Correction of Patents

1400.01	Introduction 

1401	Reissue  

1402	Grounds for Filing  

1403	Diligence in Filing 

1404	Submission of Papers Where Reissue Patent Is 
in Litigation  

1410	Content of Reissue Application

1410.01	Reissue Applicant, Oath or Declaration, and 
Consent of All Assignees 

1411	Form of Specification 

1411.01	Certificate of Correction or Disclaimer in Orig-
inal Patent  

1411.02	New Matter 

1412	Content of Claims  

1412.01	Reissue Claims Must Be for Same General In-
vention  

1412.02	Recapture of Canceled Subject Matter  

1412.03	Broadening Reissue Claims  

1412.04	Correction of Inventorship  

1413	Drawings 

1414	Content of Reissue Oath/Declaration 

1414.01	Supplemental Reissue Oath/ Declaration 

1415	Reissue Filing and Issue Fees  

1415.01	Maintenance Fees on the Original Patent 

1416	Offer to Surrender and Return Original Patent 

1417	Claim for Benefit Under 35 U.S.C. 119(a)-(d) 

1418	Information Disclosure Statement and Other 
Information  

1430	Reissue Files Open to the Public and, Notice of 
Filing Reissue Announced in, Official Gazette 

1431	Notice in Patent File  

1440	Examination of Reissue Application 

1441	Two-Month Delay Period; Protest in Reissue 
Applications 

1442	Special Status 

1442.01	Litigation Related Reissues  

1442.02	Concurrent Litigation 

1442.03	Litigation Stayed  

1442.04	Litigation Involving Patent 

1442.05	Cases in Which Stays Were  Considered  

1442.05(a)	Stays Granted 

1442.05(b)	Stays Denied 

1443	Initial Examiner Review  

1444	Review of Reissue Oath/Declaration 

1445	Reissue Application Examined in Same Manner 
as Original Application 

1448	Fraud, Inequitable Conduct, or Duty of 
Disclosure Issues 

1449	Protest Filed in Reissue Where Patent Is in 
Interference 

1449.01	Concurrent Office Proceedings  

>1449.02	Interference in Reissue<  

1450	Restriction and Election of Species 

1451	Divisional Reissue Applications; Continuation 
Reissue Applications Where the Parent is 
Pending 

1453	Amendments to Reissue Applications 

1454	Appeal Brief 

1455	Allowance and Issue 

1456	Reissue Review 

1460	Effect of Reissue  

1480	Certificates of Correction - Office Mistake 

1481	Applicant's Mistake 

1485	Handling of Request for Certificates of 
Correction 

1490	Disclaimers



 

1400	[No Text]

1400.01	Introduction

A patent may be corrected or amended in four ways, 
namely: 

(A)	by reissue, 

(B)	by the issuance of a certificate of correction which 
becomes a part of the patent, 

(C)	by disclaimer, and 

(D)	by reexamination.  

The first three ways are discussed in this chapter while the 
fourth way (reexamination) is discussed in  MPEP Chapter 
2200.

1401	Reissue 

35 U.S.C. 251.  Reissue of defective patents.

Whenever any patent is, through error without any deceptive intention, 
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, the Commissioner shall, on 
the surrender of such patent and the payment of the fee required by law, 
reissue the patent for the invention disclosed in the original patent, and in 
accordance with a new and amended application, for the unexpired part of 
the term of the original patent. No new matter shall be introduced into the 
application for reissue.

The Commissioner may issue several reissued patents for distinct and 
separate parts of the thing patented, upon demand of the applicant, and 
upon payment of the required fee for a reissue for each of such reissued 
patents.

The provisions of this title relating to applications for patent shall be 
applicable to applications for reissue of a patent, except that application 
for reissue may be made and sworn to by the assignee of the entire interest 
if the application does not seek to enlarge the scope of the claims of the 
original patent.

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.  

The provisions of  35 U.S.C. 251 permit the reissue of a 
patent to correct an error in the patent made without any 
deceptive intention and provide criteria for the reissue.  
37 CFR 1.171 through 1.179 are rules directed to reissue. 

1402	Grounds for Filing 

A reissue application is filed to correct an error in the 
patent which was made without any deceptive intention, 
where, as a result of the error, the patent is deemed wholly 
or partly inoperative or invalid. An error in the patent arises 
out of an error in conduct which was made in the prepara-
tion and/or prosecution of the application which became 
the patent. 

There must be at least one error in the patent to provide 
grounds for reissue of the patent. If there is no error in the 
patent, the patent will not be reissued. The present section 
provides a discussion of what may be considered an error in 
the patent upon which to base a reissue application.

In accordance with  35 U.S.C. 251, the error upon which 
a reissue is based must be one which causes the patent to be 
"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." Thus, an error under  35 U.S.C. 251 has not 
been presented where the correction to the patent is one of 
spelling, or grammar, or a typographical, editorial or cleri-
cal error which does not cause the patent to be deemed 
wholly or partly inoperative or invalid for the reasons spec-
ified in  35 U.S.C. 251. These corrections to a patent do not 
provide a basis for reissue (although these corrections may 
also be included in a reissue application, where a  35 U.S.C. 
251 error is already present).

The most common bases for filing a reissue application 
are:

(A)	the claims are too narrow or too broad; 

(B)	the disclosure contains inaccuracies; 

(C)	applicant failed to or incorrectly claimed foreign 
priority; and

(D)	applicant failed to make reference to or incorrectly 
made reference to prior copending applications.

An attorney's failure to appreciate the full scope of the 
invention was held to be an error correctable through reis-
sue in In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. 
Cir. 1984). The correction of misjoinder of inventors in 
divisional reissues has been held to be a ground for reissue. 
See Ex parte Scudder, 169 USPQ 814 (Bd. App. 1971).The 
Board of Appeals held in Ex parte Scudder, 169 USPQ at 
815, that  35 U.S.C. 251 authorizes reissue application to 
correct misjoinder of inventors where  35 U.S.C. 256 is 
inadequate.

Reissue may no longer be necessary under the facts in Ex 
parte Scudder, supra,  in view of  35 U.S.C. 116 which pro-
vides, inter alia, that:

"Inventors may apply for a patent jointly even though . . .  (3) 
each did not make a contribution to the subject matter of every 
claim in the patent." 

See also  37 CFR 1.45(b)(3). 

If the only change being made in the patent is correction 
of the inventorship, this can be accomplished by filing a 
request for a certificate of correction under the provisions 
of 35 U.S.C. 256 and  37 CFR 1.324. See  MPEP ? 1412.04 
and  ? 1481. A Certificate of Correction will be issued if all 
parties are in agreement and the inventorship issue is not 
contested.

A reissue was granted in Brenner v. State of Israel, 400 
F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only 
ground urged was failure to file a certified copy of the orig-
inal foreign application to obtain the right of foreign prior-
ity under  35 U.S.C. 119 before the patent was granted.

Correction of failure to adequately claim priority in an 
earlier filed copending U.S. Patent application was held a 
proper ground for reissue. Sampson v. Comm'r Pat., 
195 USPQ 136, 137 (D.D.C. 1976). Reissue applicant's 
failure to timely file a divisional application is not consid-
ered to be error causing a patent granted on elected claims 
to be partially inoperative by reason of claiming less than 
the applicant had a right to claim. Thus, such applicant's 
error is not correctable by reissue of the original patent 
under  35 U.S.C. 251. In re Orita, 550 F.2d 1277, 1280,  
193 USPQ 145, 148 (CCPA 1977). See also In re Watkin-
son, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re 
Mead, 581 F.2d 257, 198 USPQ 412 (CCPA 1978).

1403	Diligence in Filing

When a reissue application is filed within 2 years from 
the date of the original patent, a rejection on the grounds of 
lack of diligence or delay in filing the reissue should not 
normally be made. Ex parte Lafferty, 190 USPQ 202 (Bd. 
App. 1975); but see Rohm & Haas Co. v. Roberts Chemical 
Inc., 142 F. Supp. 499, 110 USPQ 93 (S.W. Va. 1956),   
rev'd on other grounds, 245 F.2d 693, 113 USPQ 423 (4th 
Cir. 1957).

The fourth paragraph of  35 U.S.C. 251 states:

"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." 

Where any broadening reissue application is filed within 
two years from the date of the original patent,  35 U.S.C. 
251 presumes diligence, and the examiner should not 
inquire why applicant failed to file the reissue application 
earlier within the two year period.

See  MPEP ? 1412.03 for broadening reissue practice. 
See also In re Graff, 111 F.3rd 874, 42 USPQ2d 1471 (Fed. 
Cir. 1997); In re Bennett, 766 F.2d 524, 528, 226 USPQ 
413, 416 (Fed. Cir. 1985); In re Fotland, 779 F.2d 31, 228 
USPQ 193 (Fed. Cir. 1985). 

A reissue filed on the 2-year anniversary date is consid-
ered as filed within 2 years.  See Switzer v. Sockman, 
333 F.2d 935, 142 USPQ 226 (CCPA 1964) (a similar rule 
in interferences). 

A reissue application can be granted a filing date without 
an oath or declaration, or without the filing fee being 
present. See 37 CFR 1.53(f). Applicant will be given a 
period of time to provide the missing parts and to pay the 
surcharge under  37 CFR 1.16(e). See  MPEP ? 1410.01.

1404	Submission of Papers Where Reissue 
Patent Is in Litigation [R-1]

Applicants and protestors (see  MPEP ? 1901.03) sub-
mitting papers for entry in reissue applications of patents 
involved in litigation are requested to mark the outside 
envelope and the top right-hand portion of the papers with 
the words "REISSUE LITIGATION" and with the group 
art unit or other area of the Patent and Trademark Office in 
which the reissue application is located, e.g., Assistant 
Commissioner for Patents, Board of Patent Appeals and 
Interferences, Examining Group, Office of Patent Publica-
tion, etc. Protestor's participation, including the submission 
of papers, is limited in accordance with  37 CFR 1.291(c). 
Any "Reissue Litigation" papers mailed to the Office 
should be so marked **. The markings preferably should be 
written in a bright color with a felt point marker. Papers 
marked "REISSUE LITIGATION" will be given special 
attention and expedited handling. See  MPEP ? 1442.01 
through ? 1442.04 for examination of litigation related reis-
sue applications.

1410	Content of Reissue Application [R-1]

37 CFR 1.171.  Application for reissue.

An application for reissue must contain the same parts required for an 
application for an original patent, complying with all the rules relating 
thereto except as otherwise provided, and in addition, must comply with 
the requirements of the rules relating to reissue applications.

The specification (including the claims and any draw-
ings) of the reissue application is the copy of the patent for 
which reissue is requested that is submitted by applicant as 
part of the initial application papers. In addition, an appli-
cant for reissue is required to file a reissue oath or declara-
tion which, in addition to complying with  37 CFR 1.63, 
must comply with 37 CFR 1.175. Where the patent is 
assigned, the reissue applicant must also provide a consent 
of assignee to the reissue and evidence of ownership. In 
addition, the reissue applicant should file an offer to surren-
der the original patent; however, this is not a requirement 
for filing of the reissue. It is only necessary that the patent 
be surrendered before the application is allowed. Where 
appropriate, the reissue applicant may provide a claim for 
priority under  35 U.S.C. 119 or 120, and may also file an 
Information Disclosure Statement. The initial contents of 
a reissue application are discussed in detail in MPEP 
? 1410.01 through  ? 1418.

  >For expedited processing, new and continuing reissue 
application filings under 37 CFR  1.53(b) may be addressed 
to "Box REISSUE, Assistant Commissioner for Patents, 
Washington, D.C. 20231." Box REISSUE should only be 
used for the initial filing of reissue applications, and should 
not be used for any subsequently filed correspondence in 
reissue applications.<

The oath or declaration, any matters ancillary thereto 
(such as the consent of assignee), and the filing fee may be 
submitted after the filing date pursuant to  37 CFR 1.53(f). 

The requirement for the assignee to consent to filing a 
reissue no longer includes a requirement for applicant to 
order a title report with the filing of the reissue application. 
Rather, the assignee entity is established by a statement on 
behalf of all the assignees under 37 CFR 1.172(a) and  
37 CFR 3.73(b).  See  MPEP ? 1410.01.

Form PTO/SB/50, Reissue Patent Application Transmit-
tal, may be used for filing reissue applications.

Form PtO/SB/50. Reissue Patent Application Transmittal

1410.01	Reissue Applicant, Oath or 
Declaration, and Consent of All 
Assignees

37 CFR 1.172.  Applicants, assignees.

(a)	A reissue oath must be signed and sworn to or declaration made by 
the inventor or inventors except as otherwise provided (see ?? 1.42, 1.43, 
1.47), and must be accompanied by the written consent of all assignees, if 
any, owning an undivided interest in the patent, but a reissue oath may be 
made and sworn to or declaration made by the assignee of the entire inter-
est if the application does not seek to enlarge the scope of the claims of the 
original patent.  All assignees consenting to the reissue must establish 
their ownership interest in the patent by filing in the reissue application a 
submission in accordance with the provisions of ? 3.73(b) of this chapter.

(b)	A reissue will be granted to the original patentee, his legal represen-
tative or assigns as the interest may appear.

37 CFR 3.73.  Establishing right of assignee to take action.

*****

(b)	When an assignee seeks to take action in a matter before the Office 
with respect to a patent application, trademark application, patent, regis-
tration, or reexamination proceeding, the assignee must establish its own-
ership of the property to the satisfaction of the Commissioner.  Ownership 
is established by submitting to the Office, in the Office file related to the 
matter in which action is sought to be taken, documentary evidence of a 
chain of title from the original owner to the assignee (e.g., copy of an exe-
cuted assignment submitted for recording) or by specifying (e.g., reel and 
frame number) where such evidence is recorded in the Office.  The sub-
mission establishing ownership must be signed by a party authorized to act 
on behalf of the assignee.  Documents submitted to establish ownership 
may be required to be recorded as a condition to permitting the assignee to 
take action in a matter pending before the Office.

The reissue oath must be signed and sworn to by all the 
inventors, or declaration made by all the inventors, except 
as otherwise provided in  37 CFR 1.42, 1.43, and 1.47 (see  
MPEP ? 409). Where the reissue application does not seek 
to enlarge the scope of any of the claims of the original 
patent, the reissue oath may be made and sworn to or decla-
ration made by the assignee of the entire interest. Depend-
ing on the circumstances, either Form PTO/SB/51 Reissue 
Application Declaration by the Inventor, or Form PTO/SB/
52 Reissue Application by the Assignee, may be used to 
prepare a declaration in a reissue application.

 CONSENT TO THE REISSUE

Where no assignee exists, applicant should affirmatively 
state that fact. If the file record is silent as to the existence 
of an assignee, it will be presumed that an assignee does 
exist.  This presumption should be set forth by the examiner 
in the first Office action alerting applicant to the require-
ment. It should be noted that the mere filing of a small 
entity statement in no way relieves applicant of the require-
ment to affirmatively state that no assignee exists.

Where a small entity statement indicates that the  appli-
cation/patent is assigned, and there is no consent by the 
assignee named in the small entity statement, the examiner 
should make inquiry into the matter in an Office action, 
even if the record otherwise indicates that the application/
patent is not assigned.

The reissue oath or declaration must be accompanied by 
the written consent of all assignees.  35 U.S.C. 111(a) and  
37 CFR 1.53(b) provide, however, for according an appli-
cation a filing date if filed with a specification, including 
claim(s), and any required drawings. Thus, where an appli-
cation is filed without an oath or declaration, or without the 
consent of all assignees, if the application otherwise com-
plies with  37 CFR 1.53(b) and the reissue rules, the Office 
of Initial Patent Examination (OIPE) will accord a filing 
date and send out a notice of missing parts setting a period 
of time for filing the missing part and for payment of any 
surcharge required under 37 CFR 1.53(f) and 1.16(e).  If 
the reissue oath or declaration is filed but the assignee con-
sent is lacking, the surcharge is required because, until the 
consent is filed, the reissue oath or declaration is defective, 
since it is not apparent that the signatures thereon are 
proper absent an indication the assignees have consented to 
the filing. 

The consent of assignee must be signed by a party autho-
rized to act on behalf of the assignee. See  MPEP ? 324 for 
a discussion of parties authorized to act on behalf of the 
assignee.  The consent to the reissue application may use 
language such as:

The XYZ Corporation, assignee of U.S. Patent No. 9,999,999, 
consents to the filing of reissue application No. 09/999,999 (or 
the present application, if filed with the initial application papers) 
for the reissue of U.S. Patent No. 9,999,999.

       

_______________  

       

Lilly M. Schor

       

Vice President,

       

XYZ Corporation

Where the written consent of all the assignees to the fil-
ing of the reissue application cannot be obtained, applicant 
may under appropriate circumstances petition to the Office 
of Petitions (MPEP ? 1002.02(b)) for a waiver under  37 
CFR 1.183 of the requirement of  37 CFR 1.172, to permit 
the acceptance of the filing of the reissue application.  The 
petition fee under  37 CFR 1.17(h) must be included with 
the petition.

The reissue application can then be examined, but will 
not be allowed or issued without the consent of all the 
assignees as required by  37 CFR 1.172.  See N. B. Fassett, 
1877 C.D. 32, 11 O.G. 420 (Comm'r Pat. 1877); James D. 
Wright, 1876 C.D. 217, 10 O.G. 587 (Comm'r Pat. 1876).

Form Paragraph 14.15 may be used to indicate that the 
consent of the assignee is lacking.

?  14.15 Consent of Assignee to Reissue Lacking

This application is objected to under  37 CFR 1.172(a) as lacking the 
written consent of all assignees owning an undivided interest in the patent.  
The consent of the assignee must be in compliance with 37 CFR 1.172.  
See MPEP ? 1410.01.

A proper assent of the assignee in compliance with  37 CFR 1.172 and 
3.73 is required in reply to this Office action.

Examiner Note:

1.	This form paragraph may be used in an Office action which rejects 
any of the claims on other grounds.

2.	If otherwise ready for allowance, this form paragraph should be fol-
lowed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 
of form paragraph 7.51).

PROOF OF OWNERSHIP OF ASSIGNEE

The assignee that consents to the filing of the reissue 
application (as discussed above) must also establish that it 
is the assignee, i.e., the owner, of the patent. See  37 CFR 
1.172. Accordingly, a  37 CFR 3.73(b) paper establishing 
the ownership of the assignee should be submitted at the 
time of filing the reissue application, in order to support the 
consent of the assignee. The assignee must establish its 
ownership in accordance with  37 CFR 3.73(b) by:

(A)	filing in the reissue application documentary evi-
dence of a chain of title from the original owner to the 
assignee; or 

(B)	specifying in the record of the reissue application 
where such evidence is recorded in the Office (e.g., reel and 
frame number, etc.). 

Documents that are submitted to establish ownership 
may be required to be recorded.  Compliance with  37 CFR 
3.73(b) may be provided as part of the same paper in which 
the consent by assignee is provided. 

Upon initial receipt of a reissue application, the exam-
iner should inspect the application to determine whether the 
submission under  37 CFR 1.172 and  37 CFR 3.73(b) 
establishing the ownership of the assignee is present and 
sufficient.  If the submission is not present, form paragraph 
14.16 may be used to indicate that the assignee has not pro-
vided evidence of ownership.

?  14.16 Failure of Assignee To Establish Ownership

This application is objected to under  37 CFR 1.172(a) as the assignee 
has not established its ownership interest in the patent for which reissue is 
being requested. An assignee must establish its ownership interest in order 
to support the consent to a reissue application required by  37 CFR 
1.172(a). The assignee's ownership interest is established by:

(a) filing in the reissue application evidence of a chain of title from the 
original owner to the assignee, or 

(b) specifying in the record of the reissue application where such evi-
dence is recorded in the Office (e.g., reel and frame number, etc.). 

The submission with respect to (a) and (b) to establish ownership must 
be signed by a party authorized to act on behalf of the assignee.  See  
MPEP ? 1410.01.

An appropriate paper satisfying the requirements of  37 CFR 3.73 must 
be submitted in reply to this Office action.

Examiner Note:

1.	This form paragraph may be used in an Office action which rejects 
any of the claims on other grounds.

2.	If otherwise ready for allowance, this form paragraph should be fol-
lowed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 
of form paragraph 7.51).

Just as the consent of assignee must be signed by a party 
authorized to act on behalf of the assignee, the submission 
with respect to 37 CFR 3.73(b) to establish ownership must 
be signed by a party authorized to act on behalf of the 
assignee. The signature of an attorney or agent registered to 
practice before the Office is not sufficient, unless that attor-
ney or agent is authorized to act on behalf of the assignee. 

