MPEP Chapter 1400: Correction of Patents Flashcards
(26 cards)
Correction of all substantive mistakes must be
Unintentional and unavoidable and non-purposeful
Reissue
Patent deemed by OWNER to be inoperative or invalid
Offer to surrender original patent
Grounds for Reissue
-Claims are too broad/narrow
-Disclosure contains inaccuracies
-Applicant failed to perfect a claim for priority
-To make a proper claim for priority
-Applicant failed to reference co-pending apps in ADS
Reissue Oath/Dec
Rule 172
Signed by assignee if no broadened claims
Signed by inventors if broadened claims
Has to state at least 1 error for reissue basis
Reissue Effect on Term/Maintenance Fees
None, term and maintenance fees are unchanged
Limits of Reissue
Patent that is invalid as not-enabling or does not disclose best mode is FATALLY DEFECTIVE and cannot be corrected by reissue
Rule Against Recapture
Subject matter deliberately given up during prosecution of parent cannot be recovered by reissue
Who can seek reissue?
ONLY patent OWNER
Reissue with Broader Claims
Must be filed within 2 YEARS of patent issue date
Reissue with Narrower Claims/Fix Problems
Can be filed anytime during life of patent
Amendments in Reissue
Underline additions
Single bracket deletions
Amendments only based on parent, don’t change if there is more than 1 amendment
New claims = entirely underlined
Reissue Foreign Priority
Claim MUST be made in reissue
Contents of Reissue
-offer to surrender original patent grant
-written consent of assignee
-copy of spec and claims with __ and [ ]
-fee
-reissue oath (signed by inventors if scope enlarged)
Drawings in Reissue
New drawings are REQUIRED in reissue
Duty of Disclosure in Reissue
Same duty applies
Applicants encouraged to file IDS with reissue
Are Reissues Public?
Yes
Restrictions of Reissues
Examiner CANNOT restrict as to originally claimed subject matter
Can with new claimed subject matter
Continuations of Reissue
Can be filed under Rule 1.53(b) or 1.53(d) of a reissue
Needs new oath specifying the error is not yet fixed
Is a reissue an application?
Yes
Is a re-exam an application?
NO, as such, cannot file continuations
What kind of extensions apply to reissues?
Automatic extensions
Intervening Rights
When claims are broadened in reissue, entities carrying out acts that would be infringement can continue their acts
Certificate of Correction
Mistakes of clerical/typographical nature either by PTO or applicant (free if by PTO)
NOT for substantive mistakes
Accompanies many things like correction of inventorship in issued patents
Certificate of Correction can be used when…
There was failure to claim priority, where priority was properly claimed in a parent
Cert of Correc can fix this
