What are ‘overlooked aspects’ in patent reissue applications?

‘Overlooked aspects’ are an important concept in patent reissue applications, particularly in the context of recapture analysis. According to MPEP 1412.02, overlooked aspects are defined as: “Claims to separate inventions/embodiments/species that were never presented in the original application.” Key points about overlooked aspects: They are not subject to recapture analysis They represent genuinely new inventions…

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How should papers be marked when submitting documents for reissue applications involved in litigation?

When submitting papers for reissue applications involved in litigation, applicants and protestors should follow these guidelines: Envelope marking: Mark the outside envelope with “REISSUE LITIGATION” and the specific USPTO area handling the application (e.g., Commissioner for Patents, Patent Trial and Appeal Board). Paper marking: Clearly mark the top right-hand portion of the papers with “REISSUE…

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What are intervening rights in patent reissue?

Intervening rights are defenses to patent infringement that arise from the reissue of an original patent. 35 U.S.C. 252 provides for two types of intervening rights: Absolute intervening rights: These apply to parties who, prior to the reissue, made, purchased, offered to sell, used, or imported anything patented by the reissued patent. Equitable intervening rights:…

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How can a reissue applicant rebut a recapture rejection?

A reissue applicant can rebut a recapture rejection by demonstrating that the reissue claims include limitations that materially narrow the claims in a way related to the surrendered subject matter. According to MPEP 1412.02: “The reissue applicant may rebut a recapture rejection by demonstrating that a claim rejected for recapture includes one or more claim…

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