If the submission under 37 CFR 3.73(b) to establish 
ownership is not signed by a party authorized to act on 
behalf of the assignee, the appropriate paragraphs of Form 
Paragraphs 14.16.01 through 14.16.06 may be used.

?  14.16.01 Establishment of Ownership Not Signed by 
Appropriate Party

This application is objected to under  37 CFR 1.172(a) as the assignee 
has not established its ownership interest in the patent for which reissue is 
being requested. An assignee must establish its ownership interest in order 
to support the consent to a reissue application required by 37 CFR 
1.172(a). The submission establishing the ownership interest of the 
assignee is informal.  There is no indication of record that the party who 
signed the submission is an appropriate party to sign on behalf of the 
assignee.  37 CFR 3.73(b) 

A proper submission establishing ownership interest in the patent, pur-
suant to  37 CFR 1.172(a), is required in response to this action.

Examiner Note:

1.	This form paragraph should be followed: (a) by one of form para-
graphs 14.16.02 through 14.16.04, (b) then by form paragraph 14.16.05, 
(c) then optionally by form paragraph 14.16.06. 

2.	See  MPEP ? 1410.01.

?  14.16.02 Failure To State Capacity To Sign

The person who signed the submission establishing ownership interest 
has failed to state his/her capacity to sign for the corporation or other busi-
ness entity, and he/she has not been established as being authorized to act 
on behalf of the assignee.  See  MPEP ? 324.

Examiner Note:

1.	This form paragraph is to be used when the person signing the sub-
mission establishing ownership interest does not state his/her capacity 
(e.g., as a recognized officer) to sign for the assignee, and is not  estab-
lished as being authorized to act on behalf of the assignee.

2.	Use form paragraph 14.16.06 to explain how an official, other than a 
recognized officer, may properly execute a submission establishing own-
ership interest.  

?  14.16.03 Lack of Capacity To Sign

The person who signed the submission establishing ownership interest 
is not recognized as an officer of the assignee, and he/she has not been 
established as being authorized to act on behalf of the assignee. See MPEP 
? 324.

?  14.16.04 Attorney/Agent of Record Signs

The submission establishing ownership interest was signed by appli-
cant's [1]. An attorney or agent of record is not authorized to sign a sub-
mission establishing ownership interest, unless he/she has been 
established as being authorized to act on behalf of the assignee See MPEP 
? 324.

Examiner Note:

1.	This form paragraph is to be used when the person signing the sub-
mission establishing ownership interest is an attorney or agent of record 
who is not an authorized officer as defined in  MPEP ? 324 and has not 
been established as being authorized to act on behalf of the assignee.

2.	Use form paragraph 14.16.06 to explain how an official, other than a 
recognized officer, may properly execute a submission establishing own-
ership interest.  

3.	In bracket 1, insert either --attorney-- or --agent--.

?  14.16.06 Criteria To Accept When Signed by a Non-Recognized 
Officer

It would be acceptable for a person, other than a recognized officer, to 
execute a submission establishing ownership interest, provided the record 
for the application includes a statement that the person is empowered to 
sign a submission establishing ownership interest and/or act on behalf of 
the organization.

Accordingly, a new submission establishing ownership interest which 
includes such a statement above, will be considered to be executed by an 
appropriate official of the assignee.  A separately filed paper referencing 
the previously filed submission establishing ownership interest and con-
taining a proper empowerment statement would also be acceptable.

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 
14.16.02, 14.16.03 or 14.16.04.

2.	When one of form paragraphs 14.16.02, 14.16.03 or 14.16.04 is used 
to indicate that a submission establishing ownership interest  is not proper 
because it was not signed by a recognized officer, this form paragraph 
should be used to point out one way to correct the problem.

3.	While an indication of the person's title is desirable, its inclusion is 
not mandatory when this option is employed.

Where the submission establishes the assignee's owner-
ship as  to the patent, ownership as to the reissue applica-
tion will be presumed. Accordingly, a submission as to the 
ownership of the patent will be construed to satisfy the 
37 CFR1.172 (and 37 CFR 3.73(b)) requirements for estab-
lishing ownership of the application. Thus, a terminal dis-
claimer can be filed in a reissue application where 
ownership of the patent has been established without the 
need for a separate submission under  37 CFR 3.73(b) 
showing ownership of the reissue application.

Even if the submission states that it is establishing own-
ership of the reissue application (rather than the patent), the 
submission should be accepted by the examiner as also 
establishing ownership in the patent. The documentation in 
the submission establishing ownership of the reissue appli-
cation must of necessity include chain of title as to the 
patent.

COMPARISON OF ASSIGNEE THAT CONSENTS 
TO ASSIGNEE SET FORTH IN SUBMISSION 
ESTABLISHING OWNERSHIP INTEREST

The examiner must inspect both the consent and docu-
mentary evidence of ownership to determine whether the 
requirements of  37 CFR 1.172 have been met. The 
assignee indicated by the documentary evidence must be 
the same assignee which signed the consent. Also, the per-
son who signs the consent for the assignee and the person 
who signs the submission of evidence of ownership for the 
assignee must both be persons having authority to do so. 
See also  MPEP ? 324.

The reissue patent will be granted to the original paten-
tee, his or her legal representatives or assigns as the interest 
may appear. 

1411	Form of Specification

37 CFR 1.173.  Specification.

The specification of the reissue application must include the entire 
specification and claims of the patent, with the matter to be omitted by 
reissue enclosed in square brackets; and any additions made by the reissue 
must be underlined, so that the old and the new specifications and claims 
may be readily compared. Claims should not be renumbered and the num-
bering of claims added by reissue should follow the number of the highest 
numbered patent claim.  No new matter shall be introduced into the speci-
fication.

The file wrappers of all reissue applications are stamped 
"REISSUE" above the application number on the front of 
the file. "Reissue" also appears below the application num-
ber on the printed label on the file wrapper of application 
with 08/ and earliest series.

Cut-up soft copies of the original patent, with only a sin-
gle column of the printed patent securely mounted on a sep-
arate sheet of paper, should be used in preparing the reissue 
specification and claims to be filed. It should be noted, 
however, that amendments to the reissue application should 
not be prepared in this way. After filing, the specification 
and claims in the reissue application must be amended in 
the manner set forth by 37 CFR 1.121(b) and  MPEP 
? 1453. However, insertions or deletions to the patent spec-
ification or claims filed as part of the original reissue speci-
fication and claims should be underlined or bracketed, 
respectively, as indicated in  37 CFR 1.173. The presenta-
tion of the insertions or deletions as part of the original reis-
sue specification or claims is not an amendment under  
37 CFR 1.121.

Examples of the form for a twice-reissued patent are 
found in Re. 23,558 and Re. 28,488. Double underlining 
and double bracketing are used in the second reissue appli-
cation, while bold faced type and double bracketing appear 
in the printed patent (second reissue patent) to indicate fur-
ther insertions and deletions, respectively, in the second 
reissue patent.

Entire words or chemical formulas must be shown as 
being changed. Change in only a part of a word or formula 
is not permitted. Deletion of a chemical formula should be 
shown by brackets which are substantially larger and 
darker than any in the formula.

Where a chart, table, or chemical formula spans two col-
umns of the patent, it should not be split. Rather, the chart, 
table, or formula should be provided in its entirety as part 
of the column of the patent to which it pertains, in order to 
provide a continuity of the description. When doing so, the 
chart, table, or chemical formula will extend beyond the 
width of the column.

1411.01	Certificate of Correction or 
Disclaimer in Original Patent 

The applicant should include any changes, additions, or 
deletions that were made by a Certificate of Correction to 
the original patent grant in the reissue application without 
underlining or bracketing. The examiner should also make 
certain that all Certificate of Correction changes in the 
patent have been properly incorporated into the reissue 
application.

Certificate of Correction changes and disclaimer of 
claim(s) under  37 CFR 1.321(a) should be made without 
using underlining or brackets. Since these are part of the 
original patent and were made before the reissue was filed, 
they should show up in the printed reissue document as part 
of the original patent, i.e., not in italics or bracketed. If the 
changes are extensive and/or applicant has submitted them 
improperly with underlining and brackets, a clean copy of 
the specification with the Certificate of Correction changes 
in it may be requested by the examiner.

1411.02	New Matter

New matter, that is, matter not present in the patent 
sought to be reissued, is excluded from a reissue applica-
tion in accordance with  35 U.S.C. 251.

The claims in the reissue application must be for subject 
matter which the applicant had the right to claim in the 
original patent. Any change in the patent made via the reis-
sue application should be checked to ensure that it does not 
introduce new matter. Note that new matter may exist by 
virtue of the omission of a feature or of a step in a method. 
See United States Industrial Chemicals, Inc. v. Carbide & 
Carbon Chemicals Corp., 315 U.S. 668, 53 USPQ 6 
(1942). 

Form paragraph 14.22.01 may be used where new matter 
has been added anywhere in "the application for reissue" as 
prohibited by  35 U.S.C. 251.

?  14.22.01 Rejection, 35 U.S.C. 251, New Matter

Claim   [1] rejected under  35 U.S.C. 251 as being based upon new 
matter added to the patent for which reissue is sought.  The added material 
which is not supported by the prior patent is as follows:   [2]

Examiner Note:

1.	In bracket 2, fill in the applicable page and line numbers and provide 
an explanation of your position, as appropriate.

2.	A rejection under  35 U.S.C. 112, first paragraph, should also be 
made if the new matter is added to the claims or is added to the specifica-
tion and affects the claims. If new matter is added to the specification and 
does not affect the claims, an objection should be made based upon 
35 U.S.C. 132 using form paragraph 7.28.

1412	Content of Claims 

The content of claims in a reissue application is some-
what limited as indicated in  MPEP ? 1412.01 through  
MPEP ? 1412.03.

1412.01	Reissue Claims Must Be for Same 
General Invention 

The reissue claims must be for the same invention as that 
disclosed as being the invention in the original patent, as 
required by  35 U.S.C. 251. This does not mean that the 
invention claimed in the reissue must have been claimed in 
the original patent, although this is evidence that applicants 
considered it their invention. The entire disclosure, not just 
the claim(s), is considered in determining what the patentee 
objectively intended as his or her invention. The proper test 
as to whether reissue claims are for the same invention as 
that disclosed as being the invention in the original patent is 
"an essentially factual inquiry confined to the objective 
intent manifested by the original patent." In re Amos, 953 
F.2d 613, 618, 21 USPQ2d 1271, 1274 (Fed. Cir. 1991) 
(quoting In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 
489 (CCPA 1975)) (emphasis added). See also In re Mead, 
581 F.2d 257, 198 USPQ 412 (CCPA 1978). The "original 
patent" requirement of  35 U.S.C. 251 must be understood 
in light of In re Amos, supra, where the Court of Appeals 
for the Federal Circuit stated:

We conclude that, under both Mead and Rowand, a claim submit-
ted in reissue may be rejected under the "original patent" clause 
if the original specification demonstrates, to one skilled in the art, 
an absence of disclosure sufficient to indicate that a patentee 
could have claimed the subject matter. Merely finding that the 
subject matter was "not originally claimed, not an object of the 
original patent, and not depicted in the drawing," does not answer 
the essential inquiry under the "original patent" clause of ? 251, 
which is whether one skilled in the art, reading the specification, 
would identify the subject matter of the new claims as invented 
and disclosed by the patentees. In short, the absence of an 
"intent," even if objectively evident from the earlier claims, the 
drawings, or the original objects of the invention is simply not 
enough to establish that the new claims are not drawn to the 
invention disclosed in the original patent.

953 F.2d at 618-19, 21 USPQ2d at 1275. Claims presented 
in a reissue application are considered to satisfy the 
requirement of  35 U.S.C. 251 that the claims be "for the 
invention disclosed in the original patent" where:

(A)	the claims presented in the reissue application are 
described in the original patent specification and enabled 
by the original patent specification such that  35 U.S.C. 112 
first paragraph is satisfied; and

(B)	nothing in the original patent specification indi-
cates an intent not to claim the subject matter of the claims 
presented in the reissue application.

Some disclosure (description and enablement) in the 
original patent should evidence that applicant intended to 
claim or that applicant considered the material now claimed 
to be his or her invention. 

The original patent specification would indicate an intent 
not to claim the subject matter of the claims presented in 
the reissue application in a situation analogous to the fol-
lowing: 

The original patent specification discloses that composi-
tion X is not suitable (or not satisfactory) for molding an 
item because composition X fails to provide quick drying. 
After the patent issues, it is found that composition X 
would be desirable for the molding in spite of the failure to 
provide quick drying, because of some other newly recog-
nized benefit from composition X. A claim to composition 
X or a method of use thereof would not be permitted in a 
reissue application, because the original patent specifica-
tion contained an explicit statement of intent not to claim 
composition X or a method of use thereof. 

In most instances, however, the mere failure to claim a 
disclosed embodiment in the original patent (absent an 
explicit statement in the original patent specification of 
unsuitability of the embodiment) would not be grounds for 
prohibiting a claim to that embodiment in the reissue.

1412.02	Recapture of Canceled Subject 
Matter  [R-1]

**>A reissue will not be granted to "recapture" claimed 
subject matter which was surrendered in an application to 
obtain the original patent. Hester Industries, Inc. v. Stein, 
Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In 
re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 
1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 
221 USPQ 289, 295 (Fed. Cir. 1984); In re Wadlinger, 496 
F.2d 1200, 181 USPQ 826 (CCPA 1974); In re Richman, 
409 F.2d 269, 276, 161 USPQ 359, 363-364 (CCPA 1969); 
In re Willingham, 282 F.2d 353, 127 USPQ 211 (CCPA 
1960).  

TWO STEP TEST FOR RECAPTURE:

In Clement, 131 F.3d at 1468-69, 45 USPQ2d at 1164, 
the Court of Appeals for the Federal Circuit set forth guid-
ance for recapture as follows:

The first step in applying the recapture rule is to determine 
whether and in what aspect the reissue claims are broader than 
the patent claims. For example, a reissue claim that deletes a lim-
itation or element from the patent claims is broader in that limita-
tion's aspect.... Under Mentor [Mentor Corp. v. Coloplast, Inc., 
998 F.2d 992, 994, 27 USPQ2d 1521, 1524 (Fed. Cir. 1993)], 
courts must determine in which aspects the reissue claim is 
broader, which includes broadening as a result of an omitted lim-
itation....

The second step is to determine whether the broader aspects 
of the reissue claims relate to surrendered subject matter. To 
determine whether an applicant surrendered particular subject 
matter, we look to the prosecution history for arguments and 
changes to the claims made in an effort to overcome a prior art 
rejection. See Mentor, 998 F.2d at 995-96, 27 USPQ2d at 1524-
25; Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 
289, 294-95 (Fed. Cir. 1984).

In every reissue application, the examiner must first 
review each claim for the presence of broadening, as com-
pared with the scope of the claims of the patent to be reis-
sued. A reissue claim is broadened where some limitation 
of the patent claims is no longer required in the reissue 
claim; see MPEP ? 1412.03 for guidance as to the nature of 
a "broadening claim."

Where a claim in a reissue application is in fact broad-
ened, the examiner must next determine whether the 
broader aspects of that reissue claim relate to subject matter 
that applicant previously surrendered during the prosecu-
tion of the original application (which became the patent to 
be reissued). Each limitation of the patent claims, which is 
omitted or broadened in the reissue claim, must be 
reviewed for this determination. 

**

CRITERIA FOR DETERMINING THAT SUBJECT 
MATTER HAS BEEN SURRENDERED:

If the limitation now being omitted or broadened in the 
present reissue was originally presented/argued/stated in 
the original application to make the claims allowable over a 
rejection or objection made in the original application, the 
omitted limitation relates to subject matter previously sur-
rendered by applicant, and impermissible recapture exists. 
>See MPEP ?  706.02(l)(1) with respect to amendments 
made to distinguish the claimed invention from 35 U.S.C.  
102(e)/103 prior art which was commonly owned or 
assigned at the time the invention was made.<

The examiner should review the prosecution history of 
the original application file (of the patent to be reissued) for 
recapture. The prosecution history includes the rejections 
and applicant's arguments made therein. The record of the 
original application must show that the broadening aspect 
(the omitted/broadened limitation(s)) relates to subject mat-
ter that applicant previously surrendered.

Example

 (A) A limitation of the patent claims is omitted in the 
reissue claims. This omission provides a broadening 
aspect in the reissue claims, as compared to the claims 
of the patent. The omitted limitation was originally 
argued in the original application to make the applica-
tion claims allowable over a rejection or objection made 
in the application. Thus, the omitted limitation relates to 
subject matter previously surrendered, in the original 
application.

Note: The argument that the claim limitation defined 
over the rejection must have been specific as to the lim-
itation; rather than a general statement regarding the 
claims as a whole. In other words, a general "boiler 
plate" sentence will not be sufficient to establish recap-
ture. An example of one such "boiler plate" sentence is:

In closing, it is argued that the limitations of claims 1-7 distin-
guish the claims from the teachings of the prior art, and claims 1-
7 are thus patentable.

This type of general "argument" will not, by itself, be 
sufficient to establish surrender and recapture.

Example

(B) The limitation omitted in the reissue was added in 
the original application claims for the purpose of mak-
ing the claims allowable over a rejection or objection 
made in the application. Even though applicant made no 
argument on the record that the limitation was added to 
obviate the rejection, the nature of the addition to the 
claim can show that the limitation was added in direct 
reply to the rejection. This too will establish the omitted 
limitation as relating to subject matter previously sur-
rendered. To illustrate this, note the following example:

The original application claims recite limitations A+B+C, and 
the Office action rejection combines two references to show 
A+B+C. In the amendment replying to the Office action, appli-
cant adds limitation D to A+B+C in the claims, but makes no 
argument as to that addition. The examiner then allows the 
claims. Even though there is no argument as to the addition of 
limitation D, it must be presumed that the D limitation was added 
to obviate the rejection. The subsequent deletion of (omission of) 
limitation D in the reissue claims would be presumed to be a 
broadening in an aspect of the reissue claims related to surren-
dered subject matter.

Example

(C) The limitation A omitted in the reissue claims was 
present in the claims of the original application. The 
examiner's reasons for allowance in the original appli-
cation stated that it was that limitation A which distin-
guished over a potential combination of references X 
and Y. Applicant did not present on the record a counter 
statement or comment as to the examiner's reasons for 
allowance, and permitted the claims to issue. The omit-
ted limitation is thus established as relating to subject 
matter previously surrendered.

ARGUMENT (WITHOUT AMENDMENT TO THE 
CLAIMS) IN THE ORIGINAL APPLICATION MAY 
BE SUFFICIENT TO ESTABLISH RECAPTURE: 

In Clement, the recapture was directed to subject matter 
surrendered in the original application by changes made to 
the claims (i.e., amendment of the claims) in an effort to 
overcome a prior art rejection. The Clement Court, how-
ever, also stated that "[t]o determine whether an applicant 
surrendered particular subject matter, we look to the prose-
cution history for arguments and changes to the claims 
made in an effort to overcome a prior art rejection." 
[Emphasis added] 131 F.3d at 1469, 45 USPQ2d at 1164. 
This statement in Clement was subsequently discussed in 
Hester Indus., Inc. v. Stein, Inc., supra, where the Court 
observed that surrender of claimed subject matter may 
occur by arguments made during the prosecution of the 
original patent application even where there was no claim 
change made. The Court in Hester held that the surrender 
which forms the basis for impermissible recapture "can 
occur through arguments alone." 142 F.3d at 1482, 
46 USPQ2d at 1649. Accordingly, where claims are broad-
ened in a reissue application, the examiner should review 
the prosecution history of the original patent file for recap-
ture, even where the claims were never amended during the 
prosecution of the application which resulted in the patent.

REISSUE CLAIMS HAVE SAME OR BROADER  
SCOPE IN ALL ASPECTS:

The recapture rule bars the patentee from acquiring 
through reissue claims that are, in all aspects, of the same 
scope as, or are broader in scope than, those claims can-
celed from the original application to obtain a patent. Ball, 
729 F.2d at 1436, 221 USPQ at 295.

REISSUE CLAIMS ARE NARROWER IN SCOPE IN 
ALL ASPECTS:

The patentee is free to acquire, through reissue, claims 
that are narrower in scope in all aspects than claims can-
celed from the original application to obtain a patent. If the 
reissue claims are narrower than the claims canceled from 
the original application, yet broader than the original patent 
claims, reissue must be sought within 2 years after the grant 
of the original patent. Ball, 729 F.2d at 1436, 221 USPQ at 
295. See MPEP ? 1412.03 as to broadening claims.

