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1410    Content of Reissue Application

MPEP SECTION SUMMARY This section includes coverage of the content and formatting of a reissue application. Essentially, the specification (including the claims and any drawings) of the reissue application is the copy of the printed patent for which reissue is requested that is submitted by applicant as part of the initial application papers. This section also discusses amendments submitted at the time of the filing of a reissue application.

The specification (including the claims and any drawings) of the reissue application is the copy of the printed patent for which reissue is requested that is submitted by applicant as part of the initial application papers.

• The copy of the printed patent must be submitted in double column format, each page of double column format being on only one side of the piece of paper.
• A re-typed specification is not acceptable in a reissue application; the full copy of the printed patent must be used.
• An applicant for reissue is required to file a reissue oath or declaration which, must comply with 37 CFR 1.63 and 37 CFR 1.175.
• Where the patent has been assigned, the reissue applicant must also provide a consent of assignee to the reissue and evidence of ownership.
• Where the patent has not been assigned, the reissue applicant should affirmatively state that the patent is not assigned.

An amendment may be submitted at the time of filing of a reissue application. The amendment may be made either by:

• physically incorporating the changes within the specification by cutting the column of the printed patent and inserting the added material and rejoining the remainder of the column and then joining the resulting modified column to the other column of the printed patent. Markings must be used to show the changes.; or
• providing a separate amendment paper with the reissue application.
  • In either case, the reissue application must be filed with claims.

If the changes to be made to the patent are so extensive that reading and understanding the specification is extremely difficult and error-prone, a clean, typed copy of the specification may be submitted if accompanied by a grantable petition under 37 CFR 1.183 for waiver of 37 CFR 1.125(d) and 37 CFR 1.173(a)(1).

• Pursuant to 37 CFR 1.173(a)(1), applicant is required to include a copy of any disclaimer, certificate of correction, reexamination certificate, or certificate from a trial before the Patent Trial and Appeal Board (PTAB) issued in the patent for which reissue is requested. 
• It should also be noted that 37 CFR 1.178(b) requires reissue applicants to call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences, reissues, reexaminations, or litigation (litigation covers any papers filed in the court or issued by the court, such as, for example, motions, pleadings, and court decisions including court orders) and the results of such proceedings.
  • This duty is a continuing duty, and runs from the time the reissue application is filed until the reissue application is abandoned or issues as a reissue patent.

It is no longer required that the reissue applicant physically surrender the original patent.

Where appropriate, the reissue applicant may provide a claim for priority/benefit under 35 U.S.C. 119 or 120, and may also file an Information Disclosure Statement.

 For any reissue filed on or after September 16, 2012, the priority/benefit information must be in an application data sheet (ADS).

• An ADS is also required if an application under 35 U.S.C. 111(a) is made by a person other than the inventor or if the oath or declaration does not identify the entire inventive entity.

The oath or declaration, any matters ancillary thereto (such as the consent of assignee), and the basic filing fee, search fee, and examination fee may be submitted after the filing date.

The assignee entity is established by a statement on behalf of all the assignees.

The reissue applicant must provide a priority/benefit claim in the reissue application because such claims do not carry over from the patent for which reissue is being sought.

Where appropriate the reissue applicant may also file an information disclosure statement.

MPEP SECTION SUMMARY This section covers the reissue applicant and the inventor's oath or declaration for reissue applications filed before or on or after September 16, 2012. For reissue applications filed on or after September 16, 2012, the reissue applicant is the original patentee, or the current patent owner, if there has been an assignment.

  Section Frequency Chart

 I.   REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012

For reissue applications filed on or after September 16, 2012, the reissue applicant is the original patentee, or the current patent owner, if there has been an assignment.

• However the inventor, or each individual inventor who is a joint inventor of a claimed invention, must execute an oath or declaration for the reissue application, except as otherwise provided in 37 CFR 1.175(c).
• A reissue applicant may file a substitute statement in lieu of the inventor’s oath or declaration.
• In addition, the inventor’s oath or declaration may be signed by the assignee of the entire interest if (a) the reissue application does not seek to enlarge the scope of the claims of the original patent or (b) the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest.

