of utility applications. According to MPEP 211.02(a):
“For design applications, an application may be amended to claim priority to or the benefit of a prior-filed application after the application issues as a patent by filing a reissue application. Note that the copendency requirement of 35 U.S.C. 120 must still be met.”
This means that for design applications:
- Corrections or additions to benefit claims cannot be made after the application has issued as a patent through a Certificate of Correction.
- The only way to correct or add a benefit claim after issuance is by filing a reissue application.
- The copendency requirement under 35 U.S.C. 120 must still be satisfied, meaning the applications must have been co-pending at some point.
It’s important to note that this procedure is specific to design applications and differs from the process for utility applications.
To learn more:
Adding a benefit claim after the time period required by 37 CFR 1.78 requires a petition and the petition fee. As stated in MPEP ยง 211.04:
Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted.
In addition to the petition and ADS or amendment, you may need to file one of the following, depending on the status of your application:
- A request for continued examination (RCE) under 37 CFR 1.114, if the application is under final rejection or has been allowed.
- A reissue application or a request for a certificate of correction under 37 CFR 1.323, if the application has already issued as a patent.
It’s important to note that when adding a benefit claim after filing, you cannot include an incorporation by reference statement of the prior application unless such a statement was present upon the initial filing of the application.
To learn more:
A reissue application is a type of patent application used to correct defects in an existing, unexpired patent. According to MPEP 201.05, “A reissue application is an application for a patent to take the place of an unexpired patent that is defective.” This process allows patent holders to address errors or omissions in their original patent, ensuring that their intellectual property rights are properly protected.
To learn more:
A reissue application is a type of patent application used to correct errors in an already issued patent. According to MPEP 201:
“An application for reissue of a patent is an application for a new patent to correct an error in an existing patent.”
Reissue applications are filed when the original patent is wholly or partly inoperative or invalid due to defective specifications, drawings, or by claiming more or less than the patentee had the right to claim. They must be filed by the original patent owner and are subject to specific requirements outlined in 35 U.S.C. 251.
For more information on Patent correction, visit: Patent correction.
For more information on Patent errors, visit: Patent errors.
For more information on reissue application, visit: reissue application.
What are the requirements for an oath or declaration in a reissue application?
In a reissue application, the oath or declaration must comply with specific requirements outlined in MPEP 1414. The MPEP states:
“The reissue oath/declaration must include a statement that the applicant believes the original patent to be wholly or partly inoperative or invalid.”
Additionally, the oath or declaration must:
- Identify at least one error being relied upon as the basis for reissue
- State that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant
- Be signed by the inventor(s) or the assignee of the entire interest
It’s important to note that the requirements for a reissue oath or declaration are more stringent than those for a regular patent application due to the nature of reissue proceedings.
To learn more:
Reissue applications are used to correct errors in already issued patents. According to MPEP 201:
‘An application for reissue is made by the patentee when the 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.’
Key points about reissue applications:
- They are filed under 35 U.S.C. 251.
- They can be used to broaden or narrow the scope of patent claims.
- There are time limitations for broadening reissues (within two years from the grant of the original patent).
For more information on Patent correction, visit: Patent correction.
For more information on Patent errors, visit: Patent errors.
For more information on reissue application, visit: reissue application.
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:
- If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
- In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
- This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.
The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.
This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.
A reissue application differs from a regular patent application in several key ways:
- Purpose: A reissue application is specifically for correcting defects in an existing, unexpired patent, while a regular application is for obtaining a new patent.
- Timing: Reissue applications can only be filed for unexpired patents, whereas regular applications are filed before a patent is granted.
- Scope: Reissue applications are limited to the invention disclosed in the original patent, with some exceptions for broadening reissues.
- Examination process: The examination of a reissue application focuses on the changes made to correct the defect, in addition to a review of the entire patent.
As stated in MPEP 201.05, “A reissue application is an application for a patent to take the place of an unexpired patent that is defective.” This fundamental difference sets reissue applications apart from regular patent applications. For more detailed information on the reissue process, refer to MPEP Chapter 1400.
To learn more:
A reissue application does not affect the original patent’s term. According to MPEP 201.05, ‘The reissue application is a continuation of the original application and the reissue patent will expire at the same time that the original patent would have expired.’
