Reissue Applications: Information and Best Practices

1. 1 Reissue Applications: Information and Best Practices Steve Marcus Senior Legal Advisor Office of Patent Legal Administration

2. 2 Reissue Applications: Information Definition and Reasons for Filing Filing Requirements Limitations on Reissue In General Claim Limitations Recapture Claims Non-elected in Application Information Sources

3. 3 Reissue of an original patent: Permits errors made in the original patent to be corrected; and Permits claims to be broadened, if broadening reissue filed within two years of issuance of original patent. See MPEP �� 1401-1470 Reissue � 35 U.S.C. 251 & 252 As we will discuss in a few minutes, not every error in a patent can be corrected by reissue. See MPEP � 1402; the most common bases for filing a reissue application are: The claims are too narrow or broad the disclosure contains inaccuracies applicant failed to or incorrectly claimed foreign priority Applicant failed to make reference to, or incorrectly made reference to, prior copending applications As we will discuss in a few minutes, not every error in a patent can be corrected by reissue. See MPEP � 1402; the most common bases for filing a reissue application are: The claims are too narrow or broad the disclosure contains inaccuracies applicant failed to or incorrectly claimed foreign priority Applicant failed to make reference to, or incorrectly made reference to, prior copending applications

4. 4 Requirements for Filing a Reissue Fees. Reissue �specification� � the printed patent. Reissue oath or declaration. Consent of assignee to filing & statement of ownership.* * Only needed if patent is assigned, but where there is no assignee, an affirmative statement to that effect is required (MPEP � 1410.01(I)). 2009 Fee Schedule: $330 basic utility filing fee + $650 examination fee + $540 search fee; Additional fees: Independent claims in excess of 3 = $220 reissue claims in excess of 20 = $52 size fee (each 50 sheets over 100 sheets) = $270 (fees halved for small entity). The excess claim fees and size fees apply to reissue applications file on or after December 8, 2004. Form PTO/SB/56, reissue application fee transmittal form, for calculation of fees. See 37 CFR 1.16(e)(1)), (h), (i), (m) & (r) for fees Form PTO/SB/50 is reissue transmittal form; it contains checklist of items to be submitted. 2009 Fee Schedule: $330 basic utility filing fee + $650 examination fee + $540 search fee; Additional fees: Independent claims in excess of 3 = $220 reissue claims in excess of 20 = $52 size fee (each 50 sheets over 100 sheets) = $270 (fees halved for small entity). The excess claim fees and size fees apply to reissue applications file on or after December 8, 2004. Form PTO/SB/56, reissue application fee transmittal form, for calculation of fees. See 37 CFR 1.16(e)(1)), (h), (i), (m) & (r) for fees Form PTO/SB/50 is reissue transmittal form; it contains checklist of items to be submitted.

5. 5 Applicable Rules � 37 CFR 1.175 and 1.172 Must point out an error being corrected. Only one error need be given, but the error must be specifically identified, and explain how it renders the patent wholly or partly inoperative or invalid. Must state that all errors being corrected arose without deceptive intent. See MPEP � 1414. Reissue Oath or Declaration NOTE: Verbatim recitation of entire claim(s) in oath/declaration does not properly identify the error. See MPEP 1414 Examples of specific identification of the error: If the error is that the original patent claims �less than� the patentee had a right to claim (claims too narrow), the error is specified by pointing to a word or phrase in the claims that is unnecessary for patentability. If the error is claiming �more than� the patentee had a right to claim (claim too broad), the error is specified by so stating and specifying the missing limitation(s). If the error is in the drawings, it is insufficient to state "there's error in Figure 1," or "there's a missing reference numeral in Figure 19."� The error must be specified, (stated in specific language), for example, "in Figure 1, the reference number 19 is in error."� � All reissuable errors (errors that render the patent wholly or partly inoperative or invalid),- ranging from claim language, inventorship errors, failure to claim 120 benefit - must be specifically identified.� The error relied on must be referenced by specific language - "the error is failure to claim 120 benefit" is not sufficient; �the error is failure to claim 120 benefit to application number XYZ" is sufficient; the error "failure to specify the correct inventorship� is not sufficient because it doesn't specify the precise error, but the �error is failing to name John Q. Inventor as a joint inventor� is specific language that identifies the precise error. In Medrad, Inc. v. Tyco Healthcare Group LP, 466 F.3d 1047, 80 USPQ2d 1526 (Fed. Cir. 2006), the court rejected an argument that section 251 was limited to defects in the specification, drawings, and claims.� Instead, the court explained that the correctable error could be "any error that causes a patentee to claim more or less than he had a right to claim."� Id. at 1052.� In Medrad, the specific error was the failure to submit a supplemental reissue declaration in an earlier reissue. NOTE: Verbatim recitation of entire claim(s) in oath/declaration does not properly identify the error. See MPEP 1414 Examples of specific identification of the error: If the error is that the original patent claims �less than� the patentee had a right to claim (claims too narrow), the error is specified by pointing to a word or phrase in the claims that is unnecessary for patentability. If the error is claiming �more than� the patentee had a right to claim (claim too broad), the error is specified by so stating and specifying the missing limitation(s). If the error is in the drawings, it is insufficient to state "there's error in Figure 1," or "there's a missing reference numeral in Figure 19."� The error must be specified, (stated in specific language), for example, "in Figure 1, the reference number 19 is in error."� � All reissuable errors (errors that render the patent wholly or partly inoperative or invalid),- ranging from claim language, inventorship errors, failure to claim 120 benefit - must be specifically identified.� The error relied on must be referenced by specific language - "the error is failure to claim 120 benefit" is not sufficient; �the error is failure to claim 120 benefit to application number XYZ" is sufficient; the error "failure to specify the correct inventorship� is not sufficient because it doesn't specify the precise error, but the �error is failing to name John Q. Inventor as a joint inventor� is specific language that identifies the precise error. In Medrad, Inc. v. Tyco Healthcare Group LP, 466 F.3d 1047, 80 USPQ2d 1526 (Fed. Cir. 2006), the court rejected an argument that section 251 was limited to defects in the specification, drawings, and claims.� Instead, the court explained that the correctable error could be "any error that causes a patentee to claim more or less than he had a right to claim."� Id. at 1052.� In Medrad, the specific error was the failure to submit a supplemental reissue declaration in an earlier reissue.