REISSUE CLAIMS ARE BROADER IN SCOPE IN 
SOME ASPECTS, BUT NARROWER IN OTHERS:

Reissue claims that are broader in certain aspects and 
narrower in others vis-a-vis claims canceled from the origi-
nal application to obtain a patent may avoid the effect of 
the recapture rule if the claims are broader in a way that 
does not attempt to reclaim what was surrendered earlier. 
Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 994, 
27 USPQ2d 1521, 1525 (Fed. Cir. 1993). "[I]f the reissue 
claim is as broad as or broader in an aspect germane to a 
prior art rejection, but narrower in another aspect com-
pletely unrelated to the rejection, the recapture rule bars the 
claim; [] if the reissue claim is narrower in an aspect ger-
mane to [a] prior art rejection, and broader in an aspect 
unrelated to the rejection, the recapture rule does not bar 
the claim, but other rejections are possible." Clement, 131 
F.3d at 1470, 45 USPQ2d at 1165.

If the broadening aspect of the reissue claim relates to 
subject matter previously surrendered, the examiner must 
determine whether the newly added narrowing limitation in 
the reissue claim modifies the claim such that the scope of 
the claim no longer results in a recapture of the surrendered 
subject matter. If the narrowing limitation modifies the 
claim in such a manner that the scope of the claim no 
longer results in a recapture of the surrendered subject mat-
ter, then there is no recapture. In this situation, even though 
a rejection based on recapture is not made, the examiner 
should make of record the reason(s) why, as a result of the 
narrowing limitation, there is no recapture.

REISSUE TO TAKE ADVANTAGE OF 35 U.S.C. 
103(b):

A patentee may file a reissue application to permit con-
sideration of process claims which qualify for 35 U.S.C. 
103(b) treatment if a patent is granted on an application 
entitled to the benefit of 35 U.S.C. 103(b), without an elec-
tion having been made as a result of error without deceptive 
intent. See MPEP ? 706.02(n). This is not to be consid-
ered a recapture. The addition of process claims, however, 
will generally be considered to be a broadening of the 
invention (Ex Parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. 
App. & Inter. 1989)), and such addition must be applied for 
within two years of the grant of the original patent. See also 
MPEP ? 1412.03 as to broadened claims.

REISSUE FOR ARTICLE CLAIMS WHICH ARE 
FUNCTIONAL DESCRIPTIVE MATERIAL STORED 
ON A COMPUTER-READABLE MEDIUM:

A patentee may file a reissue application to permit con-
sideration of article of manufacture claims which are func-
tional descriptive material stored on a computer-readable 
medium, where these article claims correspond to the pro-
cess or machine claims which have been patented. The 
error in not presenting claims to this statutory category of 
invention (the "article" claims) must have been made as a 
result of error without deceptive intent. The addition of 
these "article" claims will generally be considered to be a 
broadening of the invention (Ex Parte Wikdahl, 10 
USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such 
addition must be applied for within two years of the grant 
of the original patent. See also MPEP ? 1412.03 as to 
broadened claims.

REJECTION BASED UPON RECAPTURE:

Reissue claims which recapture surrendered subject mat-
ter should be rejected using form paragraph 14.17.

?  14.17 Rejection, 35 U.S.C. 251, Recapture

Claim[1] rejected under 35 U.S.C. 251 as being an improper recapture 
of broadened claimed subject matter surrendered in the application for the 
patent upon which the present reissue is based. See Hester Industries, Inc. 
v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re 
Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. 
United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). 
A broadening aspect is present in the reissue which was not present in the 
application for patent. The record of the application for the patent shows 
that the broadening aspect (in the reissue) relates to subject matter that 
applicant previously surrendered during the prosecution of the application. 
Accordingly, the narrow scope of the claims in the patent was not an error 
within the meaning of 35 U.S.C. 251, and the broader scope surrendered in 
the application for the patent cannot be recaptured by the filing of the 
present reissue application.

[2]

Examiner Note:

In bracket 2, the examiner should explain the specifics of why recap-
ture exists, including an identification of the omitted/broadened claim lim-
itations in the reissue which provide the "broadening aspect" to the 
claim(s), and where in the original application the narrowed claim 
scope was presented/argued to obviate a rejection/objection. See MPEP 
? 1412.02. <

1412.03	Broadening Reissue Claims  [R-1]

35 U.S.C. 251 prescribes a 2-year limit for filing appli-
cations for broadening reissues:

No reissue patent shall be granted enlarging the scope of the orig-
inal patent unless applied for within two years from the grant of 
the original patent. 

MEANING OF "BROADENED REISSUE CLAIM" 

A broadened reissue claim is a claim which enlarges the 
scope of the claims of the patent, i.e., a claim which is 
greater in scope than each and every claim of the >origi-
nal< patent. A claim of a reissue application enlarges the 
scope of the claims of the patent if it is broader in at least 
one respect, even though it may be narrower in other 
respects. 

A claim in the reissue which includes subject matter not 
covered by the patent claims enlarges the scope of the 
patent claims. For example, if any amended or newly added 
claim in the reissue contains within its scope any conceiv-
able * >product< or process which would not have 
infringed the patent, then that reissue claim would be 
broader than the patent claims. Tillotson, Ltd. v. Walbro 
Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 
(Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730, 126 USPQ 
155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603, 
120 USPQ 185, 186 (CCPA 1958). A claim which reads on 
something which the original claims do not is a broadened 
claim. A claim would be considered a broadening claim if 
the patent owner would be able to sue any party for * 
infringement who previously could not have been sued for 
* infringement.  >Thus, where the original patent claims 
only the process, and the reissue application adds (for the 
first time) product claims, the scope of the claims has been 
broadened since a party could not be sued for infringement 
of the product based on the claims of the original patent.

The addition of combination claims in a reissue applica-
tion where only subcombination claims were present in the 
original patent could be a broadening of the invention. The 
question which must be resolved in this case is whether the 
combination claims added in the reissue would be for "the 
invention as claimed" in the original patent. See Ex Parte 
Wikdahl, 10 USPQ2d at 1549. The newly added combina-
tion claims should be analyzed to determine whether they 
contain every limitation of the subcombination of any 
claim of the original patent. If the combination claims 
(added in the reissue) contain every limitation of the sub-
combination (which was claimed in the original applica-
tion), then infringement of the combination must also result 
in infringement of the subcombination. Accordingly, the 
patent owner could not, if a reissue patent issues with the 
combination claims, sue any new party for infringement 
who could not have been sued for infringement of the orig-
inal patent. Therefore, broadening does not exist, in spite 
of the addition of the combination.

BROADENING-INDIRECT INFRINGEMENT

35 U.S.C. 271(g).  Infringement of patent

*****

(g)	Whoever without authority imports into the United States or 
offers to sell, sells, or uses within the United States a product which is 
made by a process patented in the United States shall be liable as an 
infringer, if the importation, offer to sell, sale, or use of the product occurs 
during the term of such process patent. In an action for infringement of a 
process patent, no remedy may be granted for infringement on account of 
the noncommercial use or retail sale of a product unless there is no ade-
quate remedy under this title for infringement on account of the importa-
tion or other use, offer to sell, or sale of that product. A product which is 
made by a patented process will, for purposes of this title, not be consid-
ered to be so made after -

(1)	it is materially changed by subsequent processes; or

(2)	it becomes a trivial and nonessential component of another 
product.

*****

An unusual type of broadening may arise where the 
patent owner adds a limitation to patent claims which are to 
a process of making an intermediate so as to now claim a 
process of making a final product. In Eli Lilly and Co. v. 
American Cyanamid Co., 82 F.3d 1568, 1577, 38 USPQ2d 
1705, 1712 (Fed. Cir. 1996), the court noted that a patent 
holder having claims to preparing an intermediate com-
pound is unable to successfully pursue an accused 
infringer who is importing for sale the final product, where 
the accused infringer has "materially changed" the interme-
diate by converting it into the final product. Thus, where a 
patent claims a method of making new intermediate prod-
uct ABC, the patent owner will not be able to prevent a 
competitor from importing the final product ABCD for the 
purpose of selling it in the United States. If, however, the 
patent claims could be modified by reissue to include a 
claim to final product ABCD, then the patent owner would, 
in fact, be able to prevent a competitor from importing the 
final product ABCD because that importation would (indi-
rectly) infringe the patent under 35 U.S.C. 271(g). The 
amendment of the patent claims in the reissue application 
to include a final step of converting the intermediate ABC 
to the final product ABCD would enable the patent owner 
to invoke the protection of 35 U.S.C. 271(g), thereby 
increasing the scope of protection of the patent claims so 
that a new set of infringers would be created.

As pointed out above, a reissue claim is broadened if it 
contains within its scope any conceivable invention which 
would not have infringed the patent, but will now infringe 
the reissue claim. Thus, when the new reissue claims to 
producing the final product ABCD are subjected to the test 
for broadening, as set forth by the Court of Appeals for the 
Federal Circuit in Tillotson, Ltd. v. Walbro Corp., 831 F.2d 
1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (1987)(citing In 
re Self , 671 F.2d 1344, 213 USPQ 1 (CCPA 1982); In re 
Ruth, 287 F.2d 729, 126 USPQ 155 (CCPA 1960)), they 
indeed provide the patent owner with expanded protection. 
If the reissue is granted, the patent owner would be able to 
exclude an infringer whom the patent owner was unable to 
exclude heretofore.

The inclusion of an additional step in a chemical process 
claim would generally appear to narrow the scope of that 
claim. A process claim having more steps is usually consid-
ered to be narrower than one reciting fewer steps. Accord-
ingly, the addition of a process step to convert intermediate 
ABC into the final product ABCD might initially appear to 
be solely a narrowing of the claims. Through the provisions 
of 35 U.S.C. 271(g), however, what appears to be solely a 
narrowing limitation in actuality also provides an element 
of broadening to the claim because it provides an additional 
element of protection for the patent owner which did not 
exist prior to the insertion of the limitation.

In a chemical case where process claims are present, the 
examiner should be careful to check the claims for the pres-
ence of this unique type of broadening.

SCOPE OF DEPENDENT CLAIM ENLARGED-NOT 
BROADENING

As pointed out above, a claim will be considered a 
broadened reissue claim when it is greater in scope than 
each and every claim of the patent to be reissued.  A corol-
lary of this is that a claim which has been broadened in a 
reissue as compared to its scope in the patent is not a 
broadened reissue claim if it is narrower than, or equal in 
scope to, any other claim which appears in the patent.  A 
common example of this is where dependent claim 2 is 
broadened via the reissue, but independent claim 1 on 
which it is based in not broadened.  Since a dependent 
claim is construed to contain all the limitations of the claim 
upon which it depends, claim 2 must be at least as narrow 
as claim 1 and is thus not a broadened reissue claim.<

The addition of process claims as a new category of 
invention to be claimed in the patent (i.e., where there were 
no method claims present in the original patent) is gener-
ally considered as being a broadening of the invention. See 
Ex Parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 
1989).

WHEN A BROADENED CLAIM CAN BE 
PRESENTED

A broadened claim can be presented within two years 
from the grant of the original patent in a reissue applica-
tion. In addition, a broadened claim can be presented after 
two years from the grant in a broadening reissue which was 
filed within two years from the grant. Where any intent to 
broaden is indicated in the reissue application within the 
two years, a broadened claim can >subsequently< be pre-
sented in the reissue after two years. Finally, if intent to 
broaden is indicated in a parent reissue application within 
the two years, a broadened claim can be presented in a con-
tinuing reissue application after two years. In any other sit-
uation, a broadened claim cannot be presented, and the 
examiner should check carefully for the improper presenta-
tion of broadened claims. 

A reissue application filed on the 2-year anniversary date 
is considered to be filed within 2 years of the patent grant. 
See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 
(CCPA 1964) for a similar rule in interferences.

See also the following cases which pertain to broadened 
reissues:

In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-
74 (Fed. Cir. 1997) (Broadened claims in a continuing reis-
sue application were properly rejected under  35 U.S.C. 251 
because the proposal for broadened claims was not made 
(in the parent reissue application) within two years from the 
grant of the original patent and the public was not notified 
that broadened claims were being sought until after the 
two-year period elapsed.); 

In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 
1985), cert. denied, 476 U.S. 1183 (1986) (The failure by 
an applicant to include an oath or declaration indicating a 
desire to seek broadened claims within two years of the 
patent grant will bar a subsequent attempt to broaden the 
claims after the two year limit. Under the former version of  
37 CFR 1.175 (the former 37 CFR 1.175(a)(4)), applicant 
timely sought a "no-defect" reissue, but the Court did not 
permit an attempt made beyond the two year limit to con-
vert the reissue into a broadening reissue. In this case, 
applicant did not indicate any intent to broaden within the 
two years.);

In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 
(Fed. Cir. 1985) (en banc) (A reissue application with 
broadened claims was filed within two years of the patent 
grant; however, the declaration was executed by the 
assignee rather than the inventor.  The Federal Circuit per-
mitted correction of the improperly executed declaration to 
be made more than two years after the patent grant.);

In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 
(CCPA 1970) (If the reissue application is timely filed 
within two years of the original patent grant and the appli-
cant indicates in the oath or declaration that the claims will 
be broadened, then applicant may subsequently broaden the 
claims in the pending reissue prosecution even if the addi-
tional broadening occurs beyond the two year limit.). 

Form paragraphs 14.12 and 14.13 may be used in rejec-
tions based on improper broadened reissue claims.

?  14.12 Rejection, 35 U.S.C. 251, Broadened Claims After Two 
Years

Claim   [1] rejected under  35 U.S.C. 251 as being broadened in a reis-
sue application filed outside the two year statutory period. [2]  >A claim is 
broader in scope than the original claims if it contains within its scope any 
conceivable product or process which would not have infringed the origi-
nal patent.  A claim is broadened if it is broader in any one respect even 
though it may be narrower in other respects.<

Examiner Note:

The claim limitations that broaden the scope should be identified and 
explained in bracket 2.  See  MPEP ?? 706.03(x) and  1412.03.

?  14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed by 
Assignee

Claim   [1] rejected under  35 U.S.C. 251 as being improperly broad-
ened in a reissue application made and sworn to by the assignee and not 
the patentee. [2]>A claim is broader in scope than the original claims if it 
contains within its scope any conceivable product or process which would 
not have infringed the original patent.  A claim is broadened if it is broader 
in any one respect even though it may be narrower in other respects.<

Examiner Note:

The claim limitations that broaden the scope should be identified and 
explained in bracket 2.  See  MPEP ?? 706.03(x) and  1412.03.

>

1412.04	Correction of Inventorship  [R-1]

  The correction of misjoinder of inventors has been held 
to be a ground for reissue. See Ex parte Scudder, 169 
USPQ 814, 815 (Bd. App. 1971) wherein the Board held 
that  35 U.S.C. 251 authorizes reissue applications to cor-
rect misjoinder of inventors where 35 U.S.C. 256 is inade-
quate. See also A.F. Stoddard & Co. v. Dann, 564 F.2d 556, 
567 n.16, 195 USPQ 97, 106 n.16 (D.C. Cir. 1977) wherein 
correction of inventorship from sole inventor A to sole 
inventor B was permitted in a reissue application. The court 
noted that reissue by itself is a vehicle for correcting inven-
torship in a patent.

CERTIFICATE OF CORRECTION AS A VEHICLE 
FOR CORRECTING INVENTORSHIP

While reissue is a vehicle for correcting inventorship in a 
patent, correction of inventorship should be effected under 
the provisions of  35 U.S.C. 256 and  37 CFR 1.324 by fil-
ing a request for a certificate of correction if:

(A)	the only change being made in the patent is to cor-
rect the inventorship; and 

(B)	all parties are in agreement and the inventorship 
issue is not contested.

 See MPEP ? 1481 for the procedure to be followed to 
obtain a Certificate of Correction for correction of inven-
torship.

REISSUE AS A VEHICLE FOR CORRECTING 
INVENTORSHIP

  Where the provisions of  35 U.S.C. 256 and  37 CFR 
1.324 do not apply, a reissue application is the appropriate 
vehicle to correct inventorship. The failure to name the cor-
rect inventive entity is an error in the patent which is cor-
rectable under 35 U.S.C. 251. The reissue oath or 
declaration pursuant to  37 CFR 1.175 must state that the 
applicant believes the original patent to be wholly or partly 
inoperative or invalid through error of a person being incor-
rectly named in an issued patent as the inventor, or through 
error of an inventor incorrectly not named in an issued 
patent, and that such error arose without any deceptive 
intention on the part of the applicant. The reissue oath or 
declaration must, as stated in  37 CFR 1.175, also comply 
with  37 CFR 1.63.

 The correction of inventorship does not enlarge the 
scope of the patent claims. Where a reissue application 
does not seek to enlarge the scope of the claims of the orig-
inal patent, the reissue oath may be made and sworn to, or 
the declaration made, by the assignee of the entire interest 
under  37 CFR 1.172. An assignee of part interest may not 
file a reissue application to correct inventorship where the 
other co-owner did not join in the reissue application and 
has not consented to the reissue proceeding. See Baker 
Hughes Inc. v. Kirk, 921 F. Supp. 801, 809, 38 USPQ2d 
1885, (D.D.C. 1995). See  35 U.S.C. 251, third paragraph. 
Thus, the signatures of the inventors are not needed on the 
reissue oath or declaration. Accordingly, an assignee of the 
entire interest can add or delete an inventor by reissue (e.g., 
correct inventorship from inventor A to inventors A and B) 
without the original inventor's consent. See also  37 CFR 
3.71 ("The assignee of record of the entire right, title and 
interest in an application for patent is entitled to conduct 
the prosecution of the patent application to the exclusion of 
the named inventor or previous assignee."). Thus, the 
assignee of the entire interest can file a reissue to change 
the inventorship to one which the assignee believes to be 
correct, even though an inventor might disagree. The pro-
tection of the assignee's property rights in the application 
and patent are statutorily based in  35 U.S.C. 118.

 Where a reissue to correct inventorship also changes the 
claims to enlarge the scope of the patent claims, the signa-
ture of the inventors is needed. However, if an inventor 
refuses to sign the reissue oath or declaration because he or 
she believes the change in inventorship (to be effected) is 
not correct, the reissue application can still be filed with a 
petition under  37 CFR 1.47 without that inventor's signa-
ture. It is the assignee who controls correction of inventor-
ship. 

 The reissue application with its reissue oath or declara-
tion under  37 CFR 1.175 provides a complete mechanism 
to correct inventorship. See A.F. Stoddard & Co. v. Dann, 
564 F.2d at 567, 195 USPQ at 106. A petition under 
37 CFR 1.48 or  37 CFR 1.324 cannot be used to correct 
the inventorship of a reissue application. If a petition under 
37 CFR 1.48 or 37 CFR 1.324 is filed in a reissue applica-
tion, the petition should be dismissed and the petition fee 
refunded. The material submitted with the petition should 
then be considered to determine if it complies with 37 CFR 
1.175. If the material submitted with the petition does com-
ply with the requirements of 37 CFR 1.175 (and the reissue 
application is otherwise in order), the correction of inven-
torship will be permitted as a correction of an error in the 
patent under  35 U.S.C. 251.<

1413	Drawings [R-1]

37 CFR 1.174.  Drawings.

(a)	The drawings upon which the original patent was issued may be 
used in reissue applications if no changes whatsoever are to be made in the 
drawings. In such cases, when the reissue application is filed, the applicant 
must submit a temporary drawing which may consist of a copy of the 
printed drawings of the patent or a photoprint of the original drawings of 
the size required for original drawing.

(b)	Amendments which can be made in a reissue drawing, that is, 
changes from the drawing of the patent, are restricted.

**>The drawings of the original patent may be used as 
the formal drawings for the reissue application, and new 
drawings need not be submitted, provided that no alteration 
whatsoever is made in the original patent drawings. Where 
applicant desires to use the drawings of the original patent 
as the formal drawings for the reissue application, a letter 
requesting transfer of the drawings from the patent file 
should be filed along with the reissue application. Even 
though a transfer of the original drawings is directed, appli-
cant must still submit, upon filing, a copy of the original 
drawings or a copy of the printed drawings of the printed 
patent.

When the reissue application is ready for allowance, the 
examining group makes the formal transfer of the original 
drawing to the reissue application, notation thereof being 
entered on the file wrapper of the patented file. This trans-
fer should not be carried out prior to allowance, because the 
reissue application might become abandoned, and as such, 
the original drawings must remain in place.

AMENDMENT OF DRAWINGS

37 CFR 1.121.  Manner of making amendments

*****

(b)	Amendments in reissue applications: Amendments in reissue 
applications are made by filing a paper, in compliance with ? 1.52, direct-
ing that specified amendments be made.

*****

(3)	Drawings.