This means that:
- The term of the reissue patent remains the same as the original patent.
- No additional patent term is granted through the reissue process.
- The expiration date of the reissue patent will be identical to that of the original patent.
It’s important to note that while a reissue doesn’t extend the patent term, it can potentially strengthen or broaden the patent’s claims within the original term, subject to certain limitations such as the two-year rule for broadening reissues.
The patent term is governed by 35 U.S.C. 254, which states: ‘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.’
To learn more:
How can I request a corrected patent with a perfected foreign priority claim?
To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:
- File a reissue application under 35 U.S.C. 251.
- Include a petition for an expedited examination of the reissue application.
- Pay the required fees for both the reissue application and the petition.
- Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.
As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.
To correct the priority claim in an issued patent, you can file a reissue application under 35 U.S.C. 251. The MPEP states:
‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’
This process allows you to amend the specification to include the required reference or correct the priority claim itself. However, it’s important to note that the reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).
Can I perfect a foreign priority claim after my patent has been issued?
No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:
“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”
This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.
Yes, you can perfect a claim for foreign priority after your patent has been issued. There are two main methods:
- Certificate of Correction: This is generally the preferred method if the requirements of 37 CFR 1.55 are met and no further examination is required. As stated in the MPEP,
Except in certain situations, a certificate of correction can generally be used to perfect a claim to foreign priority where a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is filed with a request for a certificate of correction in an issued patent.
- Reissue Application: This method is necessary in situations where further examination would be required or when the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
To learn more:
Yes, it is possible to add a priority claim to a patent after it has been issued, but the process requires filing a reissue application. The MPEP states:
‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’
To add a priority claim, you would need to:
- File a reissue application under 35 U.S.C. 251
- Amend the specification to include the required reference
- Ensure the reissue application is filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f)
It’s important to note that adding a priority claim may affect the patent’s term and could potentially impact its validity if prior art emerges between the new priority date and the original filing date.
Yes, a reissue application can be used to correct inventorship. The MPEP 201.05 states: ‘A reissue application may also be filed to correct inventorship in the patent. The reissue oath or declaration must state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of the incorrect inventorship.’
This means that if the original patent listed incorrect inventors or omitted inventors who should have been included, a reissue application can be filed to rectify this error. However, it’s important to note that:
- The error in inventorship must have been made without deceptive intent.
- The reissue application must be accompanied by a proper reissue oath or declaration explaining the error.
- All current patent owners must consent to the reissue application.
Correcting inventorship through a reissue application is governed by 35 U.S.C. 251 and the procedures outlined in the MPEP.
To learn more:
Yes, a petition for an unintentionally delayed priority claim can be filed after a patent issues, but it requires a different procedure. According to MPEP 214.02:
For applications that have issued as patents, a petition filed under 37 CFR 1.55(e) or 1.78(c) and (e) may be filed as a reissue application, a request for certificate of correction under 37 CFR 1.323, or a petition under 37 CFR 1.78(a) and (b) or 1.55(g), as appropriate.
This means that after a patent has issued, the options for correcting a priority claim are:
- Filing a reissue application
- Requesting a certificate of correction
- Filing a petition under specific regulations
The appropriate method depends on the specific circumstances and the type of priority claim being corrected. It’s important to note that each of these options has its own requirements and limitations. For example, a certificate of correction is generally only available for minor errors that are clerical or typographical in nature.
Given the complexity of post-issuance corrections, it’s advisable to consult with a patent attorney or agent to determine the best course of action for your specific situation.
To learn more:
No, a delayed benefit claim cannot be accepted after the patent has issued. The MPEP 211.04 clearly states:
“A petition under 37 CFR 1.78 to accept an unintentionally delayed claim for the benefit of a prior-filed application will not be granted in an issued patent.”
This means that once a patent has been granted, it is no longer possible to add or correct benefit claims through the petition process. The opportunity to make such changes ends when the patent issues.
If an applicant discovers after issuance that a benefit claim was not properly made or was omitted, they may have limited options:
- Consider filing a reissue application to correct the error, if it qualifies as an error correctable by reissue.
