What are the key requirements for a reissue oath or declaration filed before September 16, 2012?
For reissue applications filed before September 16, 2012, the reissue oath or declaration must comply with pre-AIA 37 CFR 1.175 and include the following key elements: A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid, stating at least one error being relied upon as the basis for…
Read MoreWhat are the requirements for a reissue oath or declaration filed on or after September 16, 2012?
For reissue applications filed on or after September 16, 2012, the requirements for a reissue oath or declaration are as follows: It must be executed by the inventor, or if the inventor is deceased, by the current patent owner It must identify an error being corrected It must state that all errors arose without any…
Read MoreIs physical surrender of the original patent required for reissue?
No, physical surrender of the original patent is not required for reissue. According to MPEP 1416, “Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required.” This means that the surrender takes effect automatically when the reissue…
Read MoreWhat 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…
Read MoreWhen does the surrender of the original patent take effect in a reissue process?
The surrender of the original patent takes effect automatically when the reissue patent is granted. As stated in MPEP 1416: “Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent.” This means that the original patent remains in effect until the reissue…
Read MoreHow 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…
Read MoreWhat 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:…
Read MoreHow 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…
Read MoreWhat are the essential requirements for a reissue oath or declaration?
According to MPEP 1444, all reissue oaths or declarations must contain the following: A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid due to a defective specification or drawing, or because the patentee claimed more or less than they had the right to claim. A statement of…
Read MoreWhat is required in a reissue oath or declaration regarding error identification?
A reissue oath or declaration must identify at least one error being relied upon as the basis for reissue. According to 37 CFR 1.175(a): “The inventor’s oath or declaration for a reissue application… must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and…
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