(i)	Amendments to the original patent drawings are not 
permitted. Any change to the patent drawings must be by way of a new 
sheet of drawings with the amended figures identified as "amended" and 
with added figures identified as "new" for each sheet changed submitted 
in compliance with ? 1.84.

(ii)	Where a change to the drawings is desired, a sketch in 
permanent ink showing proposed changes in red, to become part of the 
record, must be filed for approval by the examiner and should be in a sep-
arate paper.

*****

The provisions of 37 CFR  1.121(b)(3) govern the man-
ner of making amendments to the drawings in a reissue 
application. The following guidance is provided as to the 
procedure for amending drawings: 

(A)	Amending (i.e., changing or physically altering) 
the original patent drawing sheets is not permitted. Any 
request to do so should be denied. 

(B)	Where a change to the drawings is desired, a 
request for the drawing change must be filed as a separate 
paper in the application. The request must include a sketch 
in permanent ink showing proposed changes in red and 
must include a request for approval of the changes by the 
examiner. The examiner should inspect the sketch for the 
presence of new matter, for conformance with the specifi-
cation as to structure and numbering, and for anything else 
that could result in the refusal of the request for the drawing 
change.

(C)	Where the drawing change request is approved, 
the examiner will require a formal copy of the drawing 
sheet(s) having the change(s). Each new drawing sheet 
must identify any changed figure as "amended" and any 
added  figure as "new." If a drawing figure is to be deleted 
in toto, it must be enclosed in brackets and identified as 
"canceled." If these requirements are not complied with for 
any new drawing sheet, that sheet will not be entered. 

(D)	For each proper new drawing sheet being added, 
the new sheet should be inserted after the existing drawing 
sheets. For each proper new drawing sheet which replaces 
an existing drawing sheet, the existing sheet should be can-
celed by placing the sheet face down in the file and placing 
a large "X" on the back of the sheet. The new sheet should 
be inserted in place of the turned over existing sheet. 

(E)	If any drawing change request is not approved or 
if any submitted sheet of formal drawings is not entered, 
the examiner will so inform the reissue applicant in the next 
Office action, and the examiner will set forth the reasons 
for same.<

1414	Content of Reissue Oath/Declaration

37 CFR 1.175.  Reissue oath or declaration.

(a)	The reissue oath or declaration in addition to complying with 
the requirements of ? 1.63, must also state that:

(1)	The applicant believes the original patent to be 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 the paten-
tee had the right to claim in the patent, stating at least one error being 
relied upon as the basis for reissue; and

(2)	All errors being corrected in the reissue application up to the 
time of filing of the oath or declaration under this paragraph arose without 
any deceptive intention on the part of the applicant.

(b)(1)	For any error corrected, which is not covered by the oath or 
declaration submitted under paragraph (a) of this section, applicant must 
submit a supplemental oath or declaration stating that every such error 
arose without any deceptive intention on the part of the applicant. Any 
supplemental oath or declaration required by this paragraph must be sub-
mitted before allowance and may be submitted:

(i)	With any amendment prior to allowance; or

(ii)	In order to overcome a rejection under  35 U.S.C. 251 made 
by the examiner where it is indicated that the submission of a supplemen-
tal oath or declaration as required by this paragraph will overcome the 
rejection.

(2)	For any error sought to be corrected after allowance, a sup-
plemental oath or declaration must accompany the requested correction 
stating that the error(s) to be corrected arose without any deceptive inten-
tion on the part of the applicant.

(c)	Having once stated an error upon which the reissue is based, as 
set forth in paragraph (a)(1), unless all errors previously stated in the oath 
or declaration are no longer being corrected, a subsequent oath or declara-
tion under paragraph (b) of this section need not specifically identify any 
other error or errors being corrected.

(d)	The oath or declaration required by paragraph (a) of this section 
may be submitted under the provisions of ? 1.53(f).

The reissue oath/declaration is an essential part of a reis-
sue application and must be filed with the application, or 
within the time period set under  37 CFR 1.53(f) along with 
the required surcharge as set forth in  37 CFR 1.16(e) in 
order to avoid abandonment. 

The question of the sufficiency of the reissue oath/decla-
ration filed under  37 CFR 1.175 must in each case be 
reviewed and decided personally by the primary examiner.

Reissue oaths or declarations must contain the follow-
ing:

(A)	A statement that the applicant believes the original 
patent to be wholly or partly inoperative or invalid-

(1)	by reason of a defective specification or draw-
ing, or

(2)	by reason of the patentee claiming more or less 
than patentee had the right to claim in the patent; 

(B)	A statement of at least one error which is relied 
upon to support the reissue application, i.e., as the basis for 
the reissue;

(C)	A statement that all errors which are being cor-
rected in the reissue application up to the time of filing of 
the oath/declaration arose without any deceptive intention 
on the part of the applicant; and 

(D)	The information required by  37 CFR 1.63.

These elements will now be discussed:

I.	A STATEMENT THAT THE APPLICANT 
BELIEVES THE ORIGINAL PATENT TO  BE 
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 PATENTEE HAD THE 
RIGHT TO CLAIM IN THE PATENT.

In order to satisfy this requirement, a declaration can 
state:

"Applicant believes the original patent to be partly inoperative or 
invalid by reason of a defective specification or drawing."

Alternatively, a declaration can state: 

"Applicant believes the original patent to be partly inoperative or 
invalid by reason of the patentee claiming more or less than pat-
entee had the right to claim in the patent."

Where the specification or drawing is defective and pat-
entee claimed more or less than patentee had the right to 
claim in the patent, then both statements should be included 
in the reissue oath/declaration.  See  MPEP ? 1412.04 for 
an exemplary declaration statement when the error being 
corrected is an error in inventorship.

The above examples will be sufficient to satisfy this 
requirement without any further statement.

Form paragraph 14.01 may be used where the reissue 
oath/declaration does not provide the required statement as 
to applicant's belief that the original patent is wholly or 
partly inoperative or invalid. 

?  14.01 Defective Reissue Oath/Declaration, 37 CFR 1.175(a)(1) 
- No Statement of Defect in the Patent

The reissue oath/declaration filed with this application is defective 
because it fails to contain the statement required under 37 CFR 
1.175(a)(1) as to applicant's belief that the original patent is wholly or 
partly inoperative or invalid. See  37 CFR 1.175(a)(1) and see MPEP 
? 1414.  [1]

Examiner Note:

1.	Use this form paragraph when applicant: (a) fails to allege that the 
original patent is inoperative or invalid and/or (b) fails to state the reason 
of a defective specification or drawing, or of patentee claiming more or 
less than patentee had the right to claim in the patent . In bracket 1, point 
out the specific defect to applicant by using the language of (a) and/or (b), 
as it is appropriate.

2.	Form paragraph 14.14 must follow this form paragraph.

II.	A STATEMENT OF AT LEAST ONE ERROR 
WHICH IS RELIED UPON TO SUPPORT THE 
REISSUE APPLICATION (I.E., THE BASIS 
FOR THE REISSUE).

 A reissue applicant must acknowledge the existence of 
an error in the specification, drawings, or claims, which 
error causes the original patent to be defective. In re Wilder, 
736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). A change 
or departure from the original specification or claims repre-
sents an "error" in the original patent under  35 U.S.C. 251. 
See  MPEP ? 1402 for a discussion of grounds for filing a 
reissue that may constitute the "error" required by  35 
U.S.C. 251. Not all changes with respect to the patent con-
stitute the "error" required by  35 U.S.C. 251.

Applicant need only specify in the reissue oath/declara-
tion one of the errors upon which reissue is based. Where 
applicant specifies one such error, this requirement of a 
reissue oath/declaration is satisfied. Applicant may specify 
more than one error.

Where more than one error is specified in the oath/decla-
ration and some of the designated "errors" are found to not 
be "errors" under  35 U.S.C. 251, any remaining error 
which is an error under  35 U.S.C. 251 will still support the 
reissue.

The "at least one error" which is relied upon to support 
the reissue application must be set forth in the oath/declara-
tion. It is not necessary, however, to point out how (or 
when) the error arose or occurred. Further, it is not neces-
sary to point out how (or when) the error was discovered. If 
an applicant chooses to point out these matters, the state-
ments directed to these matters will not be reviewed by the 
examiner, and the applicant should be so informed in the 
next Office action. All that is needed for the oath/declara-
tion statement as to error is the identification of  "at least 
one error" relied upon.

In identifying the error, it is sufficient that the reissue 
oath/declaration identify a single word, phrase, or expres-
sion in the specification or in an original claim, and how it 
renders the original patent wholly or partly inoperative or 
invalid. The corresponding corrective action which has 
been taken to correct the original patent need not be identi-
fied in the oath/declaration. If the initial reissue oath/decla-
ration "states at least one error" in the original patent, and, 
in addition, recites the specific corrective action taken in 
the reissue application, the oath/declaration would be con-
sidered acceptable, even though the corrective action state-
ment is not required.

It is not sufficient for an oath/declaration to merely state 
"this application is being filed to correct errors in the patent 
which may be noted from the changes made in the disclo-
sure." Rather, the oath/declaration must specifically iden-
tify an error. In addition, it is not sufficient to merely 
reproduce the claims with brackets and underlining and 
state that such will identify the error. See In re Constant, 
827 F.2d 728, 729, 3 USPQ2d 1479 (Fed. Cir.), cert. 
denied, 484 U.S. 894 (1987).

Form paragraph 14.01.01 may be used where the reissue 
oath/declaration does not identify an error.

?  14.01.01 Defective Reissue Oath/Declaration, 37 CFR 
1.175(a)(1) - No Statement of a Specific Error

The reissue oath/declaration filed with this application is defective 
because it fails to identify at least one error which is relied upon to support 
the reissue application.  See  37 CFR 1.175(a)(1) and  MPEP ? 1414.

Examiner Note:

1.	Use this form paragraph when the reissue oath or declaration does 
not contain any statement of an error which is relied upon to support the 
reissue application. 

2.	This form paragraph can be used where the reissue oath or declara-
tion does not even mention error.  It can also can be used where the reissue 
oath or declaration contains some discussion of the concept of error but 
never in fact identifies a specific error to be relied upon.  For example, it is 
not sufficient for an oath or declaration to merely state "this application is 
being filed to correct errors in the patent which may be noted from the 
changes made in the disclosure." 

3.	Form paragraph 14.14 must follow this form paragraph.

Where the reissue oath/declaration does identify an error 
or errors, the oath/declaration must be checked carefully to 
ensure that at least one of the errors identified is indeed an 
"error" which will support the filing of a reissue, i.e., an 
"error" that will provide grounds for reissue of the patent. 
See  MPEP ? 1402.  If the error identified in the oath/decla-
ration is not an appropriate error upon which a reissue can 
be based, then the oath/declaration must be indicated to be 
defective in the examiner's Office action. 

Form Paragraphs 14.01.02 and 14.01.03 may be used 
where the reissue oath/declaration fails to provide at least 
one error upon which a reissue can be based. 

?  14.01.02 Defective Reissue Oath/Declaration, 37 CFR 
1.175(a)(1)-The Identified "Error" Is Not Appropriate Error

The reissue oath/declaration filed with this application is defective 
because the error which is relied upon to support the reissue application is 
not an error upon which a reissue can be based. See  37 CFR 1.175(a)(1) 
and  MPEP ? 1414.

Examiner Note:

1.	Use this form paragraph when the reissue oath/declaration identifies 
only one error which is relied upon to support the reissue application, and 
that one error is not an appropriate error upon which a reissue can be 
based. 

2.	Form paragraph 14.14 must follow this form paragraph. 

?  14.01.03 Defective Reissue Oath/Declaration, 37 CFR 
1.175(a)(1) - Multiple Identified "Errors" Not Appropriate Errors

The reissue oath/declaration filed with this application is defective 
because none of the errors which are relied upon to support the reissue 
application are errors upon which a reissue can be based. See  37 CFR 
1.175(a)(1) and  MPEP ? 1414.

Examiner Note:

1.	Use this form paragraph when the reissue oath/declaration identifies 
more than one error relied upon to support the reissue application, and 
none of the errors are appropriate errors upon which a reissue can be 
based.

2.	Note that if the reissue oath/declaration identifies more than one 
error relied upon, and at least one of the errors is an error upon which reis-
sue can be based, this form paragraph should not be used, despite the addi-
tional reliance by applicant on "errors" which do not support the reissue.  
Only one appropriate error is needed to support a reissue.

3.	Form paragraph 14.14 must follow this form paragraph. 

III.	A STATEMENT THAT ALL ERRORS WHICH 
ARE BEING CORRECTED IN THE REISSUE 
APPLICATION UP TO THE TIME OF FILING 
OF THE OATH/DECLARATION AROSE 
WITHOUT ANY DECEPTIVE INTENTION 
ON THE PART OF THE APPLICANT.

In order to satisfy this requirement, the following state-
ment may be included in an oath or declaration: 

"All errors which are being corrected in the present reissue appli-
cation up to the time of filing of this declaration arose without 
any deceptive intention on the part of the applicant." 

Nothing more is required. The examiner will determine 
only whether the reissue oath/declaration contains the 
required averment; the examiner will not make any com-
ment as to whether it appears that there was in fact decep-
tive intention (see  MPEP ? 2022.05).  

Form Paragraph 14.01.04 may be used where the reissue 
oath/declaration does not provide the required statement as 
to "without any deceptive intention on the part of the appli-
cant."

?  14.01.04 Defective Reissue Oath/Declaration, 37 CFR 1.175- 
Lack of Statement of "Without Any Deceptive Intention"

The reissue oath/declaration filed with this application is defective 
because it fails to contain a statement that all errors which are being cor-
rected in the reissue application up to the time of filing of the oath/declara-
tion arose without any deceptive intention on the part of the applicant. See  
37 CFR 1.175 and  MPEP ? 1414.

Examiner Note:

1.	Use this form paragraph when the reissue oath/declaration does not 
contain the statement required by  37 CFR 1.175 that all errors being cor-
rected in the reissue application arose without any deceptive intention on 
the part of the applicant.

2.	This form paragraph is appropriate to use for a failure by applicant to 
comply with the requirement, as to any of  37 CFR 1.175(a)(2), 37 CFR 
1.175(b)(1), or  37 CFR 1.175(b)(2).  

3.	Paragraph 14.14 must follow. 

IV.	THE REISSUE OATH/DECLARATION MUST 
COMPLY WITH 37 CFR 1.63.

The reissue oath/declaration must include the averments 
required by  37 CFR 1.63(b), i.e., that applicants for reissue 

(A)	have reviewed and understand the contents of the 
specification, including the claims, as amended by any 
amendment specifically referred to in the oath/declaration; 

(B)	believe the named inventor or inventors to be the 
original and the first inventor or inventors of the subject 
matter which is claimed and for which a patent is sought; 
and 

(C)	acknowledge the duty to disclose to the Office all 
information known to the person to be material to patent-
ability as defined in  37 CFR 1.56. 

See also the discussion regarding the requirements of an 
oath/declaration beginning at  MPEP ? 602.

The examiner should check carefully to ensure that all 
the requirements of  37 CFR 1.63 are met. Form paragraph 
14.01.05 should be used in conjunction with the content of 
form paragraphs 6.03 through 6.09 as appropriate, where 
the reissue oath/declaration fails to comply with the 
requirements of  37 CFR 1.63.

?  14.01.05 Defective Reissue Oath/Declaration, 37 CFR 1.175 - 
General

The reissue oath/declaration filed with this application is defective (see  
37 CFR 1.175 and  MPEP ? 1414) because of the following:

Examiner Note:

1.	Use this form paragraph when the reissue oath/declaration does not 
comply with  37 CFR 1.175, and none of form paragraphs 14.01 - 
14.01.04 or 14.05.02 apply.

2.	This form paragraph must be followed by an explanation of why the 
reissue oath/declaration is defective.  

3.	Form paragraph 14.14 must follow the explanation of the defect.

See  MPEP ? 1414.01 for a discussion of the require-
ments for a supplemental reissue oath/declaration. 

1414.01	Supplemental Reissue Oath/ 
Declaration

If additional defects or errors are corrected in the reissue 
after the filing of the application, a supplemental reissue 
oath/declaration must be filed, unless all errors corrected 
are spelling, grammar, typographical, editorial or clerical 
errors which are not errors under 35 U.S.C. 251 (see  
MPEP ? 1402). In other words, a supplemental oath/decla-
ration is required where any "error" under  35 U.S.C. 251 
has been corrected and the error was not identified in the 
original reissue oath/declaration.

 The supplemental reissue oath/declaration must state 
that every error which was corrected in the reissue applica-
tion not covered by the prior oath(s)/declaration(s) submit-
ted in the application arose without any deceptive intention 
on the part of the applicant. 

An example of acceptable language is as follows:

"Every error in the patent which was corrected in the present reis-
sue application, and is not covered by the prior declaration sub-
mitted in this application, arose without any deceptive intention 
on the part of the applicant."

WHEN AN ERROR MUST BE STATED IN THE 
SUPPLEMENTAL OATH/DECLARATION

In the supplemental reissue oath/declaration, there is no 
need to state an error which is relied upon to support the 
reissue application if: 

(A)	an error to support a reissue has been previously 
and properly stated in a reissue oath/declaration in the 
application; and

(B)	that error is still being corrected in the reissue 
application. 

If applicant chooses to state any further error at this point 
(even though such is not needed), the examiner should not 
review the statement of the further error. 

The supplemental reissue oath/declaration must state an 
error which is relied upon to support the reissue application 
only where one of the following is true: 

(A)	the prior reissue oath/declaration failed to state an 
error; 

(B)	the prior reissue oath/declaration attempted to 
state an error but did not do so properly; or

(C)	all errors under  35 U.S.C. 251 stated in the prior 
reissue oath(s)/declaration(s) are no longer being corrected 
in the reissue application.

WHEN A SUPPLEMENTAL OATH/DECLARATION 
MUST BE SUBMITTED

The supplemental oath/declaration in accordance with  
37 CFR 1.175(b)(1) must be submitted before allowance. 
See  MPEP ? 1444 for a discussion of the action to be taken 
by the examiner to obtain the supplemental oath/declara-
tion in accordance with  37 CFR 1.175(b)(1), where such is 
needed.

Where applicant seeks to correct an error after allowance 
of the reissue application, a supplemental reissue oath/dec-
laration must accompany the requested correction stating 
that the error(s) to be corrected arose without any deceptive 
intention on the part of the applicant. The supplemental 
reissue oath/declaration submitted after allowance will be 
directed to the error applicant seeks to correct after allow-
ance. This supplemental oath/declaration need not cover 
any earlier errors, since all earlier errors should have been 
covered by a reissue oath/declaration submitted prior to 
allowance.

1415	Reissue Filing and Issue Fees  [R-1]

The reissue applicant is permitted to present every claim 
that was issued in the original patent for the basic filing fee. 
In addition to the basic filing fee, the filing or later presen-
tation of each independent claim which is in excess of the 
number of independent claims in the original patent 
requires a fee.  In addition, the filing or later presentation of 
each claim (whether independent or dependent) in excess 
of 20, and also in excess of the number of claims in the 
original patent, requires a fee. >Fees for claims in reissue 
continued prosecution applications are calculated in the 
same manner as outlined above.<  The Office has prepared 
Form PTO/SB/56, Reissue Application Fee Transmittal 
Form, which is designed to assist in the correct calculation 
of reissue filing fees.

Form PTO/SB/56. Reissue Application Fee Transmittal Form

1415.01	Maintenance Fees on the Original 
Patent

The filing of a reissue application does not alter the 
schedule of payments of maintenance fees on the original 
patent. If maintenance fees have not been paid on the origi-
nal patent as required by  35 U.S.C. 41(b) and  37 CFR 
1.20, and the patent has expired, no reissue patent can be 
granted.  35 U.S.C. 251, first paragraph, only authorizes the 
granting of a reissue patent for the unexpired term of the 
original patent. Once a patent has expired, the Commis-
sioner no longer has the authority under  35 U.S.C. 251 to 
reissue the patent.  See   In re Morgan, 990 F.2d 1230, 
26 USPQ2d 1392 (Fed. Cir. 1993). 

The examiner should determine whether all required 
maintenance fees have been paid prior to conducting an 
examination of a reissue application. In addition, during the 
process of preparing the reissue application for issue, the 
examiner should again determine whether all required 
maintenance fees have been paid up to date.

PALM may be used to determine the history of mainte-
nance fees by entering 2970 and then the patent number. 
This PALM screen shows when any maintenance fees have 
been paid and when the next maintenance fee is due to be 
paid.

