Chapter 1400 Flashcards
1
Q
Title of Chapter
A
Correction of Patents
2
Q
Reissue (USC)
A
- 35 USC 251
- patent can be amended in 7 ways
reissue,
the issuance of a certificate of correction which becomes a part of the patent,
disclaimer,
reexamination,
inter partes review,
post grant review, and
covered business method review.
3
Q
Grounds for Reissue
A
- at least 1 error
- error of:
- > claim scope
- > inventorship error
- > priority to foreign app
- > benefit claim to domestic app
- > drawing
4
Q
when to file reissue
A
w/in 2 years of grant of original app
CANNOT enlarge claim scope, only narrow
get filing date w/o oath, filing fee, search fee or examination fee
5
Q
patent term
A
shortened through terminal disclaimer, never lengthened
6
Q
reissue filed on/after 9.16.12
A
- reissue applicant original patentee or current patent owner
- inventors sign oath
- continuation/divisional reissue apps, copy of oath my be used
- need consent of ALL assignees
7
Q
reissue filed before 9.16.12
A
- must be made by inventor/person in place of inventor or made by assignee if reissue doesn’t enlarge scope
- oath signed by all inventors
- need consent of ALL assignees
8
Q
recapture of canceled subject matter
A
3 step test
- determine if reissue claims broader in scope than original
- determine if broader aspects of reissue claims relate to subject matter suspended in original prosecution
- determine if reissue claims materially narrowed in other respects, claims not enlarged, and avoid recapture rule
9
Q
broadening reissue claims
A
- 35 USC 251
- enlarges scope of EVERY claim of original app
- w/in 2 years of grant of original app
- adding limitation is not broadening
- oath
- on/after 9.16.12, filed by all inventors, supplemental not needed
- before - applied for by all inventors
10
Q
claiming priority
A
- claim under 35 USC 119 (A) - (d) must be made even if made in original
11
Q
delay in examination
A
2 months to allow public to review
12
Q
interference / derivation
A
- interference only pre AIA 102(g)
- derivation only post AIA 102
13
Q
amendments to drawings
A
not allowed
14
Q
a ___ is necessary in order to ensure common ownership of reissue patents throughout remainder of unexpired term of original patent
A
terminal disclaimer
