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Reissue of Patents

IPO Webinar Presentation of September 16, 2010. Reissue of Patents. Kenneth M. Schor Senior Legal Advisor Office of the Deputy Commissioner for Patent Examination Policy. Contents (1 of 2). Benefits of reissue Requirements Fees Oath Consent of Assignee Specification Drawings.

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Reissue of Patents

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  1. IPO Webinar Presentation of September 16, 2010 Reissue of Patents Kenneth M. Schor Senior Legal Advisor Office of the Deputy Commissioner for Patent Examination Policy

  2. Contents (1 of 2) • Benefits of reissue • Requirements • Fees • Oath • Consent of Assignee • Specification • Drawings

  3. Contents (2 of 2) • Limitations on Using Reissue • General • Broadening • Recapture • Claims to a Non-elected in Application • Sources of Information on Reissue of Patents

  4. Benefits of Reissue Reissue of an original patent - • Permits errors made in the patent (i.e., patent, as it currently exists) to be corrected. • Patent may have been revised via reexamination, certificate of correction, etc. • Permits claims to be broadened, if broadening reissue filed within two years of issuance of original patent.

  5. Requirements for Filing a Reissue • Reissue fees for filing, search, and examination. • Reissue “specification” – the printed patent. • Reissue oath or declaration. • Statement establishing ownership pursuant to 37 CFR 3.73(b) & consent of owner (assignee) to the filing. • Only needed if patent is assigned • Form PTO/SB/50 is reissue transmittal form; it contains checklist of items to be submitted.

  6. Reissue Application Fees (FY10)(1 of 2) • Basic Filing Fee - 37 CFR 1.16(e) - $330 • Excess Independent Claims Fees - 37 CFR 1.16(h) - • For each independent claim in excess of 3: $ 220 • Excess Total Claims Fees - 37 CFR 1.16(i) - • For each claim (independent or dependent) in excess of 20: $ 52 • Search Fee - 37 CFR 1.16(n) - $540 • Examination Fee - 37 CFR 1.16(r) - $ 650 • In each case above - fees halved for small entity

  7. Reissue Application Fees (FY10)(2 of 2) • Application Size Fee - 37 CFR 1.16(s) - • If specification + drawings exceed 100 sheets: • $ 270 ($135 for a small entity) for each 50 sheets or fraction thereof • See Form PTO/SB/56, reissue application fee transmittal form, for calculation of application fees. • Issue Fee - 37 CFR 1.18(a) - • $1510 ($755 for a small entity) • Fees subject to change to reflect fluctuations in Consumer Price Index (CPI); for current information, check http://www.uspto.gov/about/offices/cfo/finance/fees.jsp

  8. Reissue Oath or Declaration(1 of 4) • Rules – 37 CFR 1.175 and 1.172 • Must point out error pursuant to 35 U.S.C. § 251 being corrected. • 37 CFR 1.175(a)(1) - Only one error need be given. • 37 CFR 1.175(e) - Error cannot be same as corrected in parent reissue that was not abandoned. • Error in the claims must be identified by reference to specific claim language that addresses the error. For example, “the limitation X is not necessary for patentability” or “the widget lacks antecedent basis in the claim.” [[moved from next slide, since too crowded]] • Verbatim recitation of entire claim(s) in oath or declaration does not properly identify the error.

  9. Reissue Oath or Declaration(2 of 4) • A specific error statement is required in the oath or declaration. Statements such as “claim 1 is too narrow to encompass applicant’s invention” or “claim 15 is indefinite” do not suffice. (MPEP § 1414(II)(C).) • The filing of additional claims narrower than the broadest claim(s) of a patent, without cancellation of such broader patent claim(s), is not an error that will support reissue. See MPEP § 1402. • Issue is on appeal to Federal Circuit - In re Yasuhito Tanaka,, # 2010-1262 (Fed. Cir. 2010) from Ex parte Tanaka, 2009 WL 5819322 (Bd.Pat.App. & Interf. 2008). BPAI held that it is not reissue “error” under 35 U.S.C. § 251 to add a subgeneric claim where all existing claims in patent maintained, both broader and narrower than added claim.

  10. Reissue Oath or Declaration(3 of 4) • No need to state how error arose and when error was discovered. • If any error not covered by the original oath or declaration is later corrected, a supplemental oath/declaration is required stating that such error(s) occurred without deceptive intention on the part of applicant (form PTO/SB/51S). • Where all errors identified in oath/declaration are no longer being corrected, subsequent oath/declaration is required, in which at least one “error being corrected” is identified.