- In some cases, a certificate of correction might be appropriate, but this is generally limited to typographical or clerical errors.
It’s crucial for applicants to ensure all desired benefit claims are properly made and recorded before the patent issues to avoid complications and potential loss of priority rights.
To learn more:
USPTO employees are generally not permitted to initiate email communications with patent applicants unless there is a written authorization on record. According to MPEP 502.03:
‘USPTO employees are NOT permitted to initiate communications with applicants via Internet email unless there is a written authorization of record in the patent application by the applicant.’
However, if an applicant has provided written authorization for Internet communications:
‘USPTO employees may respond to Internet email and initiate communications with applicants via Internet email.’
It’s important to note that this policy applies to regular patent applications. For reissue applications and reexamination proceedings, which are open to public inspection, additional restrictions apply:
‘USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet email unless written authorization is given by the applicant or patentee.’
To learn more:
No, substitute specifications are not permitted in reissue applications or reexamination proceedings. This is explicitly stated in 37 CFR 1.125(d):
A substitute specification under this section is not permitted in a reissue application or in a reexamination proceeding.
This restriction is important to maintain the integrity of the original patent document in these special proceedings. Applicants and practitioners should be aware of this limitation when considering how to make amendments or changes to the specification in reissue applications or reexamination proceedings.
To learn more:
Patent Procedure (22)
A reissue application is necessary to perfect a foreign priority claim in the following situations:
- When the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
- When the requirements of 37 CFR 1.55 are not met.
- When the correction sought would require further examination.
The MPEP provides an example: Further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, the filing of a reissue application with a petition for an unintentionally delayed priority claim would be required.
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There is no specific time limit for filing a reissue application. According to MPEP 201.05, ‘A reissue application can be filed at any time during the enforceability of a patent.’ This means that as long as the original patent is still enforceable, a reissue application can be filed.
However, it’s important to note that there are limitations on what can be claimed in a reissue application based on when it’s filed:
- If filed within two years from the grant of the original patent, both narrowing and broadening reissue claims are permitted.
- If filed more than two years from the grant of the original patent, only narrowing reissue claims are allowed.
The MPEP states: ‘A broadening reissue application filed on or after September 16, 2012 must be applied for by all of the inventors (or alternatively the assignee of the entire interest), and the application must be filed within two years from the grant of the original patent.’
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When filing a reissue application to correct a priority claim, it’s crucial to adhere to the time limits set by law. The MPEP specifies:
‘The reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).’
This means that the reissue application must typically be filed within 12 months from the filing date of the foreign application. However, there may be exceptions or additional considerations depending on specific circumstances. It’s advisable to consult with a patent attorney or the USPTO directly for guidance on your particular situation.
What is the procedure for correcting or adding a benefit claim in a design application?
The procedure for correcting or adding a benefit claim in a design application differs from that of utility applications. According to MPEP 211.02(a):
“For design applications, an application may be amended to claim priority to or the benefit of a prior-filed application after the application issues as a patent by filing a reissue application. Note that the copendency requirement of 35 U.S.C. 120 must still be met.”
This means that for design applications:
- Corrections or additions to benefit claims cannot be made after the application has issued as a patent through a Certificate of Correction.
- The only way to correct or add a benefit claim after issuance is by filing a reissue application.
- The copendency requirement under 35 U.S.C. 120 must still be satisfied, meaning the applications must have been co-pending at some point.
It’s important to note that this procedure is specific to design applications and differs from the process for utility applications.
To learn more:
Adding a benefit claim after the time period required by 37 CFR 1.78 requires a petition and the petition fee. As stated in MPEP ยง 211.04:
Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted.
In addition to the petition and ADS or amendment, you may need to file one of the following, depending on the status of your application:
- A request for continued examination (RCE) under 37 CFR 1.114, if the application is under final rejection or has been allowed.
- A reissue application or a request for a certificate of correction under 37 CFR 1.323, if the application has already issued as a patent.
It’s important to note that when adding a benefit claim after filing, you cannot include an incorporation by reference statement of the prior application unless such a statement was present upon the initial filing of the application.
