What is the significance of “substantially identical” claims in intervening rights?
The concept of “substantially identical” claims is crucial in determining whether intervening rights apply in patent reexamination or reissue cases: Intervening rights only apply to claims that are not substantially identical to the original claims. If a claim is substantially identical to the original, it is treated as if it was in the original patent,…
Read MoreAre reissue applications subject to the Sequence Listing XML requirement?
Yes, reissue applications filed on or after July 1, 2022, are subject to the Sequence Listing XML requirement if they contain nucleotide and/or amino acid sequences as defined in 37 CFR 1.831(a) or (b). The MPEP clarifies: “Compliance with 37 CFR 1.831 through 1.835 (rules based on WIPO Standard ST.26) is also applicable to any…
Read MoreCan I make a biological material deposit after a patent has been issued?
No, you cannot make an original biological material deposit after a patent has been issued. The Manual of Patent Examining Procedure (MPEP) 2406 clearly states: “Insofar as the rules do not permit post-issuance original deposits, the failure to make an original deposit in an application cannot be cured by filing a reissue application or instituting…
Read MoreWhat is the recapture rule in patent reissue applications?
The recapture rule prevents a patent owner from regaining through reissue subject matter that was surrendered during the prosecution of the original patent application to obtain the patent. As stated in MPEP 1412.02: “A reissue will not be granted to ‘recapture’ claimed subject matter which was surrendered in an application to obtain the original patent.”…
Read MoreHow does the USPTO determine if a delay in filing a reissue application was unintentional?
How does the USPTO determine if a delay in filing a reissue application was unintentional? The USPTO evaluates the unintentional nature of delays in filing reissue applications on a case-by-case basis. According to MPEP 1403: “In determining whether a delay in filing a reissue application was unintentional, the examiner should make an inquiry as to…
Read MoreWhat is the three-step test for recapture analysis?
The Court of Appeals for the Federal Circuit established a three-step test for recapture analysis, as outlined in MPEP 1412.02: Determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims. Determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original…
Read MoreWhat is a surrender generating limitation (SGL) in patent reissue?
A surrender generating limitation (SGL) is a key concept in recapture analysis for patent reissues. According to MPEP 1412.02, an SGL is defined as: “A ‘limitation’ presented, argued, or stated to make the claims patentable over the art (in the original application) and ‘generates’ the surrender of claimed subject matter.” An SGL can be created…
Read MoreWhat special attention do papers marked “REISSUE LITIGATION” receive at the USPTO?
Papers marked “REISSUE LITIGATION” receive special attention at the United States Patent and Trademark Office (USPTO). This special handling ensures that documents related to reissue applications involved in litigation are processed with additional care and priority. According to MPEP 1404: “Papers marked “REISSUE LITIGATION” will be given special attention.” While the MPEP doesn’t specify the…
Read MoreWhat additional requirements exist for reissue applications seeking to broaden claims?
For reissue applications filed on or after September 16, 2012, that seek to broaden the scope of the patent claims, there are additional requirements for the reissue oath or declaration. The MPEP 1414 states: “For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the…
Read MoreWhat is the difference between a reissue oath and a reissue declaration?
While the terms “reissue oath” and “reissue declaration” are often used interchangeably, there is a technical difference between the two. According to MPEP 1410.01: A reissue oath is a sworn statement made before an officer authorized to administer oaths, such as a notary public. A reissue declaration is a statement made under penalty of perjury,…
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