If the window for the maintenance fee due has closed 
(maintenance fees are due by the day of the 4th, 8th and 
12th year anniversary of the grant of the patent), but the 
maintenance fee has not been paid, then the reissue should 
be rejected under  35 U.S.C. 251 as having expired and 
may not be passed to issue. However, if time remains for 
applicant to pay the maintenance fee, then the application 
should not be rejected under  35 U.S.C. 251 and it may be 
passed to issue when it is in condition for allowance, 
because the patent has not expired.

See  MPEP Chapter 2500 for additional information per-
taining to maintenance fees.

1416	Offer to Surrender and Return 
Original Patent

37 CFR 1.178.  Original patent.

The application for a reissue must be accompanied by an offer to sur-
render the original patent. The application should also be accompanied by 
the original patent, or if the original is lost or inaccessible, by an affidavit 
or declaration to that effect. The application may be accepted for examina-
tion in the absence of the original patent or the affidavit or declaration, but 
one or the other must be supplied before the case is allowed. If a reissue be 
refused, the original patent will be returned to applicant upon his request.

An examination on the merits of the reissue application 
is made even though the offer to surrender the original 
patent, the actual surrender, or an affidavit or declaration to 
the effect that the original is lost or inaccessible, has not 
been received. However, in such case, the examiner should 
require the surrender or the affidavit or declaration in the 
first Office action. Either the original patent, or an affidavit 
or declaration as to loss or inaccessibility of the original 
patent, must be received before the examiner can allow the 
reissue application.

Form paragraph 14.05 may be used to require an offer to 
surrender the original patent.

?  14.05 No Offer To Surrender Original Patent

This reissue application was filed without the required offer to surren-
der the original patent or, if the original is lost or inaccessible, an affidavit 
or declaration to that effect.  The original patent, or an affidavit or declara-
tion as to loss or inaccessibility of the original patent, must be received 
before this reissue application can be allowed.  See  37 CFR 1.178.

Examiner Note:

An examination on the merits of the reissue application is made even 
though this requirement has  not been met. This requirement should be 
made in the first Office action.

Form paragraph 14.05.01 may be used to notify appli-
cant that the original patent or an affidavit or declaration as 
to loss is required before allowance.

?  14.05.01 Original Patent Required Prior to Allowance

The original patent, or an affidavit or declaration as to loss or inacces-
sibility of the original patent, must be received before this reissue applica-
tion can be allowed.  See  37 CFR 1.178.

Examiner Note:

1.	This form paragraph may be used in an Office action to remind 
applicant of the requirement for submission of the original patent before 
allowance.

2.	It may also be used in an   Ex parte Quayle action to require such 
submission.

3.	Do not use this form paragraph in an examiner's amendment.  The 
original patent or declaration of loss   must be filed prior to mailing of the 
"Notice of Allowability".

If applicant requests the return of the surrendered origi-
nal patent upon abandonment of the reissue application, the 
original patent will be sent to the applicant by the Examin-
ing Group.

An applicant may request that a surrendered original 
patent be transferred from an abandoned reissue application 
to a continuation or divisional reissue application. The 
clerk making the transfer should note the transfer on the 
"Contents" of the abandoned application. The application 
number and filing date of the reissue application to which it 
is transferred must be included in the notation. Where the 
original patent grant is not submitted with the reissue appli-
cation as filed, patentee should include a copy of the 
printed original patent. Presence of a copy of the original 
patent is useful for the calculation of the reissue filing fee 
and for the verification of other identifying data.

Depending on the circumstances, PTO/SB/53 (Reissue 
Application By The Inventor, Offer To Surrender Patent), 
PTO/SB/54 (Reissue Application By The Assignee, Offer 
To Surrender Patent), or PTO/SB/55 (Declaration As To 
Loss Of Letters Patent) may be used for filing an offer to 
surrender the original patent or a declaration to the effect 
that the original patent is lost.

PTO/SB/53. Reissue Application by the Inventor, Offer to Surrender Patent

Form PTO/SB/54. Reissue Application by the Assignee, Offer to Surrender Patent

Form PTO/SB/55. Declaration as to Loss of Letters Patent

1417	Claim for Benefit Under 35 U.S.C. 
119(a)-(d)

A "claim" for the benefit of an earlier filing date in a for-
eign country under  35 U.S.C. 119(a)-(d) must be made in a 
reissue application, even though such a claim was previ-
ously made in the application on which the original patent 
was granted. However, no additional certified copy of the 
foreign application is necessary. The procedure is similar to 
that for "Continuing Applications" in  MPEP ? 201.14(b).

In addition,  37 CFR 1.63 requires that in any application 
in which a claim for foreign priority is made pursuant to  37 
CFR 1.55, the oath or declaration must identify the foreign 
application for patent or inventors' certificate on which pri-
ority is claimed, and any foreign applications having a fil-
ing date before that of the application on which priority is 
claimed, by specifying:

(A)	the application number of the foreign application;

(B)	the foreign country; and

(C)	the day, month, and year of the filing of the for-
eign application.

The examiner should note that the heading on printed 
copies of the patent will not be carried forward to the reis-
sue from the original patent. Therefore, it is important that 
the file wrapper be endorsed by the examiner under "FOR-
EIGN APPLICATIONS." 

1418	Information Disclosure Statement and 
Other Information 

A reissue application is subject to the same duty of     
disclosure requirements as is any other nonprovi-         
sional application. The provisions of  37 CFR 1.63 require 
acknowledgment in the reissue oath or declaration of the 
"duty to disclose to the Office all information known to the 
[applicants] to be material to patentability as defined in 
? 1.56." Form paragraph 14.11.01 may be used to remind 
applicant of the duty to disclose any litigation information 
which is material to patentability.

?  14.11.01 Duty Of Disclosure Reminder 

Applicant is reminded of the continuing obligation under 37 CFR 1.56, 
to timely apprise the Office of any litigation information, or other prior or 
concurrent proceeding, involving Patent No. [1] , which is material to pat-
entability of the claims under consideration in this reissue application.  
This obligation rests with each individual associated with the filing and 
prosecution of this application for reissue. See MPEP ?? 1404, 1442.01 
and  1442.04.

Examiner Note:

This form paragraph is to be used in the first action in a reissue appli-
cation.

Reissue applicants may utilize  37 CFR 1.97 and 1.98 to 
comply with the duty of disclosure required by 37 CFR 
1.56.  This does not, however, relieve applicant of the 
duties under  37 CFR 1.175 of, for example, stating "at 
least one error being relied upon."

While  37 CFR 1.97(b) provides for filing an informa-
tion disclosure statement within 3 months of the filing of an 
application or before the mailing date of a first Office 
action, reissue applicants are encouraged to file information 
disclosure statements at the time of filing so that such state-
ments will be available to the public during the 2-month 
period provided by  37 CFR 1.176.

1430	Reissue Files Open to the Public and, 
Notice of Filing Reissue Announced in, 
Official Gazette

37 CFR 1.11.  Files open to the public.

*****

(b)	All reissue applications, all applications in which the Office has 
accepted a request to open the complete application to inspection by the 
public, and related papers in the application file, are open to inspection by 
the public, and copies may be furnished upon paying the fee therefor. The 
filing of reissue applications, other than continued prosecution applica-
tions under ? 1.53(d) of reissue applications, will be announced in the 
Official Gazette. The announcement shall include at least the filing date, 
reissue application and original patent numbers, title, class and subclass, 
name of the inventor, name of the owner of record, name of the attorney or 
agent of record, and examining group to which the reissue application is 
assigned.

*****

37 CFR 1.176.  Examination of reissue.

An original claim, if re-presented in the reissue application, is subject 
to reexamination, and the entire application will be examined in the same 
manner as original applications, subject to the rules relating thereto, 
excepting that division will not be required. Applications for reissue will 
be acted on by the examiner in advance of other applications, but not 
sooner than two months after announcement of the filing of the reissue 
application has appeared in the Official Gazette.

37 CFR 1.11(b) provides that all reissue applications 
filed after March 1, 1977 are open to inspection by the gen-
eral public, and copies may be furnished upon paying the 
fee therefor. The filing of reissue applications (except for 
continued prosecution applications (CPA's) filed under  
37 CFR 1.53(d)) will be announced in the Official Gazette. 
The announcement gives interested members of the public 
an opportunity to submit to the examiner information perti-
nent to the patentability of the reissue application. The 
announcement includes the filing date, reissue application 
and original patent numbers, title, class and subclass, name 
of the inventor, name of the owner of record, name of the 
attorney or agent of record, and the Examining Group to 
which the reissue application is initially assigned. A Group 
Director or other appropriate Office official may, under 
appropriate circumstances, postpone access to or the mak-
ing of copies of a reissue application, such as, for example, 
to avoid interruption of the examination or other review of 
the application by an examiner. Those reissue applications 
already on file prior to March 1, 1977 are not automatically 
open to inspection, but a liberal policy is followed by the 
Office of the Assistant Commissioner for Patents in grant-
ing petitions for access to such applications.

The publication of a notice of a reissue application in the 
Official Gazette should be done prior to any examination of 
the application. If an inadvertent failure to publish notice of 
the filing of the reissue application in the Official Gazette is 
recognized later in the examination, action should be taken 
to have the notice published as quickly as possible, and 
action on the application may be delayed until two months 
after the publication, allowing for any protests to be filed.

The filing of a continued prosecution application (CPA) 
under  37 CFR 1.53(d) of a reissue application will not be 
announced in the Official Gazette. Although the filing of a 
CPA of a reissue application constitutes the filing of a reis-
sue application, the announcement of the filing of such 
CPA would be redundant in view of the announcement of 
the filing of the prior reissue application in the Official 
Gazette and the fact that the same application number and 
file will continue to be used for the CPA.

For those reissue applications filed on or after March 1, 
1977, the following procedure will be observed:

(A)	The filing of all reissue applications, except for 
CPAs filed under  37 CFR 1.53(d), will be announced in the 
Official Gazette and will include certain identifying data as 
specified in  37 CFR 1.11(b). Any member of the general 
public may request access to a particular reissue application 
filed after March 1, 1977. Since no record of such request is 
intended to be kept, an oral request will suffice.

(B)	The reissue application files will be maintained in 
the Examining Groups and inspection thereof will be super-
vised by Group personnel. Although no general limit is 
placed on the amount of time spent reviewing the files, the 
Office may impose limitations, if necessary, e.g., where the 
application is actively being processed.

(C)	Where the reissue application has left the Examin-
ing Group for administrative processing, requests for 
access should be directed to the appropriate supervisory 
personnel where the application is currently located.

(D)	Requests for copies of papers in the reissue appli-
cation file must be in writing and addressed to the Commis-
sioner of Patents and Trademarks, Box 10, Washington, 
D.C. 20231 and may be either mailed or delivered to the 
Office Customer Service Window (See  MPEP ? 502).  The 
price for copies made by the Office is set forth in  37 CFR 
1.19.

1431	Notice in Patent File 

37 CFR 1.179.  Notice of reissue application.

When an application for a reissue is filed, there will be placed in the 
file of the original patent a notice stating that an application for reissue has 
been filed. When the reissue is granted or the reissue application is other-
wise terminated, the fact will be added to the notice in the file of the origi-
nal patent.

Whenever a reissue application is filed, a Form PTO-445 
notice is placed in the patented file identifying the reissue 
application by application number and its filing date. The 
pertinent data is filled in by the Office of Initial Patent 
Examination. When divisional or continuation reissue 
applications are filed, a separate form for each reissue 
application is placed in the original patent file. When the 
reissue is issued, it is important that the File Information 
Unit (Record Room) be informed by the Examining Group 
technical support staff of that fact by written memo. File 
Information Unit (Record Room) personnel will update the 
Form PTO-445 in the patented file.

1440	Examination of Reissue Application

37 CFR 1.176.  Examination of reissue.

An original claim, if re-presented in the reissue application, is subject 
to reexamination, and the entire application will be examined in the same 
manner as original applications, subject to the rules relating thereto, 
excepting that division will not be required. Applications for reissue will 
be acted on by the examiner in advance of other applications, but not 
sooner than two months after announcement of the filing of the reissue 
application has appeared in the Official Gazette.

37 CFR 1.176 provides that an original claim, if re-pre-
sented in a reissue application, will be subject to reexami-
nation. Along with the entire application, the re-presented 
claim will be fully examined in the same manner subject to 
the same rules relating thereto, as if being presented for the 
first time in an original application, except that division 
will not be required by the examiner. See  MPEP ? 1450 
and  ? 1451. Reissue applications are normally examined 
by the same examiner who issued the patent for which reis-
sue is requested. In addition, the application will be exam-
ined with respect to compliance with  37 CFR 1.171-1.179 
relating specifically to reissue applications, for example, 
the reissue oath or declaration will be carefully reviewed 
for compliance with  37 CFR 1.175.  See  MPEP ? 1444 for 
handling applications in which the oath or declaration lacks 
compliance with  37 CFR 1.175. Reissue applications with 
related litigation will be acted on by the examiner before 
any other special applications, and will be acted on imme-
diately by the examiner, subject only to the 2-month delay 
after publication for examining reissue applications.

The original patent file wrapper should always be 
ordered and reviewed when examining a reissue applica-
tion thereof.

1441	Two-Month Delay Period; Protest in 
Reissue Applications

37 CFR 1.176 provides that reissue applications will be 
acted on by the examiner in advance of other applications, 
i.e., "special," but not sooner than 2 months after 
announcement of the filing of the reissue has appeared in 
the Official Gazette. The 2-month delay is provided in 
order that members of the public may have time to review 
the reissue application and submit pertinent information to 
the Office before the examiner's action. The pertinent infor-
mation is submitted in the form of a protest under  37 CFR 
1.291(a). As set forth in MPEP ? 1901.04, the public 
should be aware that such submissions should be made 
as early as possible, since under certain circumstances the 
2-month delay period of 37 CFR 1.176 may be waived. The 
Office will entertain petitions under 37 CFR 1.183 which 
are accompanied by the required petition fee (37 CFR 
1.17(h)) to waive the delay period of  37 CFR 1.176. 
Accordingly, protestors to reissue applications cannot auto-
matically assume that the full 2-month delay period of 
37 CFR 1.176 will always be available. Appropriate rea-
sons for requesting a waiver of the 2-month delay period of  
37 CFR 1.176 might be, for example, that litigation has 
been stayed to permit the filing of the reissue application.  
Such petitions are decided by the Office of the Deputy 
Assistant Commissioner for Patent Policy and Projects.

If the protest of a reissue application cannot be filed 
within the 2-month period provided by 37 CFR 1.176, 
the protest can be submitted at a later time.  Where the pro-
test is submitted after the 2-month period, no petition under 
37 CFR 1.182 or 1.183 is needed with respect to the protest 
being submitted after the 2 months provided for in  37 CFR 
1.176 unless a final rejection has been issued or prosecution 
on the merits has been closed for the reissue application.

Where the protest is submitted after the 2-month period, 
the protest might be received after the first Office action by 
the examiner, since reissue applications are taken up "spe-
cial."  Once the first Office action is mailed (after the 2-
month period), a member of the public may still submit 
pertinent information in the form of a protest under 37 CFR 
1.291(a), and the examiner will consider the information 
submitted in the next Office action, to the extent that such 
consideration is appropriate. See MPEP ? 1901.04 and 
? 1901.06 for the timeliness and content criteria as to when 
a protest is considered.

The Examining Group to which the reissue application is 
assigned is listed in the Official Gazette notice of filing of 
the reissue application.  Accordingly, the indicated Exam-
ining Group should retain the reissue application file for 2 
months after the date of the Official Gazette notice before 
transferring the reissue application under the procedure set 
forth in  MPEP ? 903.08(d).

The publication of a notice of a reissue application in the 
Official Gazette should be done prior to any examination of 
the reissue application.  If an inadvertent failure to publish 
notice of the filing of the reissue application in the Official 
Gazette is recognized later in the examination, action 
should be taken to have the notice published as quickly as 
possible, and action on the reissue application may be 
delayed until 2 months after the publication, allowing for 
any protests to be filed.

See  MPEP ? 1901.06 for general procedures on exam-
iner treatment of protests in reissue applications.

1442	Special Status

All reissue applications are taken up "special," and 
remain "special" even though applicant does not respond 
promptly.

All reissue applications, except those under suspension 
because of litigation, will be taken up for action ahead of 
other "special" applications; this means that all issues not 
deferred will be treated and responded to immediately. Fur-
thermore, reissue applications involved in "litigation" will 
be taken up for action in advance of other reissue applica-
tions.

1442.01	Litigation Related Reissues 

During initial review, the examiner should determine 
whether the patent for which the reissue has been filed is 
involved in litigation, and if so, the status of that litigation. 
If the examiner becomes aware of litigation involving the 
patent sought to be reissued during examination of the reis-
sue application, and applicant has not made the details 
regarding that litigation of record in the reissue application, 
the examiner, in the next Office action, will inquire regard-
ing the specific details of the litigation. 

Form paragraph 14.06 may be used for such an inquiry.

?  14.06 Litigation Related Reissue

The patent sought to be reissued by this application [1] involved in liti-
gation. Any documents and/or materials which would be material to pat-
entability of this reissue application are required to be made of record in 
response to this action.

Due to the related litigation status of this application, EXTENSIONS 
OF TIME UNDER THE PROVISIONS OF  37 CFR 1.136(a) WILL NOT 
BE PERMITTED DURING THE PROSECUTION OF THIS APPLICA-
TION.

Examiner Note:

In bracket 1, insert either -is- or -has been-. 

If the additional details of the litigation appear to be 
material to examination of the reissue application, the 
examiner may make such additional inquiries as necessary 
and appropriate. 

Where there is litigation, and it has not already been 
done, the examiner should place a prominent notation on 
the application file to indicate the litigation (1) at the bot-
tom of the face of the file in the box just to the right of the 
box for the retention label, and (2) on the pink Reissue 
Notice Card form.

Applicants will normally be given 1 month to reply to 
Office actions in all reissue applications which are being 
examined during litigation, or after litigation had been 
stayed, dismissed, etc., to allow for consideration of the 
reissue by the Office. This 1-month period may be 
extended only upon a showing of clear justification pursu-
ant to  37 CFR 1.136(b). The Office action will inform 
applicant that the provisions of  37 CFR 1.136(a) are not 
available. Of course, up to 3 months may be set for reply if 
the examiner determines such a period is clearly justified.

1442.02	Concurrent Litigation

In order to avoid duplication of effort, action in reissue 
applications in which there is an indication of concurrent 
litigation will be suspended automatically unless and until 
it is evident to the examiner, or the applicant indicates, that 
any one of the following applies: 

(A)	a stay of the litigation is in effect; 

(B)	the litigation has been terminated; 

(C)	there are no significant overlapping issues 
between the application and the litigation; or 

(D)	it is applicant's desire that the application be 
examined at that time. 

Where any of (A) - (D) above apply, form paragraphs 
14.08-14.10 may be used to deny a suspension of action in 
the reissue, i.e., to deny a stay of the reissue proceeding.

?  14.08 Action in Reissue Not Stayed - Related Litigation 
Terminated

Since the litigation related to this reissue application is terminated and 
final, action in this reissue application will NOT be stayed. Due to the 
related litigation status of this reissue application, EXTENSIONS OF 
TIME UNDER THE PROVISIONS OF  37 CFR 1.136(a) WILL NOT BE 
PERMITTED.

?  14.09 Action in Reissue Not Stayed - Related Litigation Not 
Overlapping

While there is concurrent litigation related to this reissue application, 
action in this reissue application will NOT be stayed because there are no 
significant overlapping issues between the application and that litigation. 
Due to the related litigation status of this reissue application, EXTEN-
SIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) 
WILL NOT BE PERMITTED.

?  14.10 Action in Reissue Not Stayed - Applicant's Request

While there is concurrent litigation related to this reissue application, 
action in this reissue application will NOT be stayed because of applicant's 
request that the application be examined at this time. Due to the related lit-
igation status of this reissue application, EXTENSIONS OF TIME 
UNDER THE PROVISIONS OF  37 CFR 1.136(a) WILL NOT BE PER-
MITTED.

Where none of (A) through (D) above apply, action in 
the reissue application in which there is an indication of 
concurrent litigation will be suspended by the examiner. 
The examiner should consult with the Group Special Pro-
gram Examiner prior to suspending action in the reissue. 
Form paragraph 14.11 may be used to suspend action, i.e., 
stay action, in a reissue application with concurrent litiga-
tion.

?  14.11 Action in Reissue Stayed - Related Litigation

In view of concurrent litigation, and in order to avoid duplication of 
effort between the two proceedings, action in this reissue application is 
STAYED until such time as it is evident to the examiner that (1) a stay of 
the litigation is in effect, (2) the litigation has been terminated, (3) there 
are no significant overlapping issues between the application and the liti-
gation, or (4) applicant requests that the application be examined.