  11. Reissue Oath or Declaration(4 of 4) • Compliance with 37 CFR 1.63 is required for reissue oath/declaration, as is required for any application. • Where the claims are broadened, all inventors are required to sign the oath/declaration, except for a 37 CFR 1.42, 1.43, and 1.47 filing. • If no broadening, assignee of entire interest may make oath/declaration (37 CFR 1.172) as alternative to the inventors.

  12. Consent of Assignee to the Reissue • If patent is not assigned, no formal consent is needed. • 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 Form PTO/SB/50 (if used). • If patent is assigned, assignee must consent to filing of reissue. • Consent must be signed by a party authorized to act on behalf of assignee. • Consent must be supported by § 3.73(b) statement establishing ownership of assignee (see next slide). • Without proper consent, oath/decl. is incomplete. • Thus, § 1.16(f) surcharge required if consent missing for assigned reissue.

  13. 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), which must: • Identify the assignee. • Identify reel/frame number where assignment recorded or attach copy of assignment document(s) & submit for recordation in assignment records of USPTO. • Be signed by party authorized to act on behalf of assignee. • Title of signing party  apparent authority to sign • Authorizing statement • Assignee “resolution” • See MPEP § 324 and sample § 3.73(b) statement. • Recordation of assignment in assignment records of USPTO not sufficient; § 3.73(b) statement must be filed in application.

  14. Establishing Assignee Ownership of Patent -Apparent Authority (1 of 2) • Where the assignee is an organizational entity (e.g., corporation, partnership, university, government agency, etc.): • A person (in the organization) has apparent authority to sign a § 3.73(b) submission on behalf of the organization per 37 CFR 3.73(b)(2)(ii), if the person is an officer, such as the chief executive officer, president, vice-president, secretary, treasurer, or the chairman of the board of directors. See MPEP § 324, part V, for a discussion of this. • Modifications of these basic titles are acceptable, such as vice-president for sales, executive vice-president, assistant treasurer, vice-chairman of the board of directors. • The signature of an individual director is not acceptable in the U.S.A.

  15. Establishing Assignee Ownership of Patent -Apparent Authority (2 of 2) • In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer and is presumed to have the authority to sign on behalf of the organization. • A person having a title (administrator, general counsel) that does not clearly set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee.

  16. Reissue Specification – 37 CFR 1.173 • Reissue specification (including claims) is provided in double-column format. • As copy of pages of printed patent on one side of paper. • § 1.16(f) 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.

  17. Drawings – 37 CFR 1.173(b)(3) (1 of 2) • Original drawings: • Clean copies of printed patent drawing sheets meeting § 1.84 criteria are submitted 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. • Changes to the drawings must be submitted as a replacement sheet of drawings in compliance with 37 CFR 1.84. • Any replacement sheet shall include all of the figures appearing on the original version of the sheet.

  18. Drawings – 37 CFR 1.173(b)(3) (2 of 2) • Change to drawings: • Amended figures must be identified as “Amended” and any added figure must be identified as “New.” • Cancelled figures must be surrounded by brackets and identified as “Canceled.” • Explanation of the changes in the remarks, or preferably, in a “drawing amendments” section, of the amendment paper. • A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy should be clearly labeled as “Annotated Marked-up Drawings.”

  19. Surrendering Original Patent • Prior requirement for physical surrender of original letters patent (“ribbon copy”) in reissue application has been eliminated. ** • Application for reissue of patent constitutes offer to surrender the original patent. • Surrender takes effect upon reissue of the patent. • For reissue family (e.g., parent + divisional reissue), reissue of “the patent” constitutes reissue of all pending family members. Surrender occurs when last reissue application of reissue family is no longer pending. • Until reissue application issues as reissue patent, original patent remains in effect. ** Changes To Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan, 69 FR 56482 (Sept. 21, 2004), 1287 Off. Gaz. Pat. Office 67 (Oct. 12, 2004) (final rule)

  20. New Claim for Priority Can Be Made • Where a reissue applicant (1) submits for the first time both (a) a claim for foreign priority and (b) the certified copy of the priority document in the reissue application, and (2) the patent to be reissued resulted from an application filed on or after 11/29/00, a petition for an unintentionally delayed priority claim under § 1.55(c) is required together with the petition fee. • Where domestic (35 U.S.C. §120) benefit is being perfected and the patent to be reissued resulted from an application filed on or after 11/29/00, a petition for an unintentionally delayed benefit claim under § 1.78(a)(3) is required together with the petition fee. • Where a domestic (35 U.S.C. § 119(e)) benefit claim is being added, even if the patent to be reissued was filed on or after 11/29/00, a petition for unintentionally delayed claim is NOT required. • See MPEP §§ 1402 and 1417.

