1453 Amendments to Reissue Applications
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(i) Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with § 1.173.
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(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(1) Specification other than the claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.52(e)(1) and 1.821(c), but not for discs submitted under § 1.821(e)).
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(3) Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.” All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.(i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Marked-up Drawings” and must be presented in the amendment or remarks section that explains the change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “U” and end with “/U” to properly identify the material being added.
(e) Numbering of patent claims preserved. Patent claims may not be renumbered. The numbering of any claim added in the reissue application must follow the number of the highest numbered patent claim.
(f) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
All amendment changes must be made relative to the patent to be reissued.
Any such changes which are made to the specification, including the claims, must be shown by employing the following “markings:”
- The matter to be omitted by reissue must be enclosed in brackets; and
- The matter to be added by reissue must be underlined, except for amendments submitted on compact discs. Matter added by reissue on compact discs must be preceded with “U” and end with “/U” to properly identify the material being added.
I. THE SPECIFICATION
All amendments which include any deletions or additions must be made by submission of the entire text of each added or rewritten paragraph with markings (as defined above), except that an entire paragraph of specification text may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. Applicant must indicate the precise point where each amendment is made. All bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application. Thus, all paragraphs which are newly added to the specification of the original patent must be submitted as completely underlined each time they are re-submitted in the reissue application.
II. THE CLAIMS
Claim amendment requirements:
- For each claim that is being amended by the amendment being submitted (the current amendment), the entire text of the claim must be presented with markings as defined above;
- For each new claim added to the reissue by the amendment being submitted (the current amendment), the entire text of the added claim must be presented completely underlined;
- A patent claim should be canceled by a direction to cancel that claim, there is no need to present the patent claim surrounded by brackets; and
- A new claim (previously added in the reissue) should be canceled by a direction to cancel that claim.
III. THE DRAWINGS
Amendments to the original patent drawings are not permitted.
IV. ALL CHANGES ARE MADE VIS-À-VIS THE PATENT TO BE REISSUED
When a reissue patent is printed, all underlined matter is printed in italics and all brackets are printed as inserted in the application, in order to show exactly which additions and deletions have been made to the patent being reissued.
A. The Subject Patent Already Has Underlining or Bracketing
If the original (or previously changed) patent includes a formula or equation already having underlining or bracketing therein as part of the formula or equation, any amendment of such formula or equation should be made by bracketing the entire formula and rewriting and totally underlining the amended formula in the re-presented paragraph of the specification or rewritten claim in which the changed formula or equation appears.
V. EXAMPLES OF PROPER AMENDMENTS
A substantial number of problems arise in the Office because of improper submission of amendments in reissue applications. The following examples are provided to assist in preparation of proper amendments to reissue applications.
If it is desired to change the specification at column 4, line 23, to replace “is” with --are--, submit a copy of the entire paragraph of specification of the patent being amended with underlining and bracketing, and point out where the paragraph is located, e.g.,
Replace the paragraph beginning at column 4, line 23 with the following:
Scanning [is] are controlled by clocks which are, in turn, controlled from the display tube line synchronization. The signals resulting from scanning the scope of the character are delivered in parallel, then converted into serial mode through a shift register wherein the shift signal frequency is controlled by a clock that is, in turn, controlled from the display tube line synchronization.
For changes to the claims, one must submit a copy of the entire patent claim with the amendments shown by underlining and bracketing, e.g.,
Amend claim 6 as follows:
Claim 6 (Amended). The apparatus of claim [5] 1 wherein the [first] second piezoelectric element is parallel to the [second] third piezoelectric element.
If the dependency of any original patent claim is to be changed by amendment, it is proper to make that original patent claim dependent upon a later filed higher numbered claim.
To cancel an original patent claim, in writing, direct cancellation of the patent claim, e.g.,
Cancel claim 6.
To cancel a new claim (previously added in the reissue), in writing, direct cancellation of the new claim, e.g.,
Cancel claim 15.
Each new claim (i.e., a claim not found in the patent, that is newly presented in the reissue application) should be presented with underlining throughout the claim, e.g.,
Add claim 7 as follows:
Claim 7 (new). The apparatus of claim 5 further comprising electrodes attaching to said opposite faces of the first and second piezoelectric elements.
Even though original claims may have been canceled, the numbering of the original claims does not change.
An amendment of a “new claim” (i.e., a claim not found in the patent, that was previously presented in the reissue application) must be done by presenting the amended “new claim” containing the amendatory material, and completely underlining the claim.
The following illustrates proper claim amendment of original patent claims in reissue applications:
A. Patent claim.
Claim 1. A cutting means having a handle portion and a blade portion.
B. Proper first amendment format.
Claim 1 (Amended). A [cutting means] knife having a bone handle portion and a notched blade portion.
C. Proper second amendment format.
Claim 1 (Twice Amended). A [cutting means] knife having a handle portion and a serrated blade portion.