If the reissue application has been merged with a reex-
amination proceeding, the merged proceeding generally 
will not be stayed where there is litigation. In a merged 
reexamination/reissue proceeding, the reexamination will 
control because of the statutory (35 U.S.C. 305) require-
ment that reexamination proceedings be conducted with 
special dispatch.  See  MPEP ? 2285 and  ? 2286.

1442.03	Litigation Stayed 

All reissue applications, except those under suspension 
because of litigation, will be taken up for action ahead of 
other "special" applications; this means that all issues not 
deferred will be treated and responded to immediately. Fur-
thermore, reissue applications involved in "stayed litiga-
tion" will be taken up for action in advance of other reissue 
applications. Great emphasis is placed on the expedited 
processing of such reissue applications. The courts are 
especially interested in expedited processing in the Office 
where litigation is stayed.

In reissue applications with "stayed litigation," the 
Office will entertain petitions under 37 CFR 1.183, which 
are accompanied by the fee under 37 CFR 1.17(h), to waive 
the 2-month delay period under 37 CFR 1.176.  Such peti-
tions are decided by the Office of the Deputy Assistant 
Commissioner for Patent Policy and Projects.

Time-monitoring systems have been put into effect 
which will closely monitor the time used by applicants, 
protestors, and examiners in processing reissue applications 
of patents involved in litigation in which the court has 
stayed further action. Monthly reports on the status of reis-
sue applications with related litigation are required from 
each Examining Group. Delays in reissue processing are to 
be followed up. The Group Special Program Examiner is 
responsible for oversight of reissue applications with 
related litigation.

The purpose of these procedures and those deferring 
consideration of certain issues, until all other issues are 
resolved or the application is otherwise ready for consider-
ation by the Board of Patent Appeals and Interferences 
(note  MPEP ? 1448), is to reduce the time between filing 
of the reissue application and final action thereon, while 
still giving all parties sufficient time to be heard.

Requests for stays or suspension of action in reissues 
where litigation has been stayed may be answered with 
Form Paragraph 14.07.

?  14.07 Action in Reissue Not Stayed - Related Litigation Stayed

While there is concurrent litigation related to this reissue application, 
action in this reissue application will NOT be stayed because a stay of that 
litigation is in effect for the purpose of awaiting the outcome of these reis-
sue proceedings. Due to the related litigation status of this reissue applica-
tion, EXTENSIONS OF TIME UNDER THE PROVISIONS OF  37 CFR 
1.136(a) WILL NOT BE PERMITTED.

1442.04	Litigation Involving Patent  [R-1]

Where the patent for which reissue is being sought is, or 
has been, involved in litigation which raised a question 
material to patentability of the reissue application, such as 
the validity of the patent, the existence of such litigation 
must be brought to the attention of the Office by the appli-
cant.  This should be done at the time of, or shortly after, 
filing the application, either in the reissue oath or declara-
tion, or in a separate paper, preferably accompanying the 
application as filed. Litigation begun after filing of the reis-
sue application also should be promptly brought to the 
attention of the Office. The details and documents from the 
litigation, insofar as they are "material to patentability" of 
the reissue application as defined in  37 CFR 1.56(b), 
should accompany the application as filed, or be submitted 
as promptly thereafter as possible. For example, the 
defenses raised against validity of the patent would nor-
mally be "material to patentability" of the reissue applica-
tion. It would, in most situations, be appropriate to bring 
such defenses to the attention of the Office by filing in the 
reissue application a copy of the Court papers raising such 
defenses. As a minimum, the applicant should call the 
attention of the Office to the litigation, the existence and 
nature of any allegations having a bearing on the validity of 
the original patent, and the nature of litigation materials 
relating to these issues. Enough information should be sub-
mitted to clearly inform the Office of the nature of these 
issues so that the Office can intelligently evaluate the need 
for asking for further materials in the litigation. Thus, the 
existence of supporting materials which may substantiate 
allegations of invalidity should, at least, be fully described, 
or submitted. The Office is not interested in receiving volu-
minous litigation materials which are not relevant to the 
Office's consideration of the reissue application. The status 
of the litigation should be updated in the reissue application 
as soon as significant events happen in the litigation. 

When a reissue application is filed, the examiner should 
determine whether the original patent has been adjudicated 
by a court. The decision of the court, and also other papers 
in the suit, may provide information essential to the exami-
nation of the reissue. The patented file will contain notices 
of the filing and termination of infringement suits on the 
patent. Such notices are required by law to be filed by the 
clerks of the Federal District Courts. These notices do not 
indicate if there was an opinion by the court, nor whether a 
decision was published. Shepard's Federal Citations and 
the cumulative digests of the United States Patents Quar-
terly, both of which are in the Lutrelle F. Parker, Sr., 
Memorial Law Library **, contain tables of patent numbers 
giving the citation of published decisions concerning the 
patent. A litigation computer search by the Scientific and 
Technical Information Center (STIC) should be requested 
by the examiner to determine whether the patent has been, 
or is, involved in litigation. The "Search Notes" box on the 
application file wrapper can then be completed to indicate 
that the review was conducted. A copy of the STIC search 
should be hole-punched and placed in the reissue file. 
Additional information or guidance as to making a litiga-
tion search may be obtained from the library of the Office 
of the Solicitor.

Where papers are not otherwise conveniently obtainable, 
the applicant may be requested to supply copies of papers 
and records in suits, or the Office of the Solicitor may be 
requested to obtain them from the court. The information 
thus obtained should be carefully considered for its bearing 
on the proposed claims of the reissue, particularly when the 
reissue application was filed in view of the holding of a 
court.

If the examiner becomes aware of litigation involving 
the patent sought to be reissued during examination of the 
reissue application, and applicant has not made the details 
regarding that litigation of record in the reissue application, 
the examiner, in the next Office action, should inquire 
regarding the same. Form paragraph 14.06 may be used for 
such an inquiry. See  MPEP ? 1442.01.

If the additional details of the litigation appear to be 
material to patentability of the reissue application, the 
examiner may make such additional inquiries as necessary 
and appropriate.

1442.05	Cases in Which Stays Were  
Considered 

Federal District Courts stay litigation in significant num-
bers of cases to permit consideration of a reissue applica-
tion by the Office. Several exemplary cases are listed here 
for the convenience of the Office, the courts and the public.

In most instances, the reissue-examination procedure is 
instituted by a patent owner who voluntarily files a reissue 
application as a consequence of related patent litigation. 
However, some District Courts have required a patentee-lit-
igant to file a reissue application, for example:

Alpine Engineering Inc. v. Automated Building Compo-
nents Inc., BNA/PTCJ 367: A-12 (S.D. Fla. 1978);

Lee-Boy Mfg. Co. v. Puckett, 202 USPQ 573 (D. Ga. 
1978);

Choat v. Rome Industries Inc. 203 USPQ 549 (N.D. Ga. 
1979).

Other courts have declined to so order, for example:

Bielomatik Leuze & Co., v. Southwest Tablet Mfg. Co., 
204 USPQ 226 (N.D. Texas 1979);

RCA Corp. v. Applied Digital Data Systems Inc., 201 
USPQ 451 (D. Del. 1979);

Antonious v. Kamata-Ri & Co. Ltd., 204 USPQ 294 (D. 
Md. 1979).

Only a patentee or his assignee may file a reissue patent 
application.  An order for a different party to file a reissue 
will not be binding on the Office.

1442.05(a)	Stays Granted

"Stays" of court or administrative proceedings in litiga-
tion were ordered in the following sampling of published 
decisions.

PIC Inc. v. Prescon Corp., 195 USPQ 525 (D. Del. 
1977).

Fisher Controls Co. Inc. v. Control Components, Inc., 
196 USPQ 817 (S.D. Iowa 1977) (Note also 203 USPQ 
1059 denying discovery during the stay.).

Alpine Engineering Inc. v. Automated Building Compo-
nents Inc., BNA/PTCJ 367: A-12 (S.D. Fla. 1978) (dis-
missed a Declaratory Judgment suit with order for 
patentee to seek reissue in the Office).

AMI Industries, Inc. v. E. A. Industries, Inc., 204 USPQ 
568 (W.D. N.C.1978) (with dicta that if suit had not 
been dismissed, proceedings would have been stayed 
for Office consideration).

Reynolds Metal Co. v. Aluminum Co. of America, 
198 USPQ 529 (N.D. Ind. 1978).

Sauder Industries, Inc. v.   Carborundum Co., 201 
USPQ 240 (N.D. Ohio 1978).

Rohm and Haas Co. v. Mobil Oil Corp., 201 USPQ 80 
(D. Del. 1978) (with provision for limited discovery on 
allegations of fraud for Office's benefit).

Lee-Boy Mfg. Co. v. Puckett, 202 USPQ 573 (D. Ga. 
1978) (reissue ordered after discovery and during wait 
for trial).

Fas-Line Sales & Rentals, Inc. v. E-Z Lay Pipe Corp., 
203 USPQ 497 (W.D. Okla. 1979).

Choat v. Rome Industries Inc., 203 USPQ 549 (N.D. 
Ga. 1979) (directed patentee to file reissue application).

In re Certain High-Voltage Circuit Interrupters and 
Components Thereof, 204 USPQ 50 (Int'l Trade 
Comm'n 1979).

1442.05(b)	Stays Denied

"Stays" of court or administrative proceedings in litiga-
tion were denied in the following sampling of published 
decisions. 

General Tire and Rubber Co. v. Watson-Bowman Asso-
ciates, Inc., 193 USPQ 479 (D. Del. 1977).

Perkin-Elmer Corp. v. Westinghouse Electric Corp., 
BNA/PTCJ 376: A-11 (E.D. N.Y. 1978).

In re Certain Ceramic Tile Setters, No. 337-TA-41, 
BNA/PTCJ 385: A-21 (Int'l Trade Comm'n 1978).

E.C.H. Will v. Freundlich-Gomez Machinery Corp., 201 
USPQ 476 (S.D. N.Y. 1978).

RCA Corp. v. Applied Digital Data Systems Inc., 201 
USPQ 451 (D. Del. 1979) (denied stay where a patentee 
had not filed a reissue).

Bielomatik Leuze & Co., v. Southwest Tablet Mfg. Co., 
204 USPQ 226 (N.D. Texas 1979) (refused to order 
reissue).

Antonious v. Kamata-Ri & Co. Ltd., 204 USPQ 294 (D. 
Md. 1979) (refused to order reissue).

1443	Initial Examiner Review 

On initial receipt of a reissue application, the examiner 
should inspect the submission under  37 CFR 1.172 as to 
documentary evidence of a chain of title from the original 
owner to the assignee to determine whether the consent 
requirement of  37 CFR 1.172 has been met. The examiner 
will compare the consent and documentary evidence of 
ownership; the assignee indicated by the documentary evi-
dence must be the same assignee which signed the consent. 
Also, the person who signs the consent for the assignee and 
the person who signs the submission of evidence of owner-
ship for the assignee must both be persons having authority 
to do so.  See also  MPEP ? 324. 

Where the application is assigned, and there is no sub-
mission under  37 CFR 1.172 as to documentary evidence 
in the application, the examiner should require the submis-
sion using form paragraph 14.16. Once the submission 
under  37 CFR 1.172 as to documentary evidence is 
received, it must be compared with the consent to deter-
mine whether the assignee indicated by the documentary 
evidence is the same assignee which signed the consent. 
See  MPEP ? 1410.01 for further discussion as to the 
required consent and documentary evidence.

Where there is a statement of record that the application 
is not assigned, there should be no submission under 
37 CFR 1.172 as to documentary evidence of ownership in 
the application, and none should be required by the exam-
iner.

The filing of all reissue applications, except for contin-
ued prosecution applications (CPAs) filed under  37 CFR 
1.53(d), must be announced in the Official Gazette. 
Accordingly, for any reissue application other than a CPA, 
the examiner should determine if the filing of the reissue 
application has been announced in the Official Gazette as 
provided in  37 CFR 1.11(b), especially where the reissue is 
a file wrapper continuation under former  37 CFR 1.62. The 
date of the Official Gazette notice can usually be found on 
the pink "REISSUE" tag which protrudes from the top of 
the application file of 08 or earlier series. Where the date is 
missing from the tag, or where the tag itself is missing, the 
PALM screen (2952) should be checked for the presence of 
an "NRE" entry in the contents. For 09 series reissue appli-
cations, the Official Gazette publication date appears on the 
face of the file wrapper. If the filing of the reissue applica-
tion has not been announced in the Official Gazette, the 
reissue application should be returned to the Office of Ini-
tial Patent Examination (Special Processing) to handle the 
announcement. The examiner should not further act on the 
reissue until 2 months after announcement of the filing of 
the reissue has appeared in the Official Gazette. See  MPEP 
? 1440 and  37 CFR 1.176.

The examiner should determine if there is concurrent lit-
igation, and if so, the status thereof (MPEP ? 1442.01), and 
whether the reissue file has been appropriately marked. 
Note  MPEP ? 1404. 

The examiner should determine if a protest has been 
filed, and if so, it should be handled as set forth in MPEP 
? 1901.06.

The examiner should determine whether the patent is 
involved in an interference, and if so, should refer to  
MPEP ? 1449.01 before taking any action on the reissue 
application.

The examiner should check that an offer to surrender the 
original patent, or an affidavit or declaration to the effect 
that the original is lost or inaccessible, has been received. 
An examination on the merits is made even though 
the above has not been complied with, but the examiner 
should require compliance in the first office action. See  
MPEP ? 1416.

The examiner should verify that all Certificate of Cor-
rection changes have been properly incorporated into the 
reissue application.  See  MPEP ? 1411.01.

The examiner should verify that the patent on which the 
reissue application is based has not expired, either because 
its term has run or because required maintenance fees 
have not been paid. Once a patent has expired, the Com-
missioner no longer has the authority under 35 U.S.C. 251 
to reissue the patent. See In re Morgan, 990 F.2d 1230, 26 
USPQ2d 1392 (Fed. Cir. 1992).  See also MPEP ? 1415.01. 

1444	Review of Reissue Oath/Declaration

In accordance with  37 CFR 1.175, the following is 
required in the reissue oath/declaration:

(A)	A statement that the applicant believes the original 
patent to be wholly or partly inoperative or invalid-

(1)	by reason of a defective specification or draw-
ing, or

(2)	by reason of the patentee claiming more or less 
than patentee had the right to claim in the patent;

(B)	A statement of at least one error which is relied 
upon to support the reissue application, i.e.,   which pro-
vides a basis for the reissue;

(C)	A statement that all errors which are being cor-
rected in the reissue application up to the time of filing of 
the oath/declaration arose without any deceptive intention 
on the part of the applicant; and

(D)	The information required by  37 CFR 1.63.

MPEP ? 1414 contains a discussion of each of the above 
elements (i.e., requirements of a reissue oath/declaration). 
The examiner should carefully review the reissue oath/dec-
laration in conjunction with that discussion, in order to 
ensure that each element is provided in the oath/declara-
tion. If the examiner's review of the oath/declaration 
reveals a lack of compliance with any of the requirements 
of  37 CFR 1.175, a rejection of all the claims under 
35 U.S.C. 251 should be made on the basis that the reissue 
oath/declaration is insufficient.

In preparing an Office action, the examiner should use 
form paragraphs 14.01 through 14.01.04 to state the objec-
tion(s) to the oath/declaration, i.e., the defects in the oath/
declaration. These form paragraphs are reproduced in  
MPEP ? 1414. The examiner should then use form para-
graph 14.14 to reject the claims under 35 U.S.C. 251, based 
upon the improper oath/declaration. 

?  14.14 Rejection, Defective Reissue Oath or Declaration

Claim   [1] rejected as being based upon a defective reissue [2] under  
35 U.S.C. 251 as set forth above.  See  37 CFR 1.175.

The nature of the defect(s) in the [3] is set forth in the discussion above 
in this Office action.  

Examiner Note:

1.	In bracket 1, list all claims in the reissue application. See MPEP 
? 706.03(x).

2.	This paragraph should be preceded by at least one of the paragraphs 
14.01 to 14.01.04.

3.	In brackets 2 and 3, insert either --oath-- or --declaration--.

A lack of signature on a reissue oath/declaration would 
be considered a lack of compliance with 37 CFR 1.175(a) 
and result in a rejection, including final rejection, of all the 
claims on the basis that the reissue oath/declaration is 
insufficient. If the unsigned reissue oath/declaration is sub-
mitted as part of a reply which is otherwise properly signed 
and responsive to the outstanding Office action, the reply 
should be accepted by the examiner as proper and respon-
sive, and the oath/declaration considered fully in the next 
Office action. The reply should not be treated as an 
unsigned or improperly signed amendment (see  MPEP ? 
714.01(a)), nor do the provisions of Ex Parte Quayle apply 
in this situation. The lack of signature, along with any other 
oath/declaration deficiencies, should be noted in the next 
Office action rejecting the claims as being based upon an 
insufficient reissue oath/declaration.

HANDLING OF THE REISSUE OATH/DECLARA-
TION DURING THE REISSUE PROCEEDING

An initial reissue oath/declaration is submitted with the 
reissue application. Where the reissue oath/declaration fails 
to comply with  37 CFR 1.175(a), the examiner will so 
notify the applicant in an Office action, rejecting the claims 
under  35 U.S.C. 251 as discussed above. In reply to the 
Office action, a supplemental reissue oath/declaration 
should be submitted dealing with the noted defects in the 
reissue oath/declaration.

Where the initial reissue oath/declaration (1) failed to 
provide any error statement, or (2) attempted to provide an 
error statement, but failed to identify any error under  35 
U.S.C. 251 upon which reissue can be based (see  MPEP ? 
1402), the examiner should reject all the claims as being 
based upon a defective reissue oath/declaration under  35 
U.S.C. 251. To support the rejection, the examiner should 
point out the failure of the initial oath/declaration to com-
ply with  37 CFR 1.175 because an error under  35 U.S.C. 
251 upon which reissue can be based was not identified 
therein. In reply to the rejection under  35 U.S.C. 251, a 
supplemental reissue oath/declaration must be submitted 
stating an error under  35 U.S.C. 251 which can be relied 
upon to support the reissue application. Submission of this 
supplemental reissue oath/declaration to obviate the rejec-
tion cannot be deferred by applicant until the application is 
otherwise in condition for allowance. In this instance, a 
proper statement of error was never provided in the initial 
reissue oath/declaration, thus a supplemental oath/declara-
tion is required in reply to the Office action in order to 
properly establish grounds for reissue.

A different situation may arise where the initial reissue 
oath/declaration does properly identify one or more errors 
under  35 U.S.C. 251 as being the basis for reissue, how-
ever, because of changes or amendments made during pros-
ecution, none of the identified errors are relied upon any 
more. A supplemental oath/declaration will be needed to 
identify at least one error now being relied upon as the basis 
for reissue, even though the prior oath/declaration was 
found proper by the examiner. The supplemental oath/dec-
laration need not also indicate that the error(s) identified in 
the prior oath(s)/declaration(s) is/are no longer being cor-
rected. In this instance, applicant's submission of the sup-
plemental reissue oath/declaration to obviate the rejection 
under  35 U.S.C. 251can, at applicant's option, be deferred 
until the application is otherwise in condition for allow-
ance. The submission can be deferred because a proper 
statement of error was provided in the initial reissue oath/
declaration. Applicant need only request that submission of 
the supplemental reissue oath/declaration be deferred until 
allowance, and such a request will be considered a com-
plete reply to the rejection.

SUPPLEMENTAL REISSUE OATH/DECLARATION 
UNDER 37 CFR 1.175(b)(1):

Once the reissue oath/declaration is found to comply 
with  37 CFR 1.175(a), it is not required, nor is it sug-
gested, that a new reissue oath/declaration be submitted 
together with each new amendment and correction of error 
in the patent. During the prosecution of a reissue applica-
tion, amendments are often made and additional errors in 
the patent are corrected. A supplemental oath/declaration 
need not be submitted with each amendment and additional 
correction. Rather, it is suggested that the reissue applicant 
wait until the case is in condition for allowance, and then 
submit a cumulative supplemental reissue oath/declaration 
pursuant to  37 CFR 1.175(b)(1).

See  MPEP ? 1414.01 for a discussion of the required 
content of a supplemental reissue oath/declaration under  
37 CFR 1.175(b)(1).

A supplemental oath/declaration under  37 CFR 
1.175(b)(1) must be submitted before allowance. It may be 
submitted with any reply prior to allowance. It may be sub-
mitted to overcome a rejection under 35 U.S.C 251 made 
by the examiner, where it is indicated that the submission 
of the supplemental oath/declaration will overcome the 
rejection.

