1451 Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending
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(b) MULTIPLE REISSUED PATENTS - The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
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(a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
(b) If applicant files more than one application for the reissue of a single patent, each claim of the patent being reissued must be presented in each of the reissue applications as an amended, unamended, or canceled (shown in brackets) claim, with each such claim bearing the same number as in the patent being reissued. The same claim of the patent being reissued may not be presented in its original unamended form for examination in more than one of such multiple reissue applications. The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim.
(c) If any one of the several reissue applications by itself fails to correct an error in the original patent as required by 35 U.S.C. 251 but is otherwise in condition for allowance, the Office may suspend action in the allowable application until all issues are resolved as to at least one of the remaining reissue applications. The Office may also merge two or more of the multiple reissue applications into a single reissue application. No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself.
The mere fact that the application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself, since it is possible to file a 35 U.S.C. 111(a) continuing application of a reissue application.
The filing of a regular continuation or divisional application (e.g., a Bauman type continuation or divisional application) has at least two significant effects.
- First, the claims in a Bauman type continuation or divisional application will not have the same effective U.S. filing date as the original patent.
- This is because a reissue application is necessarily filed after the patenting of the original application.
- Therefore, a Bauman type continuation or divisional application of the reissue application could not satisfy the copendency requirement of 35 U.S.C. 120 with respect to the original patent.
Indicia that a continuing reissue application is being filed are:
- A reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration.
- A specification and/or claims in proper double column reissue format.
- Amendments in proper format.
- A statement of assignee ownership and consent by assignee.
- A correct transmittal letter identifying the application as a reissue filing.
- An identification of the application as being "a reissue continuation of application number [the parent reissue application]" or "a continuation and reissue of application number [the parent reissue application]" or equivalent language, rather than being "a continuation of reissue application number [the parent reissue application]."
The following are examples of acceptable identification in the first sentence(s) of the specification that provide the appropriate continuity language for a continuation or divisional reissue application (as opposed to a Bauman type non-reissue continuing application).
Example 1: This application is a continuation reissue of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 2: This application is a continuation reissue of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567, now Re 99,999.
Example 3: This application is a reissue continuation of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 4: This application is a reissue divisional of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 5: This is an application for reissue of U.S. Patent No. 9,234,567, and is a continuation of application no. 15/123,456, which is also an application for reissue of U.S. Patent No. 9,234,567.
Example 6: This is an application for reissue of U.S. Patent No. 9,234,567, and is a divisional of application no. 15/123,456, which is also an application for reissue of U.S. Patent No. 9,234,567.
Example 7: This is an application for reissue of U.S. Patent No. 9,234,567 and claims benefit under 35 U.S.C. 120 as a continuation of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 8: This is an application for reissue of U.S. Patent No. 9,234,567 and claims benefit under 35 U.S.C. 120 as a continuation of application no. 15/123,456.
Example 9: This is an application for reissue of U.S. Patent No. 9,234,567. This application claims benefit under 35 U.S.C. 120 as a continuation of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
It is recommended that the first line of the specification still contain language set forth in the above examples to help ensure that the Office recognizes the application as a continuation reissue application or divisional reissue application (as opposed to a Bauman type non-reissue continuing application) even though the application data sheet contains the benefit claim(s).
Note: For applications filed on or after September 16, 2012, domestic benefit claims under 37 CFR 1.78 must be made in an application data sheet (ADS).
- However, it is recommended that the first line of the specification still contain language set forth in the above examples to help ensure that the Office recognizes the application as a continuation reissue application or divisional reissue application (as opposed to a Bauman type non-reissue continuing application).
I. DIVISIONAL REISSUE APPLICATIONS
Whenever a divisional reissue application is filed with a copy of the assignee consent and a copy of the oath/declaration from the parent reissue application, the copy of the assignee consent and the reissue oath/declaration should both be accepted by the Office of Patent Application Processing (OPAP) and the divisional reissue application accorded a filing date so long as all other filing requirements are met.
The examiner may require restriction in a reissue application between the original claims of the patent and any newly added claims which are directed to a separate and distinct invention(s).
- As a result of such a restriction requirement, divisional reissue applications may be filed for each of the inventions identified in the restriction requirement.
All the claims of the patent to be reissued must be presented in each reissue application in some form, i.e., as amended, as unamended or as canceled.
A rejection under 35 U.S.C. 251, in that the reissue application is not correcting an error in the original patent, because original claim 1 would be superseded by the reissuance of claim 1 in the other reissue application.
