What is the purpose of the PTO-892 form in reissue applications?
The PTO-892 form, also known as the “Notice of References Cited,” serves an important purpose in reissue applications: It lists references cited or applied by the examiner during the reissue application examination. It includes relevant references from the original patent prosecution that are still applicable to the reissue claims. It helps maintain a clear record…
Read MoreHow does the Patent Trial and Appeal Board (PTAB) affect reissue application examination?
The Patent Trial and Appeal Board (PTAB) can significantly impact the examination of reissue applications: Examiners must check the status of any pending PTAB trial related to the patent being reissued The PTAB may exercise exclusive jurisdiction over applications involved in pending trials Examiners should ensure the PTAB has not suspended the reissue application before…
Read MoreWhat happens if a protest is filed in a reissue application related to a patent involved in a pending interference proceeding?
If a protest is filed in a reissue application related to a patent involved in a pending interference proceeding, the reissue application should be referred to the Patent Trial and Appeal Board (PTAB) before any action is taken. As stated in MPEP 1449: “If a protest (see MPEP Chapter 1900) is filed in a reissue…
Read MoreWhat types of proceedings should be reported to the USPTO in a reissue application?
When filing a reissue application, applicants should report various types of proceedings involving the original patent. The MPEP specifies the following proceedings: Interferences Trials before the Patent Trial and Appeal Board (PTAB), including: Derivation proceedings Post-grant review Inter partes review Covered business method proceedings Reissues Reexaminations Litigations The MPEP states: “Additional proceedings that should be…
Read MoreHow should priority or benefit claims be made in a reissue application?
Priority or benefit claims in reissue applications must be made according to specific rules. As per MPEP 1410: Priority/benefit claims from the original patent do not automatically carry over to the reissue application. For reissues filed on or after September 16, 2012, claims must be made in an Application Data Sheet (ADS) under 37 CFR…
Read MoreCan prior art considered during the original patent examination be used again in a reissue application?
Yes, prior art that was considered during the original patent examination can be used again in a reissue application. The MPEP 1445 clearly states: “Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not…
Read MoreHow does the availability of prior art differ between original and reissue applications?
In most cases, the availability of prior art for reissue applications is the same as for original applications. However, the MPEP 1445 notes that there can be rare exceptions: “Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the…
Read MoreDo claims in a reissue application have a presumption of validity?
No, claims in a reissue application do not have a presumption of validity. The MPEP 1445 explicitly states: “Claims in a reissue application enjoy no ‘presumption of validity.’” This principle is supported by case law, including: In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973) In re Sneed, 710 F.2d 1544,…
Read MoreWhat is the role of a preliminary amendment in a reissue application?
What is the role of a preliminary amendment in a reissue application? A preliminary amendment plays a significant role in reissue applications. According to MPEP 1440: “A preliminary amendment may be filed with the reissue application to amend the claims and/or specification. Where a preliminary amendment is filed with the reissue application, it must comply…
Read MoreCan a reissue application filed before September 16, 2012, correct multiple errors in the original patent?
Yes, a reissue application filed before September 16, 2012, can correct multiple errors in the original patent. The MPEP 1414.02 states: “It is not necessary to specifically state all of the errors and imperfections being corrected in the reissue application in the reissue oath/declaration. However, it is necessary to identify in the reissue oath/declaration at…
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