1414 Content of Reissue Oath/Declaration
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The reissue oath/declaration is an essential part of a reissue application and must be filed with the application, or within the time period set under 37 CFR 1.53(f) along with the required surcharge in order to avoid abandonment.
All reissue oaths or declarations must contain the following:
- A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid—
- (1) by reason of a defective specification or drawing, or
- (2) by reason of the patentee claiming more or less than patentee had the right to claim in the patent; and
- A statement of at least one error which is relied upon to support the reissue application, i.e., as the basis for the reissue;
I. A STATEMENT THAT THE APPLICANT BELIEVES THE ORIGINAL PATENT TO BE WHOLLY OR PARTLY INOPERATIVE OR INVALID BY REASON OF A DEFECTIVE SPECIFICATION OR DRAWING, OR BY REASON OF THE PATENTEE CLAIMING MORE OR LESS THAN PATENTEE HAD THE RIGHT TO CLAIM IN THE PATENT
In order to satisfy this requirement, a declaration can state for example:
- “Applicant believes the original patent to be partly inoperative or invalid by reason of a defective specification or drawing.”
- “Applicant believes the original patent to be partly inoperative or invalid by reason of the patentee claiming more than patentee had a right to claim in the patent.”
- “Applicant believes the original patent to be partly inoperative or invalid by reason of the patentee claiming less than patentee had a right to claim in the patent.”
II. A STATEMENT OF AT LEAST ONE ERROR WHICH IS RELIED UPON TO SUPPORT THE REISSUE APPLICATION (I.E., THE BASIS FOR THE REISSUE)
- (A) A reissue applicant must acknowledge the existence of an error in the specification, drawings, or claims, which error causes the original patent to be defective.
- (B) Applicant need only specify in the reissue oath/declaration one of the errors upon which reissue is based. Where applicant specifies one such error, this requirement of a reissue oath/declaration is satisfied. Applicant may specify more than one error.
- (C) It is not sufficient for an oath/declaration to merely state “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.” Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
- (D) For continuation or divisional reissue applications:
- (1) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251.
- (2) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is, or will be abandoned, the copy of the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP), and the examiner should check to ensure that the oath/declaration identifies an error which is still being corrected in the continuation application.
- (3) Where a divisional reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, the reissue oath/declaration should be accepted by OPAP, because it is an oath/declaration, though it may be improper under 35 U.S.C. 251.
1414.01 Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012
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(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor’s oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
(c) The inventor, or each individual who is a joint inventor of a claimed invention, in a reissue application must execute an oath or declaration for the reissue application, except as provided for in § 1.64, and except that the inventor’s oath or declaration for a reissue application may be signed by the assignee of the entire interest if:
(1) The application does not seek to enlarge the scope of the claims of the original patent; or
(2) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
(d) If errors previously identified in the inventor’s oath or declaration for a reissue application pursuant to paragraph (a) of this section are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.
(e) The inventor’s oath or declaration for a reissue application required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f), except that the provisions of § 1.53(f)(3) do not apply to a reissue application.
(f)
(1) The requirement for the inventor’s oath or declaration for a continuing reissue application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed reissue application may be satisfied by a copy of the inventor’s oath or declaration from the earlier-filed reissue application, provided that:
- (i) The inventor, or each individual who is a 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 for in § 1.64;
- (ii) The continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or
- (iii) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
(2) If all errors identified in the inventor’s oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.
(g) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1), will be placed in the file record of the reissue application, but may not necessarily be reviewed by the Office.
1414.02 Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012
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(a) The reissue oath or declaration in addition to complying with the requirements of § 1.63, must also state that:
(1) The applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent, stating at least one error being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue application up to the time of filing of the oath or declaration under this paragraph arose without any deceptive intention on the part of the applicant.
(b)
(1) For any error corrected, which is not covered by the oath or declaration submitted under paragraph (a) of this section, applicant must submit a supplemental oath or declaration stating that every such error arose without any deceptive intention on the part of the applicant. Any supplemental oath or declaration required by this paragraph must be submitted before allowance and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 U.S.C. 251 made by the examiner where it is indicated that the submission of a supplemental oath or declaration as required by this paragraph will overcome the rejection.(2) For any error sought to be corrected after allowance, a supplemental oath or declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant.
