Can a reissue application be filed to add narrower claims?
Yes, a reissue application can be filed solely to add narrower claims to a patent. The MPEP cites the case of In re Tanaka, which states: the omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.…
Read MoreWhat is the duty of a reissue applicant regarding prior or concurrent proceedings?
According to 37 CFR 1.178(b), a reissue applicant has a duty to inform the USPTO about any prior or concurrent proceedings involving the patent for which reissue is requested. This includes: Interferences or trials before the Patent Trial and Appeal Board Reissues Reexaminations Litigations The MPEP states: “Where the patent for which reissue is being…
Read MoreHow does the USPTO handle a situation where a reexamination certificate is to be issued while a reissue application is pending?
When a reexamination certificate is to be issued for a patent while a reissue application for the same patent is pending, the USPTO follows a specific procedure: The examiner will not act on the reissue application until the certificate issues and publishes. After the certificate is published, the Office will resume examination of the reissue…
Read MoreAre re-typed specifications acceptable in reissue applications?
No, re-typed specifications are not acceptable in reissue applications. The MPEP 1411 clearly states: “It should be noted that a re-typed specification is not acceptable in a reissue application; the full copy of the printed patent must be used.” However, there is an exception to this rule. If the changes to be made to the…
Read MoreWhat is a Request for Continued Examination (RCE) in the context of reissue applications?
A Request for Continued Examination (RCE) is a procedure available for reissue applications of utility or plant patents filed on or after June 8, 1995. According to MPEP 1452: “A request for continued examination (RCE) under 37 CFR 1.114 is available for a reissue application for reissue of a utility or plant patent filed on…
Read MoreWill the filing of an RCE in a reissue application be announced in the Official Gazette?
No, the filing of a Request for Continued Examination (RCE) in a reissue application will not be announced in the Official Gazette. The MPEP 1452 explicitly states: “Thus, the filing of an RCE will not be announced in the Official Gazette.” This is because an RCE is a continuation of an existing reissue application rather…
Read MoreCan an RCE be filed for a reissue application of a patent filed before June 8, 1995?
Yes, a Request for Continued Examination (RCE) can be filed for a reissue application even if the original patent application was filed before June 8, 1995. The MPEP 1452 clarifies: “This applies even where the application, which resulted in the original patent, was filed before June 8, 1995.” The key factor is that the reissue…
Read MoreDoes filing an RCE result in a new reissue application?
No, filing a Request for Continued Examination (RCE) does not result in a new reissue application. The MPEP 1452 clearly states: “An RCE continues the prosecution of the existing reissue application and is not a filing of a new reissue application.” This means that the RCE simply allows for continued examination of the current reissue…
Read MoreHow does filing an RCE affect a merged reissue application and reexamination proceeding?
Filing a Request for Continued Examination (RCE) in a reissue application that has been merged with a reexamination proceeding does not automatically dissolve the merger. According to MPEP 1452: “Additionally, if a reissue application is merged with a reexamination proceeding (see MPEP § 1449.01), the filing of an RCE will not dissolve the merger, because…
Read MoreWhat is the purpose of restriction in reissue applications?
Restriction in reissue applications serves to separate newly added claims from the original patent claims when they are directed to distinct inventions. According to MPEP 1450, “37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between claims newly added in a reissue application and the original patent claims, where the added…
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