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1454    Appeal Brief

MPEP SECTION SUMMARY The requirements for an appeal brief apply to a reissue application in the same manner that they apply to a non-reissue application. However, the claims on appeal presented in an appeal brief for a reissue application should include all underlining and bracketing necessary to reflect the changes made to the patent claims during the prosecution of the reissue application. In addition, any new claims added in the reissue application should be completely underlined.

MPEP SECTION SUMMARY This section covers allowance and issue including changes to the original patent and claim numbering. Renumbering of the original patent claims is never permitted. In addition, at least one claim of an allowable reissue application must be designated for printing in the Official Gazette. This section also discusses parent application data on the bibliographic data sheet of the original patent file and examiner's amendments and it briefly touches on reissue oaths or declarations.

II.   CHANGES TO THE ORIGINAL PATENT

The specifications of reissue patents will be printed in such a manner as to show the changes over the original patent text by enclosing any material omitted by the reissue in heavy brackets [ ] and printing material added by the reissue in italics.

III.   CLAIM NUMBERING

No renumbering of the original patent claims is permitted, even if the dependency of a dependent patent claim is changed by reissue so that it is to be dependent on a subsequent higher numbered claim.

When a dependent claim in a reissue application depends upon a claim which has been canceled, and the dependent claim is not thereafter made dependent upon a pending claim, such a dependent claim must be rewritten in independent form.

IV.   CLAIM DESIGNATED FOR PRINTING

At least one claim of an allowable reissue application must be designated for printing in the Official Gazette.

V.   PROVIDING PROPER FORMAT

Where a reissue application has not been prepared in the above-indicated manner, the examiner may obtain from the applicant a clean copy of the reissue specification prepared in the indicated form, or a proper submission of a previously improperly submitted amendment.

VI.   PARENT APPLICATION DATA

All parent application data on the bibliographic data sheet of the original patent file (or front face of the original patent file wrapper if the original patent is a paper file) should be present on the bibliographic data sheet of the reissue application.

VIII.   EXAMINER'S AMENDMENT AND REISSUE OATH OR DECLARATION

When it is necessary to amend the reissue application in order to place the application in condition for allowance, the examiner may:

• request that applicant provide the amendments (e.g., by facsimile transmission or by hand-carry); or
• make the amendments, with the applicant’s approval, by a formal examiner’s amendment.

 If the reissue application was filed before September 16, 2012 and the amendment corrects an “error” under 35 U.S.C. 251, then a supplemental oath or declaration will be required.

 

» 1457 Design Reissue Applications and Patents