(c) Having once stated an error upon which the reissue is based, as set forth in paragraph (a)(1), unless all errors previously stated in the oath or declaration are no longer being corrected, a subsequent oath or declaration under paragraph (b) of this section need not specifically identify any other error or errors being corrected.
(d) The oath or declaration required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f).
(e) The filing of any continuing reissue application which does not replace its parent reissue application must include an oath or declaration which, pursuant to paragraph (a)(1) of this section, identifies at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application. All other requirements relating to oaths or declarations must also be met.
I. ERROR WITHOUT DECEPTIVE INTENT
A statement in the reissue oath or declaration that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant is required for a reissue application filed before September 16, 2012.
II. THE REISSUE OATH/DECLARATION MUST COMPLY WITH PRE-AIA 37 CFR 1.63
The reissue oath/declaration must include the averments required by 37 CFR 1.63(a) and (b), e.g., that applicants for reissue:
- have reviewed and understand the contents of the specification, including the claims, as amended by any amendment specifically referred to in the oath/declaration;
- believe the named inventor or inventors to be the original and the first inventor or inventors of the subject matter which is claimed and for which a patent is sought; and
- acknowledge the duty to disclose to the Office all information known to the person to be material to patentability as defined in 37 CFR 1.56.
1414.03 Supplemental Reissue Oath/Declaration
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I. REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012
For applications filed on or after September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, a supplemental reissue oath or declaration is not required. However, where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue, the applicant must explicitly identify on the record an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment).
II. REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012
For applications filed before September 16, 2012, a supplemental oath/declaration is required where any “error” under pre-AIA 35 U.S.C. 251 has been previously corrected, or is being corrected at the time the supplemental reissue oath/declaration is submitted, and the error was not covered in a previously filed reissue oath/declaration.
The supplemental reissue oath/declaration must state that every error which was corrected in the reissue application not covered by the prior oath(s)/declaration(s) submitted in the application arose without any deceptive intention on the part of the applicant
A. When An Error Must Be Specifically Identified In The Supplemental Oath/Declaration
In the supplemental reissue oath/declaration, there is no need to specifically identify any additional error which is relied upon to support the reissue application if:
- an error to support a reissue has been previously and properly stated in a reissue oath/declaration in the publication; and
- that error is still being corrected in the reissue application.
B. Supplemental Oath/Declaration Must Be Submitted Before Allowance
The supplemental oath/declaration must be submitted before allowance.
Where applicant seeks to correct an error after allowance of the reissue application, a supplemental reissue oath/declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant. The supplemental reissue oath/declaration submitted after allowance will be directed to the error applicant seeks to correct after allowance.
C. Supplemental Oath/Declaration In Broadening Reissue
A broadening reissue application must be applied for by all of the inventors (patentees), that is, the original reissue oath/declaration must be signed by all of the inventors.
If a supplemental oath/declaration in a broadening reissue application is subsequently needed in the application in order to fulfill the requirements of pre-AIA 37 CFR 1.175, the supplemental reissue oath/declaration must be signed by all of the inventors
If a joint inventor refuses or cannot be found or reached to sign a supplemental oath/declaration, a supplemental oath/declaration listing all the inventors, and signed by all the available inventors may be filed provided it is accompanied by a petition under 37 CFR 1.183 along with the petition fee, requesting waiver of the signature requirement of the nonsigning inventor.
If a sole inventor refuses or cannot be found or reached to sign a supplemental oath/declaration, a supplemental oath/declaration listing the sole inventor, and signed by the assignee or a party who otherwise shows sufficient proprietary interest in the matter justifying such action may be filed provided it is accompanied by a grantable petition under 37 CFR 1.183, along with the petition fee, requesting waiver of the signature requirement of the nonsigning inventor.