  21. Limitations on Reissue In General (1 of 2) • 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 review of prior art patents and printed publications. • Reissue statute not cure for all patent prosecution problems, nor a grant of second chance to prosecute de novo original application. Must be to correct "inadvertence, accident, or mistake." In re Weiler,790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986).

  22. Limitations on Reissue In General (2 of 2) • Patent is reissued “for the unexpired part of the term of the original patent.” 35 U.S.C. § 251. A. Expired patent is not eligible for reissue. See In re Morgan, 990 F.2d 1230, 26 USPQ2d 1392 (Fed. Cir. 1993) • Different than reexamination, where proceeding continues after expiration, as long as patent is enforceable. B. Term of patent cannot be extended by eliminating 35 U.S.C. § 120 priority benefits in a reissue; original term remains in effect. III. Subject matter surrendered to obtain the original patent cannot be recaptured by filing a reissue (Recapture discussed later)

  23. Claim Broadening (1 of 4) • No broadening of patent claims outside of two years from Patent Grant. • 35 U.S.C. § 251 - “No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.” • See MPEP § 1412.03 for discussion of when patent claims may be broadened in reissue application.

  24. Claim Broadening (2 of 4) • Test for broadening of patent claims: • Any amended/new claim in the reissue that contains within its scope any conceivable invention which would not have infringed the patent. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 4 USPQ2d 1450 (Fed. Cir. 1987). • Could reissued patent be used to catch at least one new infringer? • An amended/new claim in the reissue broadens the scope of the claims of the original patent if it is broader in at least one respect, even though it may be narrower in many other respects.

  25. Claim Broadening (3 of 4) • Reissue application filed within two years for reasons other than broadening may not be later broadened during prosecution outside of two years. • Intent to broaden must be established in the reissue application within two years – • See In re Graff, 11 F.3d 874,877, 42 USPQ 1471 1473-74 (Fed. Circuit 1997).

  26. Claim Broadening (4 of 4)Intent to Broaden • Reissue application filed within two years for broadening may be later broadened during prosecution outside of two years, even though broadened claim presented after two years is different than broadened claim presented within two years. • If intent to broaden in parent reissue application within the two years, broadened claim can be presented in a continuing (continuation or divisional) reissue application after the two year period. • Issue to be decided - In re Staats on appeal from Ex parte Staats, 2009 -7162 (Bd.Pat.App. & Interf. 4-26-2010) - Can continuing reissue application broaden patent claims beyond statutory two-year period in unforeseeable manner unrelated to the broadening aspect that was identified within the two-year period?

  27. Recapture (1 of 7) • Even within 2 years of patent grant, patentee cannot recover via broadening in reissue: • Subject matter surrenderedduring the prosecution of the original application (which became the patent to be reissued) in effort to obtain allowance of patent claims over the art. • The “original application” includes the patent family’s entire prosecution history. MBO v. Becton, 602 F.3d 1306, 94 USPQ2d (Fed. Cir. 2010). • Rationale: deliberate withdrawal or amendment in order to obtain allowance of the patent cannot be “error” as required by statute.

  28. Recapture (2 of 7) • The Office follows North American Container, Inc. v. Plastipak Packing, Inc., 415 F.3d 1335, 1349, 75 USPQ2d 1545, 1556 (Fed. Cir. 2005), as interpreted in later BPAI decisions. • In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court stated the process for deciding recapture issues: “We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims [see MPEP 1412.02, I.A.]; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution [see MPEP 1412.02, I.B.]; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects … and hence avoid the recapture rule [see MPEP 1412.02, I.A.].” [Emphasis added in bold]

  29. Recapture (3 of 7) • Definition for Surrendered Subject Matter (SSM) by claim amendment: • SSM = The subject matter of an application claim which was amended or canceled and, on a limitation-by-limitation basis, the territory falling between the scope of (a) the application claim which was canceled or amended and (b) the patent claim which was ultimately issued. • Example: Application claim is ABCD. During prosecution, claim is amended to read ABCDEF and is allowed. SSM is ABCD and the territory between ABCD and ABCDEF (e.g. ABCDEFBroad or ABCDE).

