1457 Design Reissue Applications and Patents
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I. EXPEDITED EXAMINATION PROCEDURE
Design reissue applications requesting expedited examination are examined with priority and undergo expedited processing throughout the entire course of prosecution in the Office, including appeal, if any, to the Patent Trial and Appeal Board.
The expedited examination procedure occurs through initial examination processing and throughout the entire prosecution in the Office.
- Once a request for expedited examination is granted, prosecution of the design reissue application will proceed according to the procedure under 37 CFR 1.155, and there is no provision for "withdrawal" from expedited examination procedure.
II. DESIGN REISSUE FEE
The design reissue application fee, a search fee, and an examination fee are required.
III. MULTIPLE DESIGN REISSUE APPLICATIONS
The design reissue application can be filed based on the "error" of failing to include a design for a patentably distinct segregable part of the design claimed in the original patent or a patentably distinct subcombination of the claimed design.
- A reissue design application claiming both the entire article and the patentably distinct subcombination or segregable part would be proper, if such a reissue application is filed within two years of the issuance of the design patent, because it is considered a broadening of the scope of the patent claim.
IV. CONVERSION TO UTILITY PATENT
A design patent cannot be converted to a utility patent via reissue.
- Further, the term of a design patent may not be extended by reissue.
V. CONVERSION TO A DESIGN PATENT
The “patent is, through error, deemed 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 he had a right to claim in the patent”; however, the utility patent is not wholly or partly inoperative or invalid.
- There is no error in the utility patent.
- A utility cannot be converted to a design via reissue
- It is also noted that conversion of a design patent would exempt the existing utility patent from maintenance fees, and there is no statutory basis for exempting an existing patent from maintenance fees.
1460 Effect of Reissue
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The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of any person or that person’s successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.
1470 Public Access to Reissue Applications
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