A supplemental oath/declaration under  37 CFR 
1.175(b)(1) will be required where:

(A)	the application is otherwise (other than the need 
for this supplemental oath/declaration) in condition for 
allowance;

(B)	amendments or other corrections of errors in the 
patent have been made subsequent to the last oath/declara-
tion filed in the application; and

(C)	at least one of the amendments or other correc-
tions corrects an error under  35 U.S.C. 251.

When a supplemental oath/declaration under  37 CFR 
1.175(b)(1) directed to the amendments or other corrections 
of error is required, the examiner is encouraged to tele-
phone the applicant and request the submission of the sup-
plemental oath/declaration by fax. If the circumstances do 
not permit making a telephone call, or if applicant declines 
or is unable to promptly submit the oath/declaration, the 
examiner should issue a final Office action (final rejection) 
and use form paragraph 14.05.02.

?  14.05.02 Supplemental Oath or Declaration Required Prior to 
Allowance

In accordance with  37 CFR 1.175(b)(1), a supplemental reissue oath/
declaration under  37 CFR 1.175(b)(1) must be received before this reis-
sue application can be allowed.

Claim   [1] rejected as being based upon a defective reissue [2] under  
35 U.S.C. 251. See  37 CFR 1.175. The nature of the defect is set forth 
above.

Receipt of an appropriate supplemental oath/declaration under  37 CFR 
1.175(b)(1) will overcome this rejection under  35 U.S.C. 251. An exam-
ple of acceptable language to be used in the supplemental oath/declaration 
is as follows:

"Every error in the patent which was corrected in the present reis-
sue application, and is not covered by a prior oath/declaration sub-
mitted in this application, arose without any deceptive intention on 
the part of the applicant."

Examiner Note:

1.	In bracket 1, list all claims in the reissue application.

2.	In bracket 2, insert either --oath-- or --declaration--.

3.	This form paragraph is used in an Office action to: (a) remind appli-
cant of the requirement for submission of the supplemental reissue oath/
declaration under  37 CFR 1.175(b)(1) before allowance and (b) at the 
same time, reject all the claims since the reissue application is defective 
until the supplemental oath/declaration is submitted.

4.	Do not use this form paragraph if no amendments (or other correc-
tions of the patent) have been made subsequent to the last oath/declaration 
filed in the case; instead allow the case.

5.	This form paragraph cannot be used in an Ex parte Quayle action to 
require the supplemental oath/declaration, because the rejection under 35 
U.S.C. 251 is more than a matter of form. 

6.	Do not use this form paragraph in an examiner's amendment. The 
supplemental oath/declaration must be filed prior to mailing of the Notice 
of Allowability.

As noted above, the examiner will issue a final Office 
action where the application is otherwise in condition for 
allowance, and amendments or other corrections of error in 
the patent have been made subsequent to the last oath/dec-
laration filed in the application. The examiner will be intro-
ducing (via form paragraph 14.05.02) a rejection into the 
case for the first time in the prosecution, once the claims 
are determined to be otherwise allowable. This introduction 
of a new ground of rejection under  35 U.S.C. 251 will not 
prevent the action from being made final on a second or 
subsequent action because of the following factors:

(A)	The finding of the case in condition for allowance 
is the first opportunity that the examiner has to make the 
rejection; 

(B)	The rejection is being made in reply to, i.e., was 
caused by, an amendment of the application (to correct 
errors in the patent);

(C)	All applicants are on notice that this rejection will 
be made upon finding of the case otherwise in condition for 
allowance where errors have been corrected subsequent to 
the last oath/declaration filed in the case, therefore, the 
rejection should have been expected by applicant; and 

(D)	The rejection will not prevent applicant from exer-
cising any rights as to curing the rejection, since applicant 
need only submit a supplemental oath/declaration with the 
above-described language, and it will be entered to cure the 
rejection.

Where the application is in condition for allowance and   
no  amendments or other corrections of error in the 
patent have been made subsequent to the last oath/dec-
laration filed in the application, a supplemental reissue 
oath/declaration under 37 CFR 1.175(b)(1) should not be 
required by the examiner. Instead, the examiner should 
issue a Notice of Allowability indicating allowance of the 
claims.

AFTER ALLOWANCE

Where applicant seeks to correct an error after allowance 
of the application, any amendment of the patent correcting 
the error must be submitted in accordance with  37 CFR 
1.312. As set forth in 37 CFR 1.312, no amendment may be 
made as a matter of right in an application after the mailing 
of the notice of allowance. An amendment filed before the 
payment of the issue fee may be entered on the recommen-
dation of the primary examiner, approved by the supervi-
sory patent examiner, without withdrawing the case from 
issue. An amendment filed after the date the issue fee is 
paid must be accompanied by a petition including the fee 
set forth in  37 CFR 1.17(i) and a showing of good and suf-
ficient reasons why the amendment is necessary and was 
not earlier presented. This petition is decided by the Group 
Director.

Because the amendment seeks to correct an error in the 
patent, the amendment will affect the disclosure, the scope 
of a claim, or add a claim. Thus, in accordance with  MPEP  
? 714.16, the remarks accompanying the amendment must 
fully and clearly state:

(A)	why the amendment is needed;

(B)	why the proposed amended or new claims require 
no additional search or examination;

(C)	why the claims are patentable; and

(D)	why they were not presented earlier.

A supplemental reissue oath/declaration must accom-
pany the amendment. The supplemental reissue oath/decla-
ration must state that the error(s) to be corrected arose 
without any deceptive intention on the part of the applicant. 
The supplemental reissue oath/declaration submitted after 
allowance must be directed to the error(s) applicant seeks 
to correct after allowance. This oath/declaration need not 
cover any earlier errors, since all earlier errors should have 
been covered by a reissue oath/declaration submitted prior 
to allowance.

Occasionally an error to be corrected after allowance 
does not include an amendment of the specification or 
claims of the patent. For example, the correction of the 
error could be the filing of a certified copy of the original 
foreign application to obtain the right of foreign priority 
under  35 U.S.C. 119 (see Brenner v. State of Israel, 400 
F.2d 789, 158 USPQ 584 (D.C. Cir. 1968)). In such a case, 
the requirements of  37 CFR 1.312 must still be met. This is 
so, because the correction of the patent is an amendment of 
the patent, even though no amendment is physically entered 
into the case. Thus, for a reissue oath/declaration submitted 
after allowance to correct an additional error (or errors), the 
reissue applicant must comply with  37 CFR 1.312 in the 
manner discussed above.

1445	Reissue Application Examined in 
Same Manner as Original Application

As stated in  37 CFR 1.176, a reissue application, includ-
ing all the claims therein, is subject to "be examined in the 
same manner as original applications." Accordingly, the 
claims in a reissue application are subject to any and all 
rejections which the examiner deems appropriate.  It does 
not matter whether the claims are identical to those of the 
patent or changed from those in the patent. It also does not 
matter that a rejection was not made in the prosecution of 
the patent, or could have been made, or was in fact made 
and dropped during prosecution of the patent; the prior 
action in the prosecution of the patent does not prevent that 
rejection from being made in the reissue application. 
Claims in a reissue application enjoy no "presumption of 
validity." In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 
232-233 (CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 
n.4, 218 USPQ 385, 389 n.4 (Fed. Cir. 1983).  Likewise, 
the fact that during prosecution of the patent the examiner 
considered, may have considered, or should have consid-
ered information such as, for example, a specific prior art 
document, does not have any bearing on or prevent its use 
as prior art during prosecution of the reissue application.

1448	Fraud, Inequitable Conduct, or Duty 
of Disclosure Issues

The Office no longer investigates and rejects reissue 
applications under  37 CFR 1.56. The Office will not com-
ment upon duty of disclosure issues which are brought to 
the attention of the Office in reissue applications except to 
note in the application, in appropriate circumstances, that 
such issues are no longer considered by the Office during 
its examination of patent applications. Examination as to 
the lack of deceptive intent requirement in reissue applica-
tions will continue but without any investigation of fraud, 
inequitable conduct, or duty of disclosure issues. Appli-
cant's statement in the reissue oath or declaration of lack of 
deceptive intent will be accepted as dispositive except in 
special circumstances such as an admission or judicial 
determination of fraud, inequitable conduct, or violation of 
the duty of disclosure. 

ADMISSION OR JUDICIAL DETERMINATION

An admission or judicial determination of fraud, inequi-
table conduct, or violation of the duty of disclosure is a spe-
cial circumstance, because no investigation need be made.  
Accordingly, after consulting with the Group Special Pro-
gram Examiner, a rejection should be made using the 
appropriate one of form paragraphs 14.21.09 or 14.22 as 
reproduced below.

Any admission of fraud, inequitable conduct or violation 
of the duty of disclosure must be explicit, unequivocal, and 
not subject to other interpretation. Where a rejection is 
made based upon such an admission (see form paragraph 
14.22 below) and applicant responds with any reasonable 
interpretation of the facts that would not lead to a conclu-
sion of fraud, inequitable conduct or violation of the duty 
of disclosure, the rejection should be withdrawn. Alterna-
tively, if applicant argues that the admission noted by the 
examiner was not in fact an admission, the rejection should 
also be withdrawn.

Form Paragraph 14.21.09 should be used where the 
examiner becomes aware of a judicial determination of 
fraud, inequitable conduct or violation of the duty of disclo-
sure on the part of the applicant independently of the 
record of the case,   i.e.  , the examiner has external knowl-
edge of the judicial determination.

Form Paragraph 14.22 should be used where, in the 
application record, there is (a) an explicit, unequivocal 
admission by applicant of fraud, inequitable conduct or vio-
lation of the duty of disclosure which is not subject to other 
interpretation, or (b) information as to a judicial determina-
tion of fraud, inequitable conduct or violation of the duty of 
disclosure on the part of the applicant. External information 
which the examiner believes to be an admission by appli-
cant should never be used by the examiner, and such exter-
nal information should never be made of record in the 
application.

?  14.21.09 Rejection, 35 U.S.C. 251, No Error Without Deceptive 
Intention - External Knowledge

Claims [1] rejected under 35 U.S.C. 251 since error "without 
any deceptive intention" has not been established. In view of the judicial 
determination in [2] of [3] on the part of applicant, a conclusion that any 
error was "without deceptive intention" cannot be supported.   [4]

Examiner Note:

1.	In bracket 1, list all claims in the reissue application. 

2.	In bracket 2, list the Court or administrative body which made the 
judicial determination of fraud or inequitable conduct on the part of appli-
cant. 

3.	In bracket 3, insert --fraud--, --inequitable conduct-- and/or --viola-
tion of duty of disclosure--. 

4.	In bracket 4, point out where in the opinion (or holding) of the Court 
or administrative body the judicial determination of fraud, inequitable 
conduct or violation of duty of disclosure is set forth.  Page number, col-
umn number, and paragraph information should be given as to the opinion 
(or holding) of the Court or administrative body.  The examiner may add 
explanatory comments.

?  14.22 Rejection, 35 U.S.C. 251, No Error Without Deceptive 
Intention-Evidence in the Application

Claims   [1] rejected under  35 U.S.C. 251 since error "without any 
deceptive intention" has not been established. In view of Paper No. [2], 
filed [3], a conclusion that any error was "without deceptive intention" 
cannot be supported.

[4]

Examiner Note:

1.	In bracket 1, list all claims in the reissue application. 

2.	In bracket 2, insert the paper number providing an admission of 
fraud, inequitable conduct or violation of duty of disclosure, or that there 
was a judicial determination of same. 

3.	In bracket 3, insert the filing date of the paper. 

4.	In bracket 4, insert a statement that there has been an admission or a 
judicial determination of fraud, inequitable conduct or violation of duty of 
disclosure which provide circumstances why applicant's statement in the 
oath or declaration of lack of deceptive intent should not be taken as dis-
positive.  Any admission of fraud, inequitable conduct or violation of duty 
of disclosure must be explicit, unequivocal, and not subject to other inter-
pretation. 

See  MPEP ? 2012 for additional discussion as to fraud, 
inequitable conduct or violation of duty of disclosure in a 
reissue application.

1449	Protest Filed in Reissue Where Patent 
Is in Interference

If a protest is filed in a reissue application related to a 
patent involved in a pending interference proceeding, the 
reissue application should be referred to the Special Pro-
gram Law Office (SPLO) before considering the protest 
and acting on the application.  

The SPLO will check to see that:

(A)	all parties to the interference are aware of the fil-
ing of the reissue; and

(B)	the Office does not allow claims in the reissue 
which are unpatentable over the pending interference 
count(s), or found unpatentable in the interference proceed-
ing.

1449.01	Concurrent Office Proceedings 

37 CFR 1.565(d) provides that if "a reissue application 
and a reexamination proceeding on which an order pursu-
ant to  37 CFR 1.525 has been mailed are pending concur-
rently on a patent, a decision will normally be made to 
merge the two proceedings or to stay one of the two pro-
ceedings."  If an examiner becomes aware that a reissue 
application and a reexamination proceeding are both pend-
ing for the same patent, he or she should inform the Group 
Special Program Examiner immediately.

Where a reissue application and a reexamination pro-
ceeding are pending concurrently on a patent, and an order 
granting reexamination has been issued for the reexamina-
tion proceeding, the files for the reissue application and the 
reexamination will be forwarded to the Office of the Dep-
uty Assistant Commissioner for Patent Policy and Projects 
for a decision whether to merge the reissue and the reexam-
ination, or stay one of the two. See In re Onda, 229 USPQ 
235 (Comm'r Pat. 1985). See also  MPEP ? 2285.  

If the original patent is involved in an interference, the 
examiner must consult the administrative patent judge in 
charge of the interference before taking any action on the 
reissue application. It is particularly important that the reis-
sue application not be granted without the administrative 
patent judge's approval. See  MPEP ? 2360.

>

1449.02	Interference in Reissue  [R-1]

In appropriate circumstances, a reissue application may 
be placed into interference with a patent or pending appli-
cation. A patentee may provoke an interference with a 
patent or pending application by filing a reissue applica-
tion, if the reissue application includes an appropriate reis-
sue error as required by 35 U.S.C. 251. Reissue error must 
be based upon applicant error; a reissue cannot be based 
solely on the error of the Office for failing to declare an 
interference or to suggest copying claims for the purpose of 
establishing an interference. See In re Keil, 808 F.2d 830, 1 
USPQ2d 1427 (Fed. Cir. 1987); In re Dien, 680 F.2d 151, 
214 USPQ 10 (CCPA 1982); In re Bostwick, 102 F.2d 886, 
888, 41 USPQ 279, 281 (CCPA 1939); and In re 
Guastavino, 83 F.2d 913, 916, 29 USPQ 532, 535 (CCPA 
1936). See also Slip Track Systems, Inc. v. Metal Lite, Inc., 
159 F.3d 1337, 48 USPQ2d 1055 (Fed. Cir. 1998)(Two pat-
ents issued claiming the same patentable subject matter, 
and the patentee with the earlier filing date requested reex-
amination of the patent with the later filing date (Slip 
Track' s patent). A stay of litigation in a priority of inven-
tion suit under 35 U.S.C. 291, pending the outcome of the 
reexamination, was reversed. The suit under 35 U.S.C. 291 
was the only option available to Slip Track to determine 
priority of invention. Slip Track could not file a reissue 
application solely to provoke an interference proceeding 
before the PTO because it did not assert that there was any 
error as required by 35 U.S.C. 251 in the patent.). A reissue 
application can be employed to provoke an interference if 
the reissue application: 

(A)	adds copied claims which are not present in the 
original patent;

(B)	amends claims to correspond to those of the patent 
or application with which an interference is sought; or

(C)	contains at least one error (not directed to provok-
ing an interference) appropriate for the reissue.

 In the first two situations, the reissue oath/declaration 
must assert that applicant erred in failing to include claims 
of the proper scope to provoke an interference in the origi-
nal patent application. Note that in In re Metz, 1998 U.S. 
App. LEXIS 23733 (Fed. Cir. 1998)(unpublished), the Fed-
eral Circuit permitted a patentee to file a reissue application 
to copy claims from a patent in order to provoke an inter-
ference with that patent. Furthermore, the subject matter of 
the copied or amended claims in the reissue application 
must be supported by the disclosure of the original patent 
under 35 U.S.C. 112, first paragraph. See In re Molins, 368 
F.2d 258, 261, 151 USPQ 570, 572 (CCPA 1966) and In re 
Spencer, 273 F.2d 181, 124 USPQ 175 (CCPA 1959). 

A reissue applicant cannot present added or amended 
claims to provoke an interference if the claims were delib-
erately omitted from the patent. If there is evidence that the 
claims were not inadvertently omitted from the original 
patent, e.g., the subject matter was described in the original 
patent as being undesirable, the reissue application may 
lack proper basis for the reissue. See In re Bostwick, 102 
F.2d at 889, 41 USPQ at 282 (CCPA 1939)(reissue lacked a 
proper basis because the original patent pointed out the dis-
advantages of the embodiment that provided support for the 
copied claims). 

The issue date of the patent with which an interference is 
sought must be less than 1 year prior to the presentation of 
the copied or amended claims in the reissue application. 
See 35 U.S.C. 135(b) and  MPEP ? 715.05 and ? 2307.  If 
the reissue application includes broadened claims, the reis-
sue application must be filed within two years from the 
issue date of the original patent. See 35 U.S.C. 251 and  
MPEP ? 1412.03.

REISSUE APPLICATION FILED WHILE PATENT IS 
IN INTERFERENCE

  If a reissue application is filed while the original patent 
is in an interference proceeding, the reissue applicant is 
required to notify the Board of Patent Appeals and Interfer-
ences of the filing of the reissue application within 10 days 
from the filing date. See 37 CFR 1.660(b) and MPEP 
? 2360.<

1450	Restriction and Election of Species

The examiner may not require restriction in a reissue 
application (37 CFR 1.176 and MPEP ? 1440). Even where 
the original patent contains claims to different inventions 
which the examiner considers independent and distinct, and 
the reissue application claims the same inventions, the 
examiner should not require restriction between them or 
take any other action with respect to the question of plural 
inventions. Restriction may only be requested by the appli-
cant (37 CFR 1.177 and  MPEP ? 1451). In situations 
where a reissue applicant presents claims for the first time 
that are distinct and separate from the claims of the patent, 
the examiner must follow the practice resulting from In re 
Amos, 953 F.2d 613, 618, 21 USPQ2d 1271, 1274 (Fed. 
Cir. 1991) as set forth in  MPEP ? 1412.01.

A reissue applicant's failure to timely file a divisional 
application is not considered to be error causing a patent 
granted on elected claims to be partially inoperative by rea-
son of claiming less than the applicant had a right to claim. 
Thus, such error is not correctable by reissue of the original 
patent under  35 U.S.C. 251.  In re Watkinson, 900 F.2d 
230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 550 
F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). See 
also In re Mead, 581 F. 2d 251, 198 USPQ 412 (CCPA 
1978). Likewise, if the original patent specification shows 
an intent not to claim the newly presented invention, that 
invention cannot be added by reissue. In these situations, 
the reissue claims should be rejected under  35 U.S.C. 251 
for lack of defect in the original patent and lack of error in 
obtaining the original patent. See also  MPEP ? 1412.01.

When the original patent contains claims to a plurality of 
species and the reissue application contains claims to the 
same species, election of species should not be required 
even though there is no allowable generic claim. If the reis-
sue application presents claims to species not claimed in 
the original patent, election of species should not be 
required, but the added claims may be rejected, where 
appropriate, for lack of defect in the original patent and 
lack of error in obtaining the original patent as discussed 
above.

1451	Divisional Reissue Applications; 
Continuation Reissue Applications 
Where the Parent is Pending [R-1]

35 U.S.C. 251.  Reissue of defective patents.

*****

The Commissioner may issue several reissued patents for distinct and 
separate parts of the thing patented, upon demand of the applicant, and 
upon payment of the required fee for a reissue for each of such reissued 
patents.

*****

37 CFR 1.177.  Reissue in divisions.

The Commissioner may, in his or her discretion, cause several patents 
to be issued for distinct and separate parts of the thing patented, upon 
demand of the applicant, and upon payment of the required fee for each 
division. Each division of a reissue constitutes the subject of a separate 
specification descriptive of the part or parts of the invention claimed in 
such division; and the drawing may represent only such part or parts, sub-
ject to the provisions of ?? 1.83 and 1.84. On filing divisional reissue 
applications, they shall be referred to the Commissioner. Unless otherwise 
ordered by the Commissioner upon petition and payment of the fee set 
forth in ? 1.17(i), all the divisions of a reissue will issue simultaneously; if 
there is any controversy as to one division, the others will be withheld 
from issue until the controversy is ended, unless the Commissioner orders 
otherwise.

