Can the submission of an inventor’s oath or declaration be delayed in a reissue application?
No, the submission of an inventor’s oath or declaration cannot be delayed in a reissue application. According to MPEP 1414.01: “Unlike in non-reissue, non-provisional patent applications, submission of the inventor’s oath or declaration in a reissue application cannot be delayed until payment of the issue fee. The application must contain the inventor’s oath or declaration…
Read MoreWhat forms can be used to prepare a declaration in a reissue application filed before September 16, 2012?
For reissue applications filed before September 16, 2012, the MPEP suggests two specific forms that may be used to prepare a declaration: Form PTO/SB/51: Reissue Application Declaration By The Inventor Form PTO/SB/52: Reissue Application Declaration By The Assignee The choice between these forms depends on whether the declaration is being made by the inventor or…
Read MoreWhat happens if a court invalidates a patent while a reissue application is pending?
What happens if a court invalidates a patent while a reissue application is pending? If a court invalidates a patent while a reissue application is pending, several consequences may follow: Notification requirement: The applicant must promptly notify the USPTO of the court’s decision. Examination impact: The USPTO will consider the court’s decision in the examination…
Read MoreCan a 37 CFR 1.48 request or a 37 CFR 1.324 petition be used to correct inventorship in a reissue application?
No, a request under 37 CFR 1.48 or a petition under 37 CFR 1.324 cannot be used to correct the inventorship of a reissue application. The MPEP clearly states: “A request under 37 CFR 1.48 or a petition under 37 CFR 1.324 cannot be used to correct the inventorship of a reissue application.” If such…
Read MoreCan inventorship errors be corrected through a reissue application?
Yes, inventorship errors can be corrected through a reissue application. The MPEP states: The correction of misjoinder of inventors in reissues has been held to be a ground for reissue. However, it’s important to note that there are two ways to correct inventorship: Reissue application: This can be used to correct misjoinder of inventors under…
Read MoreCan a reissue application be used to correct errors related to foreign priority claims?
Yes, a reissue application can be used to correct errors related to foreign priority claims. The MPEP cites the case of Brenner v. State of Israel, which established that reissue is available to: File a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) Correct the…
Read MoreCan drawing errors be corrected through a reissue application?
Yes, drawing errors can be corrected through a reissue application, but only if the correction is substantive in nature. The MPEP states: A reissue may be based on a drawing correction that is substantive in nature, because such a correction qualifies as correcting an error under 35 U.S.C. 251 that may properly be deemed to…
Read MoreHow can errors in benefit claims to domestic applications be corrected?
Errors in benefit claims to domestic applications can be corrected through reissue applications or certificates of correction, depending on the situation. The MPEP states: For provisional applications: correction of failure to adequately claim a benefit under 35 U.S.C. 119(e) in an earlier-filed copending U.S. patent application is considered a proper ground for reissue. For non-provisional…
Read MoreWhat if an inventor is unavailable or refuses to submit a statement for inventorship correction?
If an inventor is unavailable or refuses to submit a statement for inventorship correction in an issued patent, the assignee may consider filing a reissue application instead. As stated in MPEP 1481.02: “If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a…
Read MoreCan a reissue application be used to correct inventorship in an expired patent?
No, a reissue application cannot be used to correct inventorship in an expired patent. According to MPEP 1412.04: “A reissue application can be filed to correct inventorship in a patent as long as all of the requirements of 37 CFR 1.324 are met.” However, one of the requirements for a reissue application is that the…
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