1444 Review of Reissue Oath/Declaration
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I. REQUIREMENTS OF REISSUE OATH OR DECLARATION
Much of the required content of a reissue oath or declaration will differ based on the filing date of the reissue application.
However, 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—
- 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; 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.
II. REVIEW OF REISSUE OATH OR DECLARATION
An initial reissue oath/declaration is submitted with the reissue application (or within the time period set for filing the oath/declaration in a Notice To File Missing Parts under 37 CFR 1.53(f)).
- Where the reissue oath/declaration fails to comply with 37 CFR 1.175(a), the examiner will so notify the applicant in an Office action, rejecting the claims. In reply to the Office action, a replacement reissue oath/declaration should be submitted dealing with the noted defects in the reissue oath/declaration.
III. ERRORS PREVIOUSLY IDENTIFIED NO LONGER RELIED UPON AS THE BASIS FOR REISSUE
A different situation may arise where the initial reissue oath/declaration does properly identify one or more errors under 35 U.S.C. 251 as being the basis for reissue, however, because of changes or amendments made during prosecution, none of the identified errors are relied upon any more. The required action will differ based on the filing date of the reissue application.
A. Application filed on or after September 16, 2012
For reissue applications filed on or after September 16, 2012 a supplemental reissue oath or declaration is not required where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue.
B. Application filed before September 16, 2012
For reissue applications filed before September 16, 2012, where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue, a supplemental oath/declaration will be needed to identify at least one error now being relied upon as the basis for reissue, even if a prior oath/declaration was earlier found proper by the examiner.
IV. SUPPLEMENTAL REISSUE OATH/DECLARATION UNDER PRE-AIA 37 CFR 1.175(b)(1):
For applications filed before September 16, 2012, pre-AIA 37 CFR 1.175(b)(1) requires that for any error corrected which is not covered by a previously submitted compliant reissue oath or declaration, applicant must submit a supplemental oath or declaration stating that every such error arose without any deceptive intention on the part of the applicant.
A supplemental oath/declaration will be required where:
- the application is otherwise (other than the need for this supplemental oath/declaration) in condition for allowance;
- amendments or other corrections of errors in the patent have been made subsequent to the last oath/declaration filed in the application; and
- at least one of the amendments or other corrections corrects an error under 35 U.S.C. 251.
The examiner will issue a final Office action where the application is otherwise in condition for allowance, and amendments or other corrections of error in the patent have been made subsequent to the last oath/declaration filed in the application.
- The examiner will be introducing a rejection into the case for the first time in the prosecution, when the claims have been determined to be otherwise allowable.
This introduction of a new ground of rejection will not prevent the action from being made final on a second or subsequent action because of the following factors:
- The finding of the case in condition for allowance is the first opportunity that the examiner has to make the rejection;
- The rejection is being made in reply to, i.e., was caused by, an amendment of the application (to correct errors in the patent);
- All applicants are on notice that this rejection will be made upon finding of the case otherwise in condition for allowance where errors have been corrected subsequent to the last oath/declaration filed in the case, so that the rejection should have been expected by applicant; and
- The rejection will not prevent applicant from exercising any rights to cure the rejection, because applicant need only submit a supplemental oath/declaration with the above-described language, and it will be entered to cure the rejection.
Where the application is in condition for allowance and no amendments or other corrections of error in the patent have been made subsequent to the last oath/declaration filed in the application, a supplemental reissue oath/declaration should not be required by the examiner.
- Instead, the examiner should issue a Notice of Allowability indicating allowance of the claims.
V. AFTER ALLOWANCE
Where applicant seeks to correct an error after allowance of the application, any amendment of the patent correcting the error must be submitted.
- No amendment may be made as a matter of right in an application after the mailing of the notice of allowance.
- An amendment filed under 37 CFR 1.312 must be filed before or with the payment of the issue fee and may be entered on the recommendation of the primary examiner, and approved by the supervisory patent examiner, without withdrawing the case from issue.
Because the amendment seeks to correct an error in the patent, the amendment will affect the disclosure, the scope of a claim, or add a claim.
The remarks accompanying the amendment must fully and clearly state:
- (A) why the amendment is needed;
- (B) why the proposed amended or new claims require no additional search or examination;
- (C) why the claims are patentable; and
- (D) why they were not presented earlier.
» 1445 Reissue Application Examined in Same Manner as Original Application