To learn more:
A reissue application is a type of patent application used to correct defects in an existing, unexpired patent. According to MPEP 201.05, “A reissue application is an application for a patent to take the place of an unexpired patent that is defective.” This process allows patent holders to address errors or omissions in their original patent, ensuring that their intellectual property rights are properly protected.
To learn more:
A reissue application is a type of patent application used to correct errors in an already issued patent. According to MPEP 201:
“An application for reissue of a patent is an application for a new patent to correct an error in an existing patent.”
Reissue applications are filed when the original patent is wholly or partly inoperative or invalid due to defective specifications, drawings, or by claiming more or less than the patentee had the right to claim. They must be filed by the original patent owner and are subject to specific requirements outlined in 35 U.S.C. 251.
For more information on Patent correction, visit: Patent correction.
For more information on Patent errors, visit: Patent errors.
For more information on reissue application, visit: reissue application.
What are the requirements for an oath or declaration in a reissue application?
In a reissue application, the oath or declaration must comply with specific requirements outlined in MPEP 1414. The MPEP states:
“The reissue oath/declaration must include a statement that the applicant believes the original patent to be wholly or partly inoperative or invalid.”
Additionally, the oath or declaration must:
- Identify at least one error being relied upon as the basis for reissue
- State that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant
- Be signed by the inventor(s) or the assignee of the entire interest
It’s important to note that the requirements for a reissue oath or declaration are more stringent than those for a regular patent application due to the nature of reissue proceedings.
To learn more:
Reissue applications are used to correct errors in already issued patents. According to MPEP 201:
‘An application for reissue is made by the patentee when the 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.’
Key points about reissue applications:
- They are filed under 35 U.S.C. 251.
- They can be used to broaden or narrow the scope of patent claims.
- There are time limitations for broadening reissues (within two years from the grant of the original patent).
For more information on Patent correction, visit: Patent correction.
For more information on Patent errors, visit: Patent errors.
For more information on reissue application, visit: reissue application.
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:
- If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
- In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
- This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.
The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.
This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.
A reissue application differs from a regular patent application in several key ways:
- Purpose: A reissue application is specifically for correcting defects in an existing, unexpired patent, while a regular application is for obtaining a new patent.
- Timing: Reissue applications can only be filed for unexpired patents, whereas regular applications are filed before a patent is granted.
- Scope: Reissue applications are limited to the invention disclosed in the original patent, with some exceptions for broadening reissues.
- Examination process: The examination of a reissue application focuses on the changes made to correct the defect, in addition to a review of the entire patent.
As stated in MPEP 201.05, “A reissue application is an application for a patent to take the place of an unexpired patent that is defective.” This fundamental difference sets reissue applications apart from regular patent applications. For more detailed information on the reissue process, refer to MPEP Chapter 1400.
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A reissue application does not affect the original patent’s term. According to MPEP 201.05, ‘The reissue application is a continuation of the original application and the reissue patent will expire at the same time that the original patent would have expired.’
This means that:
- The term of the reissue patent remains the same as the original patent.
- No additional patent term is granted through the reissue process.
- The expiration date of the reissue patent will be identical to that of the original patent.
It’s important to note that while a reissue doesn’t extend the patent term, it can potentially strengthen or broaden the patent’s claims within the original term, subject to certain limitations such as the two-year rule for broadening reissues.
The patent term is governed by 35 U.S.C. 254, which states: ‘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.’
To learn more:
How can I request a corrected patent with a perfected foreign priority claim?
To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:
- File a reissue application under 35 U.S.C. 251.
- Include a petition for an expedited examination of the reissue application.
- Pay the required fees for both the reissue application and the petition.
- Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.
As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.
To correct the priority claim in an issued patent, you can file a reissue application under 35 U.S.C. 251. The MPEP states:
‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’
This process allows you to amend the specification to include the required reference or correct the priority claim itself. However, it’s important to note that the reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).
Can I perfect a foreign priority claim after my patent has been issued?
No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:
“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”
This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.
Yes, you can perfect a claim for foreign priority after your patent has been issued. There are two main methods:
- Certificate of Correction: This is generally the preferred method if the requirements of 37 CFR 1.55 are met and no further examination is required. As stated in the MPEP,
Except in certain situations, a certificate of correction can generally be used to perfect a claim to foreign priority where a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is filed with a request for a certificate of correction in an issued patent.
