Can new rejections be made in a reissue application that weren’t made in the original patent?
Yes, new rejections can be made in a reissue application, even if they weren’t made during the prosecution of the original patent. The MPEP 1445 clearly states: “It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a…
Read MoreCan multiple reissue patents be granted for a single original patent?
Yes, multiple reissue patents can be granted for a single original patent. This is explicitly allowed by 35 U.S.C. 251(b), which states: “The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each…
Read MoreCan a patent be invalidated for containing multiple inventions?
No, a patent cannot be invalidated solely for containing multiple inventions. MPEP 805 clarifies this point, citing the last sentence of 35 U.S.C. 121: “In other words, under this statute, no patent can be held invalid for improper joinder of inventions claimed therein.” This provision protects patent holders from challenges to their patent’s validity based…
Read MoreWhat is the purpose of MPEP 909?
MPEP 909 covers the routing and docketing of patent applications. This section provides guidance on how patent applications are processed and managed within the United States Patent and Trademark Office (USPTO). While the section title itself doesn’t provide detailed information, it suggests that this part of the MPEP deals with the administrative procedures for handling…
Read MoreWhat matters are typically submitted to Technology Center Directors?
Technology Center Directors handle various matters related to patent examination and procedures. According to MPEP 1003, some key matters include: Certain requests for certificates of correction Return of papers entered in the file wrapper Specific rejections on double patenting Requests for patentability reports Actions holding claims unpatentable on grounds applicable to corresponding patent claims Interferences…
Read MoreWhat are “matters of form” in a patent application?
“Matters of form” in a patent application refer to minor, non-substantive issues that need to be corrected before a patent can be granted. These are typically formal requirements that do not affect the core inventive concept or patentability of the invention. According to MPEP § 1301, when an application is “in condition for allowance, except…
Read MoreHow should papers be marked when submitting documents for reissue applications involved in litigation?
When submitting papers for reissue applications involved in litigation, applicants and protestors should follow these guidelines: Envelope marking: Mark the outside envelope with “REISSUE LITIGATION” and the specific USPTO area handling the application (e.g., Commissioner for Patents, Patent Trial and Appeal Board). Paper marking: Clearly mark the top right-hand portion of the papers with “REISSUE…
Read MoreWhat are the limitations on requests for Certificates of Correction?
While the Certificates of Correction Branch handles many requests for patent corrections, there are limitations on what can be corrected through this process. According to MPEP 1002.02(l), certain denials require consideration by higher authorities: “Requests for Certificates of Correction under 37 CFR 1.322 or 1.323 except for denials on grounds requiring consideration by the Chief…
Read MoreWhat are the legal requirements for issuing a patent?
The legal requirements for issuing a patent are outlined in various sections of U.S. patent law. According to MPEP 1309, which cites 35 U.S.C. 153: “Patents shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or…
Read MoreWhat is the significance of the January 23, 2012 date mentioned in MPEP 1214.05?
The date January 23, 2012, mentioned in MPEP 1214.05, is significant because it marks a change in the handling of withdrawn claims during the patent appeal process. The MPEP states: “Where, in an appeal brief filed before January 23, 2012, an appellant withdraws some of the appealed claims […] the withdrawal is treated as an…
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