What are the grounds for filing a reissue application?
A reissue application is filed to correct an error in the patent that makes it wholly or partly inoperative or invalid. The MPEP states: There must be at least one error in the patent to provide grounds for reissue of the patent. If there is no error in the patent, the patent will not be…
Read MoreHow do I format new claims added in a reissue application for an appeal brief?
When presenting new claims added in a reissue application as part of an appeal brief, you must format them in a specific way. According to MPEP 1454: “any new claims added in the reissue application should be completely underlined.” This means that any claim that was not present in the original patent, but was added…
Read MoreWhat is Form Paragraph 14.11.01 used for in reissue applications?
Form Paragraph 14.11.01 is used by patent examiners in the first action of a reissue application to remind applicants of their continuing obligations under 37 CFR 1.178(b) and 37 CFR 1.56. The MPEP states: “Form paragraph 14.11.01 may be used to remind applicant of the duties to timely make the Office aware of (A) any…
Read MoreWhat is Form Paragraph 14.06 used for in reissue applications?
Form Paragraph 14.06 is used by examiners to inquire about specific details of litigation related to a reissue application. It serves several purposes: Notifies the applicant that the patent sought to be reissued is involved in litigation Requests that any documents or materials material to patentability be made of record Informs the applicant that extensions…
Read MoreHow does the process of claiming foreign priority differ for reissue applications filed before and after September 16, 2012?
The process of claiming foreign priority in reissue applications differs based on whether the application was filed before or after September 16, 2012. Here’s a breakdown of the differences: For reissue applications filed on or after September 16, 2012: MPEP 1417 states: “For reissue applications filed on or after September 16, 2012, the foreign priority…
Read MoreWhen should I file an Information Disclosure Statement (IDS) in a reissue application?
While 37 CFR 1.97(b) allows for filing an Information Disclosure Statement (IDS) within 3 months of the filing of an application or before the mailing date of a first Office action, the MPEP recommends earlier filing for reissue applications: “While 37 CFR 1.97(b) provides for the filing of an information disclosure statement within 3 months…
Read MoreHow are excess claims fees determined for reissue applications?
Excess claims fees for reissue applications are determined based on the number of claims in the reissue application itself, not the original patent. The MPEP clearly states: “Under 37 CFR 1.16(h) and (i), the number of claims in the original patent is not relevant in determining the excess claims fee for a reissue application.” Excess…
Read MoreWhat should an examiner do if they become aware of litigation during the examination of a reissue application?
If an examiner becomes aware of litigation involving the patent sought to be reissued during the examination process, and the applicant has not provided details about this litigation, the examiner should take the following steps: In the next Office action, inquire about the litigation details. Use Form paragraph 14.06 for this inquiry. If the litigation…
Read MoreWhat should an examiner do if certificate of correction changes are improperly marked in a reissue application?
If certificate of correction changes are improperly submitted with underlining and brackets in a reissue application, the examiner should require the applicant to correct this. The correction should be in the form of a replacement paragraph (or paragraphs) without such markings. MPEP 1411.01 states: “If the changes are submitted improperly with underlining and brackets, the…
Read MoreWhat should an examiner do when reviewing a reissue application related to litigation or PTAB trials?
When reviewing a reissue application, an examiner should: Determine if the patent for which reissue is filed is involved in litigation or a pending PTAB trial Check the status of any litigation or PTAB trial Consult MPEP § 1442.02 to determine if prosecution should be suspended Inquire about specific litigation details if not already provided…
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