6. 6 Reissue Oath or Declaration (cont.) If any error not covered by the original oath or declaration is later corrected, a supplemental oath or declaration under 37 CFR 1.175(b) is required stating that such error(s) occurred without deceptive intention. Where all errors that were specifically identified in prior-filed oaths or declarations are no longer being corrected, a supplemental oath or declaration under 37 CFR 1.175(c) is required identify at least one �error being corrected,� as well as stating that any error not covered by a prior declaration arose without deceptive intent. Supplemental oath/declaration for 37 CFR 1.175(b) is form PTO/SB/51S. For 37 CFR 1.175(c), applicants typically file a new �original declaration form (PTO/SB/51 or PTO/SB/52 as appropriate). Supplemental oath/declaration for 37 CFR 1.175(b) is form PTO/SB/51S. For 37 CFR 1.175(c), applicants typically file a new �original declaration form (PTO/SB/51 or PTO/SB/52 as appropriate).

7. 7 Reissue Oath or Declaration (cont.) Must also include the statements required by 37 CFR 1.63, as are required for any nonprovisional application. Where the claims are broadened, all inventors are required to sign the oath or declaration, except for a 37 CFR 1.42, 1.43, or 1.47 filing. If no broadening, assignee of entire interest may sign the oath or declaration (37 CFR 1.172) as an alternative to the inventors. 37 CFR 1.63 (oath or declaration requirements) 37 CFR 1.42 (inventor is dead) 37 CFR 1.43 (inventor is insane or legally incapacitated) 37 CFR 1.47 (inventor refuses to sign or cannot be reached) 37 CFR 1.172 (Reissues; Applicants, assignees)37 CFR 1.63 (oath or declaration requirements) 37 CFR 1.42 (inventor is dead) 37 CFR 1.43 (inventor is insane or legally incapacitated) 37 CFR 1.47 (inventor refuses to sign or cannot be reached) 37 CFR 1.172 (Reissues; Applicants, assignees)

8. 8 Consent of Assignee to the Reissue If patent is not assigned, no formal consent is needed. Inventor(s) merely execute the oath or declaration If patent is assigned, assignee must consent to filing of reissue even where oath or declaration is signed by the inventor(s). Consent must be signed by a party authorized to act on behalf of assignee. Consent must be supported by 37 CFR 3.73(b) statement establishing ownership of assignee (see next slide). Without proper consent, oath or declaration is incomplete. Bullet 1. Inventors signatures are consent of owners. Should inform USPTO at filing that patent not assigned; if not USPTO presumes patent assigned. --Can check Box 7 of the transmittal form PTO/SB/50 (if used). Bullet 3. Thus, � 1.16(e) surcharge required if consent missing for assigned reissue. Bullet 1. Inventors signatures are consent of owners. Should inform USPTO at filing that patent not assigned; if not USPTO presumes patent assigned. --Can check Box 7 of the transmittal form PTO/SB/50 (if used). Bullet 3. Thus, � 1.16(e) surcharge required if consent missing for assigned reissue.

