What are the statutory provisions prohibiting the introduction of new matter?
There are two primary statutory provisions that prohibit the introduction of new matter in patent applications: 35 U.S.C. 132: This provision states that “no amendment shall introduce new matter into the disclosure of the invention.” 35 U.S.C. 251: This provision applies specifically to reissue applications and states that “no new matter shall be introduced into…
Read MoreCan inventorship be corrected through reissue instead of reexamination?
Yes, inventorship can be corrected through reissue if it’s not addressed during reexamination. As stated in MPEP 2250.02: “Alternatively, the failure to name the correct inventive entity is an error in the patent which is correctable by reissue under 35 U.S.C. 251.” The MPEP further directs readers to MPEP § 1412.04 for more information on…
Read MoreWhat is the “same general invention” requirement for reissue claims?
The “same general invention” requirement for reissue claims refers to the principle that the reissue claims must be for the same invention as that disclosed in the original patent. According to MPEP 1412.01: The reissue claims must be for the same invention as that disclosed as being the invention in the original patent, as required…
Read MoreWhat happens if a reissue claim is directed to a different invention?
If a reissue claim is directed to a different invention than the one disclosed in the original patent, it will be rejected. MPEP 1412.01 states: Claims in the reissue application that are drawn to an invention comprising a newly claimed combination of features that was not covered by any of the claims in the original…
Read MoreCan a reissue application add new matter to the original patent?
No, a reissue application cannot add new matter to the original patent. This is a fundamental principle in patent reissue law. According to MPEP 1412.01: No new matter may be introduced into an application for reissue. This means that all aspects of the reissue claims must be supported by the disclosure in the original patent.…
Read MoreWhat is the significance of the original patent requirement in reissue applications?
What is the significance of the original patent requirement in reissue applications? The original patent requirement is a crucial aspect of reissue applications. According to MPEP 1440, “The reissue claims must be for the same invention as that disclosed as being the invention in the original patent, as required by 35 U.S.C. 251.” This means…
Read MoreWhy is it important to verify that a patent has not expired before examining a reissue application?
Verifying that a patent has not expired is crucial before examining a reissue application for the following reasons: Legal Authority: Once a patent has expired, the Director of the USPTO no longer has the authority to reissue the patent under 35 U.S.C. 251. Validity of Reissue: An expired patent cannot be reissued, making any reissue…
Read MoreCan drawing errors be corrected through a reissue application?
Yes, drawing errors can be corrected through a reissue application, but only if the correction is substantive in nature. The MPEP states: A reissue may be based on a drawing correction that is substantive in nature, because such a correction qualifies as correcting an error under 35 U.S.C. 251 that may properly be deemed to…
Read MoreWhat is the time limit for filing a broadening reissue application?
According to 35 U.S.C. 251(d), there is a 2-year time limit for filing broadening reissue applications. The MPEP states: No reissued 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. However, it’s important to note that a…
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