What is the initial review process for a reissue application?
The initial review process for a reissue application involves several key steps: The examiner consults the Examiner Reissue Guide and Checklist for basic guidance. The examiner inspects the submission under 37 CFR 1.172 for documentary evidence of chain of title. The examiner compares the consent and documentary evidence of ownership. The examiner checks if the…
Read MoreHow should certificate of correction changes be incorporated into a reissue application?
Certificate of correction changes should be incorporated into a reissue application without underlining or bracketing. This applies to changes made by a certificate of correction dated before the filing of the reissue application or during its pendency. As stated in MPEP 1411.01: “The applicant should include any changes, additions, or deletions that were made by…
Read MoreWhy is it important to verify that a patent has not expired before examining a reissue application?
Verifying that a patent has not expired is crucial before examining a reissue application for the following reasons: Legal Authority: Once a patent has expired, the Director of the USPTO no longer has the authority to reissue the patent under 35 U.S.C. 251. Validity of Reissue: An expired patent cannot be reissued, making any reissue…
Read MoreWhy is it important to refer a reissue application to the PTAB when a protest is filed and the patent is in an interference or contested case?
Referring a reissue application to the Patent Trial and Appeal Board (PTAB) when a protest is filed and the patent is in an interference or contested case is crucial for several reasons: It ensures coordination between the reissue examination process and the ongoing interference or contested case. It allows the PTAB to provide guidance on…
Read MoreWhat are the requirements for submitting an IDS in a reissue application?
When submitting an Information Disclosure Statement (IDS) in a reissue application, applicants must comply with 37 CFR 1.97 and 1.98. The requirements for document copies have been simplified: Copies of U.S. patents or U.S. patent application publications are not required unless specifically requested by the Office. For foreign patents, publications, and other information, copies are…
Read MoreHow does the examiner handle unavailable references in a reissue application?
When a reference cited in the original patent is not available and cannot be obtained from any source other than the reissue applicant (who has not provided it), the examiner follows specific procedures: The examiner will not consider that reference. The reference will not be listed on the PTO-892 form. If the reference was listed…
Read MoreWhat should an examiner do if a protest is filed against a reissue application?
When a protest is filed against a reissue application, the examiner should take the following steps: Determine if a protest has been filed. If a protest exists, handle it according to the procedures set forth in MPEP § 1901.06. Consider the specific guidelines for protests under 37 CFR 1.291 in reissue applications, as outlined in…
Read MoreWhat happens if new errors are discovered after filing a reissue application before September 16, 2012?
If new errors are discovered after filing a reissue application before September 16, 2012, they can still be corrected within the same reissue application. According to MPEP 1414.02: “Where applicant seeks to correct errors in more than one of the original drawing, specification and claims, and remarks that those errors collectively render the original patent…
Read MoreHow should disclaimers of claims be handled in a reissue application?
Disclaimers of claims under 37 CFR 1.321(a) should be incorporated into a reissue application without using underlining or brackets. This treatment is similar to that of certificate of correction changes. According to MPEP 1411.01: “Certificate of correction changes and disclaimer of claim(s) under 37 CFR 1.321(a) should be made without using underlining or brackets.” This…
Read MoreHow does the examiner handle defective reissue oath or declaration?
How does the examiner handle defective reissue oath or declaration? When examining a reissue application, the examiner must carefully review the reissue oath or declaration. If it is found to be defective, the examiner should take specific actions as outlined in MPEP 1440: “Where the reissue oath/declaration is defective, a rejection under 35 U.S.C. 251…
Read More