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 an original patent -
--Can check Box 7 of Form PTO/SB/50 (if used).
Establishing Assignee Ownership of Patent -Apparent Authority (1 of 2)
Establishing Assignee Ownership of Patent -Apparent Authority (2 of 2)
-- can be entered in the double column format.
** 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)
A. Expired patent is not eligible for reissue. See In re Morgan, 990 F.2d 1230, 26 USPQ2d 1392 (Fed. Cir. 1993)
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)
“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]
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. ABCDEBROADERFBroadens 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.
The following BPAI recapture decisions are the basis for current Office recapture practice, consistent with North American Container:
http://www.uspto.gov/Site index [Laws, Rules, MPEP, Forms]
U.S. Patent & Trademark Office
Office of the Deputy Commissioner for
Patent Examination Policy
Office of Patent Legal Administration