Question 1

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 2

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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Bauman type continuation
reissue application
effective filing date

Question 3

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 4

What is the difference between correcting a patent with a Certificate of Correction and a reissue application?

Accepted Answer

The choice between a Certificate of Correction and a reissue application depends on the nature and extent of the error in the patent. According to MPEP 1481:

Certificate of Correction:

Used for clerical or typographical errors, or mistakes of minor character
Cannot involve changes that would constitute new matter or require reexamination
Cannot be used to broaden the scope of claims
Relatively simple and quick process

Reissue Application:

Used for more substantial errors or changes
Can be used to correct errors in the specification, drawings, or claims
Can be used to broaden or narrow the scope of claims (within certain time limits)
More complex process, essentially re-examining the patent

The MPEP states: "Mistakes in a patent which are not correctable by certificate of correction may be correctable via filing a reissue application (see MPEP § 1401 - § 1460)."

It's important to note that "Usually, any mistake affecting claim scope must be corrected by reissue." If you're unsure which process is appropriate for your situation, it's advisable to consult with a patent attorney.

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Question 5

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 6

Do claims in a reissue application have a presumption of validity?

Accepted Answer

No, claims in a reissue application do not have a presumption of validity. The MPEP 1445 explicitly states:

"Claims in a reissue application enjoy no 'presumption of validity.'"

This principle is supported by case law, including:

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)

This means that during the examination of a reissue application, all claims are subject to full scrutiny and potential rejection, regardless of their status in the original patent.

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Question 7

What happens if a reissue application is not ready for publication as a patent at the time the Notice of Allowance is mailed?

Accepted Answer

If a reissue application is not ready for publication as a patent at the time the Notice of Allowance is mailed, the following process occurs:

The application is withdrawn from issue.
The application is returned to the examiner.
Appropriate corrective action is taken by the examiner.
A new Notice of Allowance is mailed when the application is ready for publication.

This process is outlined in MPEP 1456, which states: "If the reissue application is not ready for publication as a patent at the time the Notice of Allowance is mailed, the application must be withdrawn from issue, returned to the examiner, appropriate corrective action taken, and a new Notice of Allowance mailed when the application is ready for publication."

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Question 8

Who is responsible for reviewing a reissue application when a protest is filed and the patent is in a contested case?

Accepted Answer

When a protest is filed in a reissue application and the related patent is involved in a contested case, the review process involves collaboration between several parties. According to MPEP 1449:

"In consultation with the examiner and the PTAB, a TC TQAS or SPRS will check to see that: It is particularly important that the reissue application not be allowed without the administrative patent judge's approval."

This means that the Technology Center Training Quality Assurance Specialist (TC TQAS) or Supervisory Patent Reexamination Specialist (SPRS) will work with the examiner and the Patent Trial and Appeal Board (PTAB) to review the reissue application. The administrative patent judge's approval is crucial before allowing the reissue application.

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Question 9

Can I request the return of my original patent letters after submitting them for reissue?

Accepted Answer

Yes, you can request the return of your original patent letters after submitting them for reissue, but there are certain conditions and timeframes to consider. According to MPEP 1416:

"Where the patentee has submitted the original letters patent in a reissue application 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."

However, it's important to note that if you request the return after the issue fee has been paid, you'll need to file a petition under 37 CFR 1.59(b) to expunge and return the original letters patent. Additionally, if the original letters patent cannot be readily retrieved or has been misplaced, the Office will not be able to return it or create a new one.

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Original Patent
Letters Patent
Return Request
Reissue Application

Question 10

Do I need to resubmit all 'References Cited' from the original patent in a reissue application?

Accepted Answer

No, you are not required to resubmit all 'References Cited' from the original patent in a reissue application. The MPEP clearly states:

"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."

However, it's important to remember that you still have a continuing duty under 37 CFR 1.56 to disclose any information that is material to the patentability of the claims under consideration in the reissue application. This means that while you don't need to automatically resubmit all previously cited references, you should submit any that are particularly relevant to the claims in the reissue application or any new information that has come to light since the original patent was issued.

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Question 11

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?