Can original or printed patent drawing sheets be physically altered in a reissue application?
No, original or printed patent drawing sheets cannot be physically altered in a reissue application. The MPEP clearly states: “Amending the original or printed patent drawing sheets by physically changing or altering them is not permitted. Any request to do so should be denied.” Instead of physically altering the original drawings, applicants must submit replacement…
Read MoreWhat petition is required to enter a clean copy of the specification in a reissue application?
To enter a clean copy of the specification as a substitute specification in a reissue application, the applicant must file a grantable petition under 37 CFR 1.183 for waiver of 37 CFR 1.125(d) and 37 CFR 1.173(a)(1). MPEP 1411.01 states: “For the clean copy of the specification to be entered as a substitute specification, the…
Read MoreCan I perfect a foreign priority claim in a reissue application if it wasn’t perfected in the original patent?
Yes, you can perfect a foreign priority claim in a reissue application even if it wasn’t perfected in the original patent. This is one of the reasons for which a reissue application can be filed. MPEP 1417 cites the case of Brenner v. State of Israel, which established that “reissue is also available to correct…
Read MoreCan a patent application be withdrawn from issue after payment of the issue fee?
Yes, a patent application can be withdrawn from issue even after payment of the issue fee. However, the process and requirements differ based on the timing: If withdrawn before the patent has been granted, a petition under 37 CFR 1.313(c) is required. If withdrawn after the patent has been granted, a certificate of correction or…
Read MoreWhat is the “overlooked aspects” exception in patent reissue recapture?
What is the “overlooked aspects” exception in patent reissue recapture? The “overlooked aspects” exception is a rare circumstance where recapture may be allowed in a reissue application. This exception applies when the reissue claims are drawn to a separate invention or separate aspect/embodiment that was not covered by a claim at any point during prosecution…
Read MoreIs it necessary to physically surrender the original patent when filing a reissue application?
No, it is no longer required to physically surrender the original patent when filing a reissue application. According to MPEP 1410: “It is no longer required that the reissue applicant physically surrender the original patent, see MPEP § 1416.“ This change simplifies the reissue application process, as applicants are not required to locate and submit…
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 MoreWhat happens to the original patent while a reissue application is pending?
While a reissue application is pending, the original patent remains in effect. This is clearly stated in MPEP 1416, which quotes 37 CFR 1.178(a): “Until a reissue application is granted, the original patent shall remain in effect.“ This means that the rights conferred by the original patent continue to be enforceable, and the patent owner…
Read MoreWhat is the role of the Office of Patent Legal Administration (OPLA) in reissue applications during litigation?
What is the role of the Office of Patent Legal Administration (OPLA) in reissue applications during litigation? The Office of Patent Legal Administration (OPLA) plays a crucial role in managing reissue applications that are involved in litigation: Referral review: OPLA reviews reissue applications referred due to concurrent litigation. Decision on examination approach: OPLA determines whether…
Read MoreWhat is the significance of the Official Gazette announcement for reissue applications?
The announcement of reissue applications in the Official Gazette is a crucial step in the reissue process: All reissue applications, except for continued prosecution applications (CPAs) for design patents, must be announced in the Official Gazette. The examiner must verify if the filing has been announced before proceeding with examination. If the announcement hasn’t been…
Read More