1430 Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette
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(b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under § 1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.
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The announcement gives interested members of the public an opportunity to submit to the examiner information pertinent to the patentability of the reissue application.
Where a “Notice to File Missing Parts of Reissue Application – Filing Date Granted” has been mailed by the Office for a reissue application, the reissue application will not necessarily be announced in the Official Gazette until all elements of the Notice to File Missing Parts have been complied with.
The filing of a continued prosecution application (CPA) of a design reissue application under 37 CFR 1.53(d) will not be announced in the Official Gazette.
If applicant files a Request for Continued Examination (RCE) of the reissue application, such filing will not be announced in the Official Gazette.
- An RCE continues prosecution of the existing reissue application and is not a filing of a new application.
1440 Examination of Reissue Application
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(a) A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.
(b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
An original claim, if re-presented in a reissue application, will be fully examined in the same manner, and subject to the same rules as if being presented for the first time in an original non-reissue, nonprovisional application, except that division will not be required by the examiner.
The prior art available during the examination of the reissue application may differ from that available during the examination of the patent for which reissue is requested depending on the effective filing date of the claims in the reissue application.
Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required).
I. DETERMINING PATENTABILITY OVER THE PRIOR ART
The available prior art that can be applied during the examination of a reissue application is generally the same as that under which the original application was examined. In some cases, however, the reissue is subject to different available prior art than was the original application.
For example, a situation may arise where an application filed April 1, 2013, has a benefit claim to a prior application having a filing date of December 12, 2012, and all claims are fully supported by the 2012 application. In this situation, the 2013 application would be examined with respect to the prior art available under pre-AIA35 U.S.C. 102 and 103. If a reissue application is filed on the subsequent patent in which a claim presented must rely on the April 1, 2013 disclosure for 35 U.S.C. 112 support (i.e., cannot rely solely on the parent application), that newly presented claim has an effective filing date of April 1, 2013. In this situation, the ENTIRE reissue application is now subject to the prior art available under AIA first inventor to file provisions. See MPEP §§ 2151-2156 for a discussion of the prior art available under the first inventor to file provisions of the AIA. In addition, this reissue application would be subject to pre-AIA 35 U.S.C. 102(g), because pre-AIA 35 U.S.C. 102(g) applies to each claim of an application for patent, and any patent issued thereon, if such application or patent contains, or contained at any time: (1) A claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains, or contained at any time, such a claim.
Another situation may arise in which a benefit claim to an application filed before March 16, 2013, is added in a reissue application based on an AIA patent.
- If all the claims ever presented in the reissue application and underlying patent are fully supported by the prior application filed before March 16, 2013, then the reissue application would be examined only under pre-AIA 35 U.S.C. 102 and 103 because the application was entitled to the benefit of the earlier filed application as evidenced by appropriate benefit claim to the filing date of the prior filed application.
II. EFFECTIVE DATE FOR CLAIMS OF REISSUE APPLICATION
The claims in a reissue application are treated as if they were presented in the patent being reissued for purposes of evaluating patentability over prior art, i.e., as if they had the same effective filing date as the original patent.
- The rationale for such treatment is that a reissue patent replaces the original patent, and thus is merely continuing the patent privilege of the original patent as opposed to being an independent (regular) patent with its own privilege (and its own term).
- Accordingly, the claims of a reissue application are evaluated for patentability as if they had the same effective filing date as the original patent, even though the reissue application could not make a benefit claim under 35 U.S.C. 120 to the original patent.