For continuation or divisional reissue applications, a copy of the inventor’s oath or declaration from the earlier-filed reissue application may be used, provided that:

• the inventor, or each joint inventor of a claimed invention, in the reissue application executed an inventor’s oath or declaration for the earlier-filed reissue application, except as provided in 37 CFR 1.64;
• the continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or
• the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest.

 II.   REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012

For reissue applications filed before September 16, 2012, the reissue application must be made by the inventor or the person(s) applying for a patent in place of the inventor, except that the application for reissue may be made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.

The reissue oath must be signed and sworn to by all the inventors, or declaration made by all the inventors.

• Alternatively, where the reissue application does not seek to enlarge the scope of any of the claims of the original patent, the reissue oath may be made and sworn to, or declaration made, by the assignee of the entire interest.

If an inventor is to be added in a reissue application, a proper reissue oath or declaration including the signatures of all of the inventors is required, except where the assignee of the entire interest can properly sign the reissue oath or declaration.

• If one or more inventors are being deleted in a reissue application, an oath or declaration must be supplied over the signatures of the remaining inventors, except where the assignee of the entire interest can properly sign the reissue oath or declaration.
  
  

III. ADDING OR DELETING AN INVENTOR

If an inventor is to be added in a reissue application, a proper reissue oath or declaration including the signatures of all of the inventors is required, except where the assignee of the entire interest can properly sign the reissue oath or declaration.

• If one or more inventors are being deleted in a reissue application, an oath or declaration must be supplied over the signatures of the remaining inventors, except where the assignee of the entire interest can properly sign the reissue oath or declaration.
• Note that although an inventor being deleted in a reissue application need not sign the oath or declaration, if that inventor to be deleted has any ownership interest in the patent (e.g., that inventor did not assign away their rights to the patent), the signature of that inventor must be supplied in a consent to the filing of the reissue application.
  
  

MPEP SECTION SUMMARY This section discusses the process for the assignee to consent to the reissue. Written consent of all assignees must accompany the reissue application along with proof of ownership of an assignee.

I.   WRITTEN CONSENT

A reissue application, whether filed before, on, or after September 16, 2012, must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent.

The consent of assignee must be signed by a party authorized to act on behalf of the assignee.

• For applications filed on or after September 16, 2012, the consent may be signed by the assignee or a patent practitioner of record.
• For applications filed before September 16, 2012, the consent must be signed by the assignee. 

The consent to the reissue application may use language such as:

Where the written consent of all the assignees to the filing of the reissue application cannot be obtained, applicant may under appropriate circumstances petition to the Office of Petitions for a waiver under 37 CFR 1.183 of the requirement of 37 CFR 1.172, to permit the acceptance of the filing of the reissue application.

• The petition fee must be included with the petition.

Where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application, and the parent reissue application is not to be abandoned, the copy of the consent is generally not adequate for the continuation reissue application.

• Where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application, and the parent reissue application is, or will be abandoned, the copy of the consent should be accepted by the Office.

Other than the exception noted below, where a divisional reissue application is filed with a copy of the assignee consent from the parent reissue application, regardless of whether or not the parent reissue application is to be abandoned, the copy of the assignee consent should not be accepted. 

• If a divisional reissue application is being filed in response to a restriction requirement made in the parent reissue application, the assignee need not file a consent to the divided out invention now being submitted in the divisional application because consent has already been provided in the parent reissue application. 

II.   PROOF OF OWNERSHIP OF ASSIGNEE

The assignee that consents to the filing of the reissue application (as discussed above) must also establish that it is the assignee, i.e., the owner, of the patent.

The assignee must establish its ownership in accordance by:

• filing in the reissue application documentary evidence of a chain of title from the original owner to the assignee; or
• specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).

» 1411 Form of Specification