MPEP 1400: Reissue

Question 1

What are the limits of reissue?

Answer 1

i. A patent that is invalid as not enabling or which does not disclose best mode cannot be corrected by a reissue. It is fatally defective.
ii. Subject matter deliberately given up during prosecution of the parent cannot be recovered by reissue.
iii. Only patent owner can seek reissue, not a third-party.

Question 2

Broadening Claims in Reissue

Answer 2

Reissue seeking broader claims must be filed within two years of the issue date of the patent.

Question 3

Assembly of Reissue Application

Answer 3

1. Additions underlined;
2. Deletions bracketed;
3. Claims not renumbered; and
4. Any disclosures, reexam certificates, or certificates of correction must be included.
5. Assembled by using a copy of the original patent, one side per page.

Question 4

Filing Fee

Answer 4

Same as utility patent, namely:

1. Each independent claim in addition to the independent claims in the patent requires a fee;
2. Each claim in addition to 20 and in addition to the number of claims in the original patent similarly requires a fee.

Question 5

Amendments

Answer 5

1. Amendments are made to the specification or claims after filing by submitting the description or entire claim with all matter deleted being bracketed, and all matter added underlined.
   — Additions/Deletions must encompass all
   changes made in the text of the original patent.
   —Entire paragraph can be deleted with a direction to do so.
2. A claim for foreign priority must be made in reissue application even if a proper claim was made in the original application.

Question 6

Contents Required in a Reissue

Answer 6

1. An offer to surrender the original patent grant;
2. Written consent of the assignee to the reissue if the original inventors signed the declaration or oath (not required if the assignee signed a substitute statement by the assignee);
3. A copy of the specification and claims of the original patent with the material being deleted bracketed and the material added underlined;
4. The fee; and
5. A reissue oath signed and sworn to:
   - —- By all inventors where the scope of the claims is being enlarged; or
   - —- By the assignee of the entire interest or the inventors where the scope of the claims is not be enlarged or where the owner filed the original application as the “applicant” using a Substitute Statement.

Question 7

Accessibility to Public

Answer 7

Reissue files are available to the public when it is pending.

Question 8

Restriction in Reissue

Answer 8

i. PTO cannot restrict in a reissue application as to originally claimed subject matter.
ii. If applicant introduces new matter, the PTO can restrict from the originally claimed matter.

Question 9

Reissue and Continuations

Answer 9

i. A reissue is an application and therefore can be filed either under 53(b) or 53(d).
ii. NOTE: A reexamination is not a new application, and therefore no continuations.