A rejection under 35 U.S.C. 112, in that claim 1 is indefinite because the invention of claim 1 is not particularly pointed out and distinctly claimed. Claim 1 presents one coverage in divisional reissue application X and another in the present reissue application. This is inconsistent.
The reissue applicant should then be advised to follow a procedure similar to the following example:
If there are patent claims 1 – 10 in two divisional reissue applications and an applicant wishes to revise claim 1, which is directed to AB (for example) to ABC in one divisional reissue application, and to ABD in a second divisional reissue application, applicant should do the following: Claim 1 in the first divisional reissue application can be revised to recite ABC. Claim 1 in the second divisional reissue application would be canceled, and new claim 11 would be added to recite ABD. The physical cancellation of claim 1 in the second divisional reissue application will not prejudice applicant’s rights in the amended version of claim 1 because those rights are retained via the first reissue application. Claim 1 continues to exist in the first reissue application, and both the first and second reissue applications taken together make up the totality of the correction of the original patent.
If the same or similar claims are presented in more than one of the multiple reissue applications, the possibility of statutory double patenting or non-statutory (judicially created doctrine) double patenting should be considered by the examiner during examination, and the appropriate rejections made.
A. Consent of the Assignee
A copy of the assignee consent is only acceptable if the divisional reissue application is correcting an error for which consent was previously made.
- For example, in a divisional reissue application 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 provided in the divisional reissue application if the assignee consent provided covers the error being corrected in the child divisional reissue application.
Whenever a divisional reissue application is filed with a copy of the assignee consent from the parent reissue application, but with a newly executed reissue oath/declaration, the copy of the assignee consent from the parent reissue application should not be accepted.
- Submission of a new oath or declaration is indicative of correction of a different error.
- The copy of the assignee consent from the parent reissue application does not indicate that the assignee has consented to the addition of the new invention of the divisional reissue application to the original patent.
- In such circumstances, the Office of Patent Application Processing (OPAP) will accord the divisional reissue application a filing date, and the examiner should reject the claims under 35 U.S.C. 251 and require the submission of a new assignee consent.
B. Reissue Oath/Declaration
Whenever a divisional reissue application is filed with a copy of the oath/declaration from the parent reissue application, the copy of the reissue oath/declaration in the divisional reissue application should be accepted by OPAP, because it is an oath/declaration, even though it may be improper under 35 U.S.C. 251 or 37 CFR 1.175.
1. Copy of Reissue Oath/Declaration from Parent Reissue Application(a) Continuing Reissue Applications Filed On or After September 16, 2012
In the remarks accompanying a continuing reissue application, the applicant should explain why the filing of the copy of the oath/declaration from the parent reissue application is sufficient.
If the copy of the oath or declaration from the parent reissue application does not comply with 37 CFR 1.175(f)(1), the examiner should reject the claims of the continuing (i.e., divisional or continuation) reissue application under 35 U.S.C. 251 as being based on a defective oath/declaration, and require a new oath/declaration.
- In addition, the examiner should check to see if the error statement in the copy of the oath/declaration covers an error being corrected in the continuing reissue application.
(b) Continuing Reissue Applications Before September 16, 2012
The requirement for the inventor’s oath or declaration for a continuing reissue application may be satisfied by a copy of the inventor’s oath or declaration from the earlier-filed reissue application only when the continuing reissue application replaces its parent reissue application.
If the copy of the oath or declaration from the parent reissue application does not comply with pre-AIA 37 CFR 1.175(e), the examiner should reject the claims of the continuing reissue application under 35 U.S.C. 251 as being based on a defective oath/declaration and require a new oath/declaration.
- In addition, the examiner should check to see if the error statement in the copy of the oath/declaration covers an error being corrected in the continuing reissue application.
2. Error Statement
The examiner should check the copy of the oath/declaration to ensure that it identifies an error being corrected by the continuing (i.e., divisional or continuation) reissue application.
For divisional reissue applications, the copy of the oath/declaration from the parent reissue application may or may not cover the error being corrected by the divisional reissue application because the divisional reissue application is (by definition) directed to a new invention.
If the copy of the oath/declaration does not cover an error being corrected by the continuing reissue application, the examiner should reject the claims of the continuing reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuing reissue application, and require a new oath/declaration and a new assignee consent if it does not cover the error being corrected in the continuing reissue application.