- Reissue Application: This method is necessary in situations where further examination would be required or when the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
To learn more:
Yes, it is possible to add a priority claim to a patent after it has been issued, but the process requires filing a reissue application. The MPEP states:
‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’
To add a priority claim, you would need to:
- File a reissue application under 35 U.S.C. 251
- Amend the specification to include the required reference
- Ensure the reissue application is filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f)
It’s important to note that adding a priority claim may affect the patent’s term and could potentially impact its validity if prior art emerges between the new priority date and the original filing date.
Yes, a reissue application can be used to correct inventorship. The MPEP 201.05 states: ‘A reissue application may also be filed to correct inventorship in the patent. The reissue oath or declaration must state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of the incorrect inventorship.’
This means that if the original patent listed incorrect inventors or omitted inventors who should have been included, a reissue application can be filed to rectify this error. However, it’s important to note that:
- The error in inventorship must have been made without deceptive intent.
- The reissue application must be accompanied by a proper reissue oath or declaration explaining the error.
- All current patent owners must consent to the reissue application.
Correcting inventorship through a reissue application is governed by 35 U.S.C. 251 and the procedures outlined in the MPEP.
To learn more:
Yes, a petition for an unintentionally delayed priority claim can be filed after a patent issues, but it requires a different procedure. According to MPEP 214.02:
For applications that have issued as patents, a petition filed under 37 CFR 1.55(e) or 1.78(c) and (e) may be filed as a reissue application, a request for certificate of correction under 37 CFR 1.323, or a petition under 37 CFR 1.78(a) and (b) or 1.55(g), as appropriate.
This means that after a patent has issued, the options for correcting a priority claim are:
- Filing a reissue application
- Requesting a certificate of correction
- Filing a petition under specific regulations
The appropriate method depends on the specific circumstances and the type of priority claim being corrected. It’s important to note that each of these options has its own requirements and limitations. For example, a certificate of correction is generally only available for minor errors that are clerical or typographical in nature.
Given the complexity of post-issuance corrections, it’s advisable to consult with a patent attorney or agent to determine the best course of action for your specific situation.
To learn more:
No, a delayed benefit claim cannot be accepted after the patent has issued. The MPEP 211.04 clearly states:
“A petition under 37 CFR 1.78 to accept an unintentionally delayed claim for the benefit of a prior-filed application will not be granted in an issued patent.”
This means that once a patent has been granted, it is no longer possible to add or correct benefit claims through the petition process. The opportunity to make such changes ends when the patent issues.
If an applicant discovers after issuance that a benefit claim was not properly made or was omitted, they may have limited options:
- Consider filing a reissue application to correct the error, if it qualifies as an error correctable by reissue.
- In some cases, a certificate of correction might be appropriate, but this is generally limited to typographical or clerical errors.
It’s crucial for applicants to ensure all desired benefit claims are properly made and recorded before the patent issues to avoid complications and potential loss of priority rights.
To learn more:
USPTO employees are generally not permitted to initiate email communications with patent applicants unless there is a written authorization on record. According to MPEP 502.03:
‘USPTO employees are NOT permitted to initiate communications with applicants via Internet email unless there is a written authorization of record in the patent application by the applicant.’
However, if an applicant has provided written authorization for Internet communications:
‘USPTO employees may respond to Internet email and initiate communications with applicants via Internet email.’
It’s important to note that this policy applies to regular patent applications. For reissue applications and reexamination proceedings, which are open to public inspection, additional restrictions apply:
‘USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet email unless written authorization is given by the applicant or patentee.’
To learn more:
No, substitute specifications are not permitted in reissue applications or reexamination proceedings. This is explicitly stated in 37 CFR 1.125(d):
A substitute specification under this section is not permitted in a reissue application or in a reexamination proceeding.
This restriction is important to maintain the integrity of the original patent document in these special proceedings. Applicants and practitioners should be aware of this limitation when considering how to make amendments or changes to the specification in reissue applications or reexamination proceedings.
To learn more: