How does an examiner determine if a patent under reissue has been adjudicated by a court?
When a reissue application is filed, the examiner takes several steps to determine if the original patent has been adjudicated by a court: The examiner reviews the reissue application for any information provided by the applicant about litigation. The examiner checks the patented file for notices of filing and termination of infringement suits, which are…
Read MoreWhat is the procedure for election of species in reissue applications?
The election of species procedure in reissue applications follows specific rules, especially when it involves original patent claims and newly added species. The MPEP 1450 provides guidance: “If (1) the non-elected claims to the added species depend from (or otherwise include all limitations of) a generic claim which embraces all species claims, and (2) the…
Read MoreWhat is the effective date for claims in a reissue application?
Claims in a reissue application are treated as if they were presented in the original patent for the purpose of evaluating patentability over prior art. The MPEP 1440 states: “The claims in a reissue application are treated as if they were presented in the patent being reissued for purposes of evaluating patentability over prior art,…
Read MoreWhat is the duty of disclosure in a reissue application?
The duty of disclosure in a reissue application is the same as for any other nonprovisional application. Applicants have a continuing obligation under 37 CFR 1.56 to disclose all information known to be material to patentability. The MPEP states: “A reissue application is subject to the same duty of disclosure requirements as is any other…
Read MoreWhat are the requirements for submitting drawings in a reissue application?
When submitting drawings for a reissue application, the following requirements must be met: A clean copy of each drawing sheet from the printed patent must be submitted at the time of filing the reissue application. If the clean copies comply with 37 CFR 1.84, no further formal drawings will be required. New drawing sheets should…
Read MoreWhat happens if a disclaimer of all original patent claims is filed in a reissue application?
If a disclaimer of all original patent claims is filed in a reissue application with newly added claims, only the new claims will be examined. The MPEP 1450 states: “If a disclaimer of all the original patent claims is filed in the reissue application containing newly added claims that are separate and distinct from the…
Read MoreWhat is the difference between appeal briefs for reissue and non-reissue applications?
The main difference between appeal briefs for reissue and non-reissue applications lies in the presentation of claims. MPEP 1454 states: “There is, however, a difference in practice as to presentation of the copy of the claims in the appeal brief for a reissue application.” In a reissue application appeal brief, you must show all changes…
Read MoreWhat is the process for filing a design reissue application?
A design reissue application can be filed in the same manner as a utility patent reissue application. However, there are some specific procedures for design reissue applications: The application fee is set forth in 37 CFR 1.16(e), with additional search and examination fees required. Expedited examination can be requested under 37 CFR 1.155. Multiple design…
Read MoreWhat types of drawing views can be included in a design patent reissue?
According to MPEP 1509, a design patent reissue can include several types of drawing views, all of which will be printed as part of the design reissue patent: CANCELED drawing view: “Such a drawing view must be surrounded by brackets and must be labeled as ‘Canceled.’ For example, FIG. 3 (Canceled).” AMENDED drawing view: “Such…
Read MoreHow can an applicant delete a benefit claim in a reissue application?
The process for deleting a benefit claim in a reissue application depends on the filing date of the application: For applications filed on or after September 16, 2012: Include an application data sheet (ADS) that does not list the benefit claim when filing the reissue application, or file a corrected ADS complying with 37 CFR…
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