For applications filed on or after September 16, 2012, a new oath/declaration is required for identification of the error if the copy of the oath/declaration from the parent reissue application does not cover an error being corrected in the continuing reissue application.
II. CONTINUATION REISSUE APPLICATIONS
Whenever a continuation reissue application is filed with a copy of the assignee consent and a copy of the oath/declaration from the parent reissue application, the copy of the assignee consent and the reissue oath/declaration should both be accepted by OPAP and the application accorded a filing date so long as all other filing requirements are met.
A continuation reissue application of a parent reissue application is not ordinarily filed “for distinct and separate parts of the thing patented” as called for in the second paragraph of 35 U.S.C. 251.
As is true for the case of multiple divisional reissue applications, all of the claims of the patent to be reissued must be presented in both the parent reissue application and the continuation reissue application in some form, i.e., as amended, as unamended, or as canceled.
- The same claim of the patent cannot, however be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions.
Generally, where a continuation reissue application is filed with a copy of the oath/declaration and assignee consent from the parent reissue application, and the parent reissue application is not to be abandoned, the copy of the consent of the parent reissue application should not be accepted.
As an exception to the general practice, there may be a situation where:
- the original declaration of a parent reissue application may identify an error X, but as a result of an amendment to the claims, error X is no longer being corrected in the parent reissue application, with a supplemental declaration being included to provide a new error statement, and
- a continuation reissue application is filed to correct error X. In this situation, applicant may provide in the continuation reissue application a copy of the original declaration and consent filed in the parent reissue application.
The applicant is to point out this exception to the general practice in the remarks accompanying the continuation reissue application.
37 CFR 1.175 requires that 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.
- In this instance, the continuation reissue application would identify at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application by virtue of the copy of the original declaration (whose error is different from that of the parent reissue application which now has the supplemental declaration).
Two examples of this exception are provided:
Patent Broad claim – ABC Dependent claim – ABCE Dependent claim – ABCF
Parent Reissue Broad claim – ABCD originally presented in the reissue, and then canceled during prosecution. During prosecution, dependent claims rewritten as independent claims – ABCDEQ and ABCDFQ
Continuation Reissue Broad claim – ABCD
The parent reissue application’s supplemental declaration describes the addition of Q and D to the dependent claims, which have been rewritten as independent claims. A copy of the original reissue declaration from the parent reissue application, which describes the addition of D to the original independent patent claim, was filed in the continuation reissue application. Thus, the declarations of the parent reissue application and the continuation reissue application correct different errors. Further, the copy of the original consent from the parent reissue application filed in the continuation reissue application covers the error described in the copy of the declaration filed in the continuation reissue application. A non-statutory double patenting rejection should be considered by the examiner, with the requirement of a terminal disclaimer in each application.
Patent Broad claim – ABC Dependent claim – ABCE Dependent claim – ABCF
Parent Reissue Broad claim – ABCD originally presented in the reissue, and then canceled during prosecution. During prosecution, dependent claims rewritten as independent claims – ABCDE and ABCDF
Continuation Reissue Broad claim – ABCD
The parent reissue application’s supplemental declaration describes the addition of D to the ABCE and ABCF combinations, correcting an error in the original dependent claims. The copy of the original reissue declaration from the parent reissue application filed in the continuation reissue application describes the addition of D to the broad claim, correcting an error in the original independent claim. This is permitted because the applicant is free to split the correction of an error as to different claims into different reissue applications, where one is a continuing application of another. See In re Graff, where the Federal Circuit stated that 35 U.S.C. 251 places “no greater burden on Mr. Graff’s continuation reissue application than upon a continuation of an original application…” Again a non-statutory double patenting rejection should be considered by the examiner, with the requirement of a terminal disclaimer in each application. To the extent that 37 CFR 1.175 requires a waiver to accommodate this situation, it is hereby waived.
Where a continuation reissue application is filed with a copy of the oath/declaration and 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 both OPAP and the examiner.
For applications filed before September 16, 2012, if a preliminary amendment was filed with the continuation reissue application, the examiner should check for the need of a supplemental reissue oath/declaration.
A. Consent of the Assignee
a copy of the assignee consent from a parent reissue application is only acceptable if the continuation reissue is correcting the same error for which consent was previously made.
B. Reissue Oath/DeclarationOPAP will accept a copy of the oath or declaration in a continuation reissue and that applicant should explain why a copy of the oath or declaration is sufficient in reissue applications filed on or after September 16, 2012.
1452 Request for Continued Examination of Reissue Application
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