How are reissue applications examined compared to original applications?
Reissue applications are examined in the same manner as original, non-reissue, non-provisional applications. This is explicitly stated in 37 CFR 1.176, which says that a reissue application, “including all the claims therein, is subject to ‘be examined in the same manner as a non-reissue, non-provisional application.’” This means that examiners will apply the same level…
Read MoreCan a reissue application proceed if all patent claims were canceled by a reexamination certificate?
Yes, a reissue application can still proceed even if all patent claims were canceled by a reexamination certificate. However, specific steps must be taken: The patent owner must file a petition under 37 CFR 1.183 to waive 37 CFR 1.570 and/or 37 CFR 1.997(d), depending on the type of reexamination. The petition would be grantable…
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 authority does the Patent Trial and Appeal Board have to request additional briefing from appellants?
The Patent Trial and Appeal Board (PTAB) has the authority to request additional briefing from appellants under 37 CFR 41.50(d). This regulation states: “The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal.“ This authority allows the Board…
Read MoreWhat happens if a protest is filed in a reissue application related to a patent involved in a pending interference proceeding?
If a protest is filed in a reissue application related to a patent involved in a pending interference proceeding, the reissue application should be referred to the Patent Trial and Appeal Board (PTAB) before any action is taken. As stated in MPEP 1449: “If a protest (see MPEP Chapter 1900) is filed in a reissue…
Read MoreHow should priority or benefit claims be made in a reissue application?
Priority or benefit claims in reissue applications must be made according to specific rules. As per MPEP 1410: Priority/benefit claims from the original patent do not automatically carry over to the reissue application. For reissues filed on or after September 16, 2012, claims must be made in an Application Data Sheet (ADS) under 37 CFR…
Read MoreWhat is the definition of “prior art” in patent law?
The term “prior art” in patent law refers to all information that has been made available to the public before a given date that might be relevant to a patent’s claims of originality. This includes existing patents, published patent applications, and other publicly available documents or information. While the MPEP 901 doesn’t provide a direct…
Read MoreDo claims in a reissue application have a presumption of validity?
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,…
Read MoreWhat is the presumption of validity for patents?
Every issued patent is presumed to be valid under U.S. patent law. This presumption is explicitly stated in MPEP 1701: “Every patent is presumed to be valid. See 35 U.S.C. 282, first sentence.” This presumption of validity is a fundamental principle in patent law. It means that in any legal proceeding challenging a patent’s validity,…
Read MoreWhat is the Patent Law Treaties Implementation Act of 2012 (PLTIA)?
The Patent Law Treaties Implementation Act of 2012 (PLTIA) is a significant piece of legislation that affected design patent law in the United States. According to the MPEP: “On December 18, 2012, the Patent Law Treaties Implementation Act of 2012 (PLTIA) was signed into law. The PLTIA among other things sets forth provisions implementing the…
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