Question 1

What is a Bauman type continuation application in the context of reissue applications?

Accepted Answer

A Bauman type continuation application is a regular continuation application filed from a reissue application, rather than a continuation reissue application. The MPEP explains:

It is possible to file a 35 U.S.C. 111(a) continuing application of a reissue application. See In re Bauman, 683 F.2d 405, 409, 214 USPQ 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application's filing date).

However, filing a Bauman type continuation has significant effects:

First, the claims in a Bauman type continuation or divisional application will not have the same effective U.S. filing date as the original patent. [...] Second, a decision to file a Bauman type continuation or divisional application instead of a continuation or divisional reissue application results in the inability to file any subsequent reissues of the original patent once there are no pending applications for reissue of the original patent.

It's important to clearly identify whether an application is intended to be a continuation reissue or a Bauman type continuation to avoid unintended consequences.

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Question 2

When should I file an Information Disclosure Statement (IDS) in a reissue application?

Accepted Answer

While 37 CFR 1.97(b) allows for filing an Information Disclosure Statement (IDS) within 3 months of the filing of an application or before the mailing date of a first Office action, the MPEP recommends earlier filing for reissue applications:

"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."

Filing the IDS at the time of filing the reissue application ensures that the information is available to the public during the initial examination period. This practice promotes transparency and helps expedite the examination process. However, remember that the duty to disclose is ongoing, so you may need to file additional IDSs if new material information comes to light during the prosecution of the reissue application.

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Question 3

How is the effective filing date determined for reissue applications under the AIA?

Accepted Answer

The AIA provides specific guidance for determining the effective filing date of claimed inventions in reissue applications:

Finally, the AIA provides that the "effective filing date" for a claimed invention in a reissued patent or application for a reissue patent shall be determined by deeming the claim to the claimed invention to have been contained in the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).

This means:

The effective filing date for a claimed invention in a reissue application is treated as if the claim was part of the original patent being reissued.
This applies even if the claim is new or modified in the reissue application.
The purpose is to maintain continuity with the original patent and prevent the introduction of intervening prior art solely due to the reissue process.

It's important to note that while this provision helps determine the effective filing date, reissue applications must still comply with other statutory requirements, including those related to broadening reissues and the two-year filing deadline for broadening reissues.

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Question 4

What happens to the original patent while a reissue application is pending?

Accepted Answer

While a reissue application is pending, the original patent remains in effect. This is clearly stated in MPEP 1416, which quotes 37 CFR 1.178(a): "Until a reissue application is granted, the original patent shall remain in effect."

This means that the rights conferred by the original patent continue to be enforceable, and the patent owner can still exercise those rights until the reissue patent is granted. It's important to note that the surrender of the original patent only takes effect upon the grant of the reissue patent, not during the pendency of the reissue application.

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Question 5

What is the role of a TQAS in reissue application examination?

Accepted Answer

A Training Quality Assurance Specialist (TQAS) plays a crucial role in the examination of reissue applications. Their responsibilities include:

Monitoring and reviewing reissue applications at various stages of prosecution
Ensuring that reissue-specific practices and procedures are followed
Instructing examiners on reissue-specific procedures
Conducting patentability reviews on a sample of reissue applications
Setting and removing status flags to track the application's progress

MPEP 1456 states: "By having to set this first flag, the TQAS 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 examination of the reissue application."

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Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 2100 – Patentability (1)

How is the effective filing date determined for reissue applications under the AIA?

MPEP 2152.01 – Effective Filing Date Of The Claimed Invention (1)

How is the effective filing date determined for reissue applications under the AIA?

Patent Law (1)

How is the effective filing date determined for reissue applications under the AIA?

Patent Procedure (1)

How is the effective filing date determined for reissue applications under the AIA?