MPEP Ch. 1400 Flashcards
MPEP Ch. 1400
Correction of Patents
Reissues
Applicant must make statement that patent is wholly or partially inoperative or invalid and offer to surrender the original patent. Errors are corrected and it is examined like a new app.
Grounds for Reissue
Usually the claims are too broad or too narrow, the disclosure contains inaccuracies, the applicant failed to perfect a claim for priority, or the applicant failed to make proper reference to cop ending app(s).
Limitations on Reissue
Non enabling app is fatally defective.
Subject matter deliberatively given up during prosecution cannot be recovered by reissue.
Reissue seeking broader claims must be filed within two years of the patent issue date.
Amendments to Reissue
Unlike regular patents, removal of words is done in a single bracket.
New material is still underlined.
Reissue - Must include
An offer to surrender original patent;
The written consent of the assignee to the reissue if the original inventors signed the declaration or oath;
A copy of the spec and claims of the original patent with the material deleted in brackets and added underlined;
A fee;
A reissue oath signed and sworn by all inventors where the scope of the claims is being enlarged, or by the signee of the entire interest or the inventors where the scope is not being enlarged.
Oath must include statement of wholly or partially inoperative or invalid.
New drawings must also be provided.
Restrictions
Applicant can request separate patents issue where the original patent contains independent and distant inventions.
Continuations
A continuation can be filed in a reissue because it is an app. Not true for reexams.
Reexams
Unlike Reissues, anyone can file. Prior art is limited to patents and printed publications. Cannot broaden claims, there is no automatic extension of deadlines. There is no requirement the patent be wholly or partially inoperative or invalid.
Certificates of Correction
Corrects mistakes of a clerical or typographical nature, either by the PTO (free) or the applicant (fee). Substantive mistakes cannot be corrected using a CoC.
For example, inventorship that is in error but done so without deceptive intent, failure to claim proper priority, or errors made by an examiner’s amendment may be corrected with a CoC.
Disclaimer
A renunciation (giving up) of one or more claims in a patent. One or more claims that are invalid may be given up without invalidating the remaining claims.