  30. Recapture (4 of 7) • Definition for Surrendered Subject Matter (SSM) by argument. • SSM = The subject matter of an application claim that would result by deleting the limitation of the claim argued to define over the art and, on a limitation-by-limitation basis, the territory falling between the scope of (a) the claim resulting by deleting the claim limitation of the claim argued to define over the art and (b) the patent claim which was ultimately issued. • Example: Application claim is ABCDEF. During prosecution, E and F are argued to define over the art. SSM is ABCD and the territory between ABCD and ABCDEF (e.g. ABCDEFBroad or ABCDE).

  31. Recapture (5 of 7) • The reissue applicant may rebut a recapture rejection by demonstrating that a claim rejected for recapture includes one or more claim limitations that “materially narrow” the reissue claims. • Ex.: D added to ABC to get patent. Reissue claim is ABCX. X must materially narrow ABC to be permitted to replace D. • A limitation will be considered to “materially narrow” the reissue claims, if the narrowing limitation is directed to one or more “overlooked aspects” of the invention. The inclusion of such a limitation in a claim rejected for recapture will overcome the recapture rejection. • A limitation that has notbeen prosecuted in the original patent application may be directed to an “overlooked aspect” of the disclosed invention and will overcome the recapture rejection. {changed it to a positive statement}

  32. Recapture (6 of 7) Assume original application claim ABCD is amended during prosecution and results in patent claim ABCDE. Examples of reissue application claims that are to be rejected for recapture under 35 U.S.C. § 251 include: 1. ABCD  Eliminates E. 2. ABCDF Eliminates E, adds narrowing limitation F. 3. ABCDEBROADER Broadens E,. 4. ABCDEBROADERFBroadens E, adds narrowing lim. F. Applicant may attempt to rebut rejections 2 and 4 by showing that limitation F “materially narrows” the reissue claims because it is directed to an “overlooked aspect” of the disclosed invention. The examiner will then determine whether F, or a limitation “similar to” F, had been prosecuted in the application for the original patent. If so, then the recapture rejection will not be overcome.

  33. Recapture (7 of 7) The following BPAI recapture decisions are the basis for current Office recapture practice, consistent with North American Container: • Ex ParteKip Van Steenburg, Appeal 2006-1865, Application 09/660,433 (2007) MacDonald, APJ (McKelvey, Garris, and MacDonald) • Ex ParteRaanan Liebermann, Appeal 2007-012, Application 09/603,247 (2007) MacDonald, APJ (McKelvey, Blankenship and MacDonald) • Ex Parte Franklin C. Bradshaw et al, Appeal 2006-2744, Application 09/664,794 (2007) Garris, APJ (McKelvey, Garris, and MacDonald)

  34. Claims to a Non-elected in Application(1 of 2) • If claims were non-elected in the application (that became the patent) and the non-elected claims were not re-filed in a divisional, they cannot be recovered via reissue. • Rationale: Failure to file a divisional application on the non-elected claims is not considered to be an “error” correctable under 35 U.S.C. § 251 by reissue of the original patent. • In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). • In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990).

  35. Claims to a Non-elected in Application(2 of 2) • Other situations: • Where USPTO refused to enter amendment adding invention B, different from that originally examined, Federal Circuit permitted recovery of that invention B by reissue. In re Swartzel, 36 USPQ2d 1510 (Fed. Cir. 1995) (unpublished). • Linking claims which read on non-elected invention B can be recovered by reissue, if they could have been prosecuted in the original patent. In re Doyle, 293 F.3d 1355, 63 USPQ2d 1161 (Fed. Cir. 2002).

  36. Sources of Information on Reissue of Patents • Statute: 35 U.S.C. § 251, 252 • Rules: 37 CFR 1.171 – 1.179 • MPEP: Chapter 1400 • User Forms: PTO/SB/50, 51, 51S, 52, 53, 56 & 96 http://www.uspto.gov/Site index [Laws, Rules, MPEP, Forms]

  37. Thank You U.S. Patent & Trademark Office Office of the Deputy Commissioner for Patent Examination Policy Office of Patent Legal Administration

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