Chapter 1400 Flashcards
What are the 4 ways an issued patent be corrected?
by reissue
by issuance of a certificate of correction, (which becomes a part of the patent)
by disclaimer
by reexamination
When does the Patent Office reissue a patent?
The Patent Office may reissue a patent when there is an error in the patent that causes the patent to be wholly or partly inoperative or invalid, and when the error occurred without deceptive intent
There must be at least 1 error in the patent to provide grounds for reissue of the patent.
No error, no reissue
What are the most common grounds for reissue?
the claims are too narrow or broad
the disclosure contains inaccuracies
the applicant failed to or incorrectly claimed foreign priority
the applicant failed to make reference to, or incorrectly made reference to, prior co-pending applications
does NOT include errors related to spelling, grammar, and other typographical reasons do not cause the patent to be wholly or partly inoperative or invalid, thus are generally not valid grounds for reissue
What are other errors that may be corrected through reissue?
an applicant’s failure to appreciate the full scope of the invention
the misjoinder of inventors in a divisional application
failure to file a certified copy of the original foreign application to obtain the right of foreign priority
failure to adequately claim benefit of a co-pending application
errors in the drawings that are substantive in nature
Do the terms in the reissued patents have to be the same as the original patent?
Yes. Deleting a claim from the original patent with earlier priority claimed, will not extend the length of the patent term
What is the patent term on applications filed on or after June 8, 1995?
Patent term of 20 years from the filing date of the earliest US application to which priority is claimed (excludes provisional applications)
What is a Certificate of Correction?
The Patent Office may issue a certificate of correction for correction of applicant’s mistakes that were made in good faith
What are the 3 categories of mistakes?
a clerical mistake
a typographical error
a mistake of minor character
(it is not considered minor if it materially affects the scope or meaning of the patent, or constitutes new matter)
What are examples of cases certificate of correction CANNOT be used?
it cannot be used to correct an applicant’s failure to claim priority to a provisional application.
it cannot rectify an applicant’s failure to claim priority to a provisional application but it can rectify priority claims based on other applications
(section 119(e) states that claim of a priority to a provisional application must occur during pendency of the application)
What is a Disclaimer?
A statement filed by an owner of a patent (inventor or assignee) of a patent application, in which the owner relinquishes legal rights to the patent
It needs to be signed by the owner of the patent or application and the person empowered by the owner
registered practitioner acting in representative capacity but not of record CANNOT sign the disclaimer
What are 2 types of disclaimers?
Statutory
Terminal
What is a statutory disclaimer?
A statement in which a patent owner relinquishes legal rights to one or more claims of a patent
What is a terminal disclaimer?
Disclaims or dedicates to the public the entire term or any terminal portion of the term of a patent
When is the terminal disclaimer used?
Often used to overcome non-statutory double patenting rejection