9. 9 Establishing Assignee Ownership of Patent Consent of assignee is a �taking of action� by the assignee pursuant to 37 CFR 3.73(b). Thus, must be accompanied by proof of ownership, i.e., statement under 37 CFR 3.73(b). See MPEP � 324 and sample � 3.73(b) statement. (See also PTO/SB/96) Recordation of assignment in assignment records of USPTO is not sufficient; � 3.73(b) statement must be filed in reissue application. Statement under 3.73 (b) must: Identify the assignee(s). For one assignee, must state �owns entire right, title and interest.� For multiple assignees, must specify portion of the individual assignee�s interest. Identify reel/frame number where assignment recorded or attach copy of assignment document(s). Note: Where a copy of the assignment documents accompany the � 3.73(b) statement (and Reel/Frame is not identified), signer must state that a copy of the documentary evidence �was, or concurrently is being, submitted for recordation� pursuant to 3.11. Filing a copy of the assignment in a reissue application is not going to accomplish recordation of the assignment papers. Be signed by party authorized to act on behalf of assignee. Title of signing party Authorizing statement Assignee �resolution� Statement under 3.73 (b) must: Identify the assignee(s). For one assignee, must state �owns entire right, title and interest.� For multiple assignees, must specify portion of the individual assignee�s interest. Identify reel/frame number where assignment recorded or attach copy of assignment document(s). Note: Where a copy of the assignment documents accompany the � 3.73(b) statement (and Reel/Frame is not identified), signer must state that a copy of the documentary evidence �was, or concurrently is being, submitted for recordation� pursuant to 3.11. Filing a copy of the assignment in a reissue application is not going to accomplish recordation of the assignment papers. Be signed by party authorized to act on behalf of assignee. Title of signing party Authorizing statement Assignee �resolution�

10. 10 Reissue Specification and Drawings Applicable Rule � 37 CFR 1.175 Reissue specification (including claims) is filed in double-column format (copy of printed patent). Original drawings: Clean copies of printed patent drawing sheets meeting � 1.84 criteria are filed as the formal drawings. Transfer of drawings from patent file to reissue application is not permitted. Change to drawings: New drawings are required for any new or amended figures. New figures or amended figures must be labeled as such. Bullet 1. A copy of pages of printed patent on one side of paper. � 1.16(e) surcharge is not required when correcting this informality. Amendments in the reissue specification as filed: Via replacement paragraphs & claims and/or new paragraphs & claims -- can be entered in the double column format. By physical incorporation into reissue specification � Cutting printed text and inserting typed text. Caret insertion with lines drawn from carets to the insertion typed in the margins. Physical incorporation not used where it changes pagination. Bullet 3. Proposed new or amended drawings are submitted as sketch in red for approval by examiner. If sketch is approved, formal drawings meeting � 1.84 criteria are submitted. New, amended, or canceled drawings labeled as such on drawings sheets submitted. Bullet 1. A copy of pages of printed patent on one side of paper. � 1.16(e) surcharge is not required when correcting this informality. Amendments in the reissue specification as filed: Via replacement paragraphs & claims and/or new paragraphs & claims -- can be entered in the double column format. By physical incorporation into reissue specification � Cutting printed text and inserting typed text. Caret insertion with lines drawn from carets to the insertion typed in the margins. Physical incorporation not used where it changes pagination. Bullet 3. Proposed new or amended drawings are submitted as sketch in red for approval by examiner. If sketch is approved, formal drawings meeting � 1.84 criteria are submitted. New, amended, or canceled drawings labeled as such on drawings sheets submitted.

11. 11 Offer to surrender the original patent (for which reissue is requested) is no longer required at time of filing (or at any other time). See 37 CFR 1.178(a) as amended, effective September 21, 2004. See MPEP � 1416. Surrendering Original Patent For any application with an outstanding requirement for physical surrender, the reissue applicant must timely reply that the requirement is moot in view of the amended rule. For any application with an outstanding requirement for physical surrender, the reissue applicant must timely reply that the requirement is moot in view of the amended rule.

12. 12 No reissue application, unless �error� in the patent within the meaning of 35 U.S.C. 251. No reissue solely to review a patent based on new prior art. Reexamination is proper vehicle for such a review. Reissue statute is not a cure for all patent prosecution problems, nor is it a grant of a second chance to prosecute de novo original application. Limitations on Reissue: In General A reissue must be to correct an �error without deceptive intent� as set out in 35 USC 251. This may also be viewed as correcting �inadvertence, accident, or mistake.� Congress did not intend to alter the previous test which was to correct "inadvertence, accident, or mistake.� In re Weiler, 229 USPQ 673 (Fed. Cir. 1986). Further, the error must render the patent �wholly or partly inoperative or invalid.� Does the addition of a narrow claim to the patent, without a statement that one or more claims are wholly or partly invalid, support reissue? A reissue must be to correct an �error without deceptive intent� as set out in 35 USC 251. This may also be viewed as correcting �inadvertence, accident, or mistake.� Congress did not intend to alter the previous test which was to correct "inadvertence, accident, or mistake.� In re Weiler, 229 USPQ 673 (Fed. Cir. 1986). Further, the error must render the patent �wholly or partly inoperative or invalid.� Does the addition of a narrow claim to the patent, without a statement that one or more claims are wholly or partly invalid, support reissue?

13. 13 Limitations on Reissue: In General (cont.) Expired patent is not eligible for reissue. Patent is reissued �for the unexpired part of the term of the original patent.� 35 U.S.C. 251. Different than reexamination, where proceeding continues after expiration, as long as patent is enforceable. Term of patent cannot be extended by eliminating 35 U.S.C. 120 priority benefits in a reissue; original term remains in effect. Subject matter surrendered to obtain the original patent cannot be recaptured by filing a reissue (Recapture discussed later).

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