Questions relating to the propriety of divisional reissue 
applications and continuation reissue applications should 
be referred via the Group Special Program Examiner to the 
Special Program Law Office. 



DIVISIONAL REISSUE APPLICATIONS

As is pointed out in  MPEP ? 1450, the examiner cannot 
require restriction in a reissue application; only applicant 
can initiate a division of the claims by demand in accor-
dance with 37 CFR 1.177. Where the original patent claims 
contain several independent and distinct inventions, they 
can be divided into separate divisional reissues if the appli-
cant demands it.  37 CFR 1.177 sets forth a possibility for 
filing divisional reissue applications.

When divisional reissue applications are filed, appropri-
ate amendments to the continuing data entries are to be 
made to the first sentence of the specification, and to the 
file wrappers, for all such applications, so that **>adequate 
notice is provided that more than one reissue application 
has been filed for a single original patent.

 The provisions of 37 CFR 1.177 currently require that 
all divisional reissue applications issue simultaneously. 
However, in view of In re Graff, 111 F.3d 874, 42 USPQ2d 
1471 (Fed. Cir. 1997), Office policy has been modified. 
The requirement of 37 CFR 1.177 for simultaneous issu-
ance will be routinely waived sua sponte (under 37 CFR 
1.183) prior to examination of the reissue applications in 
letter issued by the Special Program Law Office under 
37 CFR 1.177. Accordingly, where an examiner becomes 
aware of the existence of divisional reissue applications, 
the examiner should check to ensure that a 37 CFR 1.177  
letter issued by the Special Program Law Office is present 
in each divisional reissue file. If such a letter is not present, 
the divisional reissue applications should be immediately 
forwarded via the Group Special Program Examiner to the 
Special Program Law Office.<

Situations yielding divisional reissues occur infrequently 
and usually involve only two such files. It should be noted, 
however, that in rare instances in the past, there have been 
more than two (and as many as five) divisional reissues of 
a patent.

CONTINUATION REISSUE APPLICATIONS

A continuation of a reissue is ** not >ordinarily filed<  
"for distinct and separate parts of the thing patented" as 
called for in the second paragraph of  35 U.S.C. 251. The 
decision of In re Graff, 111 F.3d 874, 42 USPQ2d 1471 
(Fed. Cir. 1997) interprets 35 U.S.C. 251 to permit multiple 
reissue patents to issue even where the multiple reissue pat-
ents are not for "distinct and separate parts of the thing pat-
ented."  The court stated:

Section 251[2] is plainly intended as enabling, not as limiting.  
Section 251[2] has the effect of assuring that a different burden is 
not placed on divisional or continuation reissue applications, 
compared with divisions and continuations of original applica-
tions, by codifying the Supreme Court decision which recognized 
that more than one patent can result from a reissue proceeding. 
Thus ? 251[2] places no greater burden on Mr. Graff's continua-
tion reissue application than upon a continuation of an original 
application; ? 251[2] neither overrides, enlarges, nor limits the 
statement in ? 251[3] that the provisions of Title 5 apply to reis-
sues.

111 F.3d at 877, 42 USPQ2d at 1473.  Accordingly, >prose-
cution of< a continuation of a reissue application will be 
permitted ** (despite the presence of the parent reissue) 
where the continuation complies with the rules for reissue.

The parent and the continuation reissue applications 
should be examined together if possible. An appropriate 
amendment to the continuing data entries is to be made to 
the first sentence of the specification, and to the file wrap-
pers, for both the parent and the continuation reissue appli-
cations, so that the parent-continuation relationship of the 
reissue applications is specifically identified and notice is 
provided of both reissue applications. 

Where the parent reissue application issues prior to the 
examination of the continuation, the claims of the continua-
tion should be carefully reviewed for double patenting over 
the claims of the parent. Where the parent and the continua-
tion reissue applications are examined together, a provi-
sional double patenting rejection should be made in both 
cases as to any overlapping claims. See MPEP ? 804 -  
? 804.04 as to double patenting rejections.>Any terminal 
disclaimer filed to obviate an obviousness-type double pat-
enting rejection ensures common ownership of the reissue 
patents throughout the remainder of the unexpired term of 
the original patent.<

If the parent reissue application issues without any cross 
reference to the continuation, amendment of the 
parent reissue patent to include a cross-reference to the 
continuation should be required **>by Certificate of Cor-
rection<.

1453	Amendments to Reissue Applications

37 CFR 1.121.  Manner of making amendments.

*****

(b)	  Amendments in reissue applications:  Amendments in reissue 
applications are made by filing a paper, in compliance with ? 1.52, direct-
ing that specified amendments be made.

	(1)  	Specification other than the claims.  Amendments to the 
specification, other than to the claims, may only be made as follows:

(i)	Amendments must be made by submission of the entire 
text of a newly added or rewritten paragraph(s) with markings pursuant to 
paragraph (b)(1)(iii) of this section, except that an entire paragraph may be 
deleted by a statement deleting the paragraph without presentation of the 
text of the paragraph.

(ii)	The precise point in the specification must be indicated 
where the paragraph to be amended is located.

(iii)	Underlining below the subject matter added to the patent 
and brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made.

(2)	Claims. Amendments to the claims may only be made as fol-
lows:

(i)(A)	The amendment must be made relative to the patent 
claims in accordance with paragraph (b)(6) of this section and must 
include the entire text of each claim which is being amended by the cur-
rent amendment and of each claim being added by the current amendment 
with markings pursuant to paragraph (b)(2)(i)(C) of this section, except 
that a patent claim or added claim should be cancelled by a statement can-
celling the patent claim or added claim without presentation of the text of 
the patent claim or added claim.

(B)	Patent claims must not be renumbered and the num-
bering of any claims added to the patent must follow the number of the 
highest numbered patent claim.

(C)	Underlining below the subject matter added to the 
patent and brackets around the subject matter deleted from the patent are 
to be used to mark the amendments being made.  If a claim is amended 
pursuant to paragraph (b)(2)(i)(A) of this section, a parenthetical expres-
sion "amended," "twice amended," etc., should follow the original claim 
number.

(ii)	Each amendment submission must set forth the status 
(i.e., pending or cancelled) as of the date of the amendment, of all patent 
claims and of all added claims.

(iii)	Each amendment when originally submitted must be 
accompanied by an explanation of the support in the disclosure of the 
patent for the amendment along with any additional comments on page(s) 
separate from the page(s) containing the amendment.

(3)	Drawings.

(i)	Amendments to the original patent drawings are not per-
mitted. Any change to the patent drawings must be by way of a new sheet 
of drawings with the amended figures identified as "amended" and with 
added figures identified as "new" for each sheet changed submitted in 
compliance with ? 1.84.

(ii)	Where a change to the drawings is desired, a sketch in 
permanent ink showing proposed changes in red, to become part of the 
record, must be filed for approval by the examiner and should be in a sep-
arate paper.

(4)	The disclosure must be amended, when required by the 
Office, to correct inaccuracies of description and definition, and to secure 
substantial correspondence between the claims, the remainder of the spec-
ification, and the drawings.

(5)	No reissue 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, pursuant to  35 U.S.C. 251.  No amendment to 
the patent may introduce new matter or be made in an expired patent.

(6)	All amendments must be made relative to the patent specifica-
tion, including the claims, and drawings, which is in effect as of the date of 
filing of the reissue application.

*****

The provisions of  37 CFR 1.121(b) apply to amend-
ments in reissue applications. The practice outlined in this 
section must be complied with for any amendment submit-
ted in a reissue application on or after December 1, 1997.

Amendments submitted before December 1, 1997 (under 
the prior practice) need not, and should not, be re-submitted 
under the current practice. However, if an amendment   is in 
fact re-submitted, it will be entered, unless non-entry is 
directed or approved by the SPE or SPRE.

THE SPECIFICATION

37 CFR 1.121(b)(1) relates to the manner of making 
amendments to the specification other than the claims. It is 
not to be used for making amendments to the claims or the 
drawings. 

37 CFR 1.121 (b)(1)(i) requires that all amendments 
which include any deletions or additions must be made by 
submission of a copy of each rewritten paragraph with 
markings (brackets and underlining), with the exception 
that an entire paragraph of specification text may be deleted 
by a statement deleting the paragraph   without presentation 
of the text of the paragraph. 37 CFR 1.121 (b)(1)(i) also 
requires that all paragraphs which are added to the specifi-
cation be submitted as completely underlined. In 37 CFR 
1.121(b)(1)(ii), it is required that the precise point where 
each amendment is made must be indicated by applicant.  
37 CFR 1.121(b)(1)(iii) defines the markings set forth in 
(b)(1)(ii) as being brackets for deletion and underlining for 
addition.

All bracketing and underlining is made in comparison to 
the original patent, not in comparison to the prior amend-
ment.

Where a change is made in one sentence, paragraph or 
page, and the change increases or decreases the size of the 
sentence, paragraph or page, this will have no effect on the 
body of the reissue specification. This is because all inser-
tions are made as blocked additions of paragraphs, which 
are not physically inserted within the specification papers. 
Rather, each blocked paragraph is assigned a letter and 
number, and a caret written in the specification papers indi-
cates where the blocked paragraph is to be incorporated. In 
view of this, a reissue applicant need not be concerned with 
page formatting considerations when presenting amend-
ments to the Office.

THE CLAIMS

37 CFR 1.121(b)(2) relates to the manner of making 
amendments to the claims in reissue applications. It is not 
to be used for making amendments to the remainder of the 
specification or to the drawings.

The provisions of  37 CFR 1.121(b)(2)(i)(A) require:

(A)	For each claim that is being amended by the 
amendment being submitted (the current amendment), the 
entire text of the claim must be presented with markings;

(B)	For each new claim added to the reissue   by the 
amendment being submitted (the current amendment), the 
entire text of the added claim must be presented;

(C)	A patent claim should be canceled by a direction 
to cancel that claim; there is no need to present the patent 
claim surrounded by brackets; and

(D)	A new claim (previously added in the reissue) 
should be canceled by a direction to cancel that claim.

37 CFR 1.121(b)(2)(i)(B) states that original patent 
claims must not be renumbered. A patent claim retains its 
number even if it is cancelled in the reissue proceeding, and 
the numbering of any added claims must begin after the last 
original patent claim.  37 CFR 1.121(b)(2)(i)(C) identifies 
the type of marking required by reference to  37 CFR 
1.121(b)(2)(i)(A), i.e.  , underlining for added material and 
single brackets for material deleted.

In accordance with  37 CFR 1.121(b)(2)(ii), each amend-
ment submitted must set forth the status of all patent claims 
and all added claims as of the date of the submission. The 
status to be set forth is whether the claim is pending or can-
celed. The failure to submit the claim status will generally 
result in a notification to applicant that the amendment 
prior to final rejection is not completely responsive (see  
37 CFR 1.135(c)). Such an amendment after final rejection 
will not be entered.

In accordance with  37 CFR 1.121(b)(2)(iii), each claim 
amendment must be accompanied by an explanation of the 
support in the disclosure of the patent for the amendment 
(i.e., support for the changes made in the claim(s), includ-
ing support for any insertions and deletions). The failure to 
submit an explanation will generally result in a notification 
to applicant that the amendment prior to final rejection is 
not completely responsive (see 37 CFR 1.135(c)). Such an 
amendment after final rejection will not be entered.  
Finally,  37 CFR 1.121(b)(5) provides that:

(A)	No reissue patent shall be granted enlarging the 
scope of the claims, unless applied for within two years 
from the grant of the original patent,

(B)	no amendment may introduce new matter, and

(C)	no amendment may be made in an expired patent.

See  MPEP ? 1412.03 for further discussion as to the 
time limitation on enlarging the scope of the patent claims 
in a reissue application.

THE DRAWINGS

37 CFR 1.121(b)(3) relates to the manner of making 
amendments to the drawings.

In  37 CFR 1.121(b)(3), it is clarified that amendments 
to the original patent drawings are not permitted, and that 
any change must be by way of a new sheet of drawings 
with the amended figures being identified as "amended" 
and with added figures identified as "new" for each sheet 
that has changed. See also MPEP ? 1413 for a further dis-
cussion as to the drawings.

Form paragraph 14.20.01 may be used to advise appli-
cant of the proper manner of making amendments in a reis-
sue application.

?  14.20.01 Amendments To Reissue-37 CFR 1.121(b)

Applicant is notified that any subsequent amendment to the specifica-
tion and/or claims must comply with  37 CFR 1.121(b).

Examiner Note:

This form paragraph may be used in the first Office action to advise 
applicant of the proper manner of making amendments.

Form paragraph 14.21.01 may be used to notify appli-
cant that proposed amendments filed prior to final rejec-
tion in the reissue application do not comply with  37 CFR 
1.121(b).

?  14.21.01 Improper Amendment To Reissue - 37 CFR 1.121(b)

The amendment filed [1] proposes amendments to [2] that do not com-
ply with  37 CFR 1.121(b), which sets forth the manner of making amend-
ments in reissue applications. A supplemental paper correctly amending 
the reissue application is required. 

A shortened statutory period for reply to this letter is set to expire ONE 
MONTH or THIRTY DAYS, whichever is longer, from the mailing date 
of this letter.

Examiner Note:

This paragraph may be used for any  37 CFR 1.121(b) informality as to 
an amendment submitted in a reissue application prior to final rejection. 
After final rejection, applicant should be informed that the amendment 
will not be entered in an Advisory Office action.

Note that if an informal amendment is submitted after 
final rejection, form paragraph 14.21.01 should not be 
used. Rather, an advisory Office action should be issued 
using Form PTO-303 indicating that the amendment was 
not entered because it does not comply with 37 CFR 
1.121(b), which sets forth the manner of making amend-
ments in reissue applications.

ALL CHANGES ARE MADE VIS-A-VIS THE 
PATENT TO BE REISSUED

When a reissue patent is printed, all underlined matter is 
printed in italics and all brackets are printed as inserted in 
the application, in order to show exactly which additions 
and deletions have been made to the patent being reissued. 
Therefore, all underlining and bracketing in the reissue 
application should be made relative to the text of the patent, 
as follows. In accordance with 37 CFR 1.121(b)(6), all 
amendments in the reissue application must be made rela-
tive to (i.e.  , vis-a-vis) the patent specification in effect as 
of the date of the filing of the reissue application. The 
patent specification includes the claims and drawings. If 
there was a prior change to the patent (made via a prior 
concluded reexamination certificate, reissue of the patent, 
certificate of correction, etc.), the first amendment of the 
subject reissue application must be made relative to the 
patent specification as changed by the prior proceeding or 
other mechanism for changing the patent. All amendments 
subsequent to the first amendment must also be made rela-
tive to the patent specification in effect as of the date of the 
filing of the reissue application, and not relative to the prior 
amendment.

The Subject Patent Already Has Underlining or 
Bracketing

If the original (or previously changed) patent includes a 
formula or equation already having underlining or bracket-
ing therein as part of the formula or equation, any amend-
ment of such formula or equation should be made by 
bracketing the entire formula and rewriting and totally 
underlining the amended formula in the re-presented para-
graph of the specification or rewritten claim in which the 
changed formula or equation appears.  Amendments of seg-
ments of a formula or equation should not be made. If the 
original patent includes bracketing and underlining from an 
earlier reexamination or reissue, double brackets and dou-
ble underlining should be used in the subject reissue appli-
cation to identify and distinguish the present changes being 
made. The subject reissue, when printed, would include 
double brackets (indicating deletions made in the subject 
reissue) and boldface type (indicating material added in the 
subject reissue).

EXAMPLES OF PROPER AMENDMENTS

A substantial number of problems arise in the Office 
because of improper submission of amendments in reissue 
applications. The following examples are provided to assist 
in preparation of proper amendments to reissue applica-
tions.

Original Patent Description or Patent Claim Amended

Example (1)

If it is desired to change the specification at column 4 
line 23, to replace "is" with --are--, submit a copy of the 
entire paragraph of specification of the patent being 
amended with underlining and bracketing, and point out 
where the paragraph is located, e.g.,

Replace the paragraph beginning at column 4, line 23 with the 
following: 

Scanning [is] are controlled by clocks which are, in turn, controlled 
from the display tube line synchronization. The signals resulting 
from scanning the scope of the character are delivered in parallel, 
then converted into serial mode through a shift register  wherein the 
shift signal frequency is controlled by a clock that is, in turn, con-
trolled from the display tube line synchronization.

Example (2)

For changes to the claims, one must submit a copy of 
the entire patent claim with the amendments shown by 
underlining and bracketing, e.g.,

Amend claim 6 as follows:

Claim 6 (Amended). The apparatus of claim [5] 1 wherein the 
[first] second piezoelectric element is parallel to the [second] third 
piezoelectric element.

If the dependency of any original patent claim is to be 
changed by amendment, it is proper to make that origi-
nal patent claim dependent upon a later filed higher 
numbered claim.

Cancellation of Claim(s)

Example (3)

To cancel an original patent claim, in writing, direct 
cancellation of the patent claim, e.g.,

Cancel claim 6.

Example (4)

To cancel a new claim (previously added in the  reis-
sue), in writing, direct cancellation of the new claim, 
e.g.,

Cancel claim 15.

Presentation of New Claims

Example (5) 

Each new claim (i.e., a claim not found in the patent, 
that is newly presented in the reissue application) 
should be presented with underlining throughout the 
claim,   e.g.,

Add claim 7 as follows:

Claim 7. The apparatus of claim 5 further comprising electrodes 
attaching to said opposite faces of the first and second piezoelec-
tric elements.

Even though original claims may have been canceled, 
the numbering of the original claims does not change. 
Accordingly, any added claims are numbered beginning 
with the number next higher than the number of claims 
in the original patent. If new claims have been added to 
the reissue application which are later canceled prior to 
issuance of the reissue patent, the examiner will renum-
ber any remaining new claims in numerical order to fol-
low the number of claims in the original patent.

Amendment of New Claims 

An amendment of a "new claim" (i.e., a claim not found 
in the patent, that was previously presented in the reissue 
application) must be done by presenting the amended "new 
claim" containing the amendatory material, and completely 
underlining the claim. The presentation cannot contain any 
bracketing or other indication of what was in the previous 
version of the claim. This is because all changes in the reis-
sue are made vis-a-vis the original patent, and not in com-
parison to the prior amendment. Although the presentation 
of the amended claim does not contain any indication 
of what is changed from the previous version of the 
claim applicant must point out what is changed, in the 
"Remarks" portion of the amendment. Also, as per 37 CFR 
1.121(b)(2)(C)(iii), each change made in the claim must be 
accompanied by an explanation of the support in the disclo-
sure of the patent for the change.

Amendment of Original Patent Claims More Than Once

The following illustrates proper claim amendment of 
original patent claims in reissue applications: 

  A. Patent claim. 

Claim 1. A cutting means having a handle portion and a 
blade portion.

  B. Proper first amendment format. 

Claim 1 (Amended). A [cutting means] knife having a 
bone handle portion and a notched blade portion.

  C. Proper second amendment format.

Claim 1 (Twice Amended). A [cutting means] knife 
having a handle portion and a serrated blade portion.

Note that the second amendment must include the changes 
previously presented in the first amendment, i.e., [cutting 
means] knife, as well as the new changes presented in the 
second amendment, i.e., serrated. 

The word bone was presented in the first amendment and 
is now to be deleted in the second amendment. The word 
"bone" is NOT to be shown in brackets in the second 
amendment. Rather, the word "bone" is simply omitted 
from the claim, since "bone" never appeared in the patent. 
An explanation of the deletion should appear in the 
remarks.

The word notched which was presented in the first 
amendment  is replaced by the word serrated in the second 
amendment. The word notched is being deleted in the sec-
ond amendment and did not appear in the patent; accord-
ingly, "notched" is not shown in any form in the claim. The 
word serrated is being added in the second amendment, and 
accordingly "serrated" is added to the claim and is under-
lined.

In the second amendment, the deletions of "notched" 
and "bone" are not changes from the original patent claim 
text and therefore are not shown in brackets in the second 
amendment. In both the first and the second amendments, 
the entire claim is presented only with the changes from the 
original patent text. 

1454	Appeal Brief

The requirements for an appeal brief are set forth in 
37 CFR 1.192 and  MPEP ? 1206, and they apply to a reis-
sue application in the same manner that they apply to a 
non-reissue application. There is, however, a difference in 
practice as to presentation of the copy of the claims in the 
appeal brief for a reissue application. The claims on appeal 
presented in an appeal brief for a reissue application should 
include all underlining and bracketing necessary to reflect 
the changes made to the patent claims during the prosecu-
tion of the reissue application. In addition, any new claims 
added in the reissue application should be completely 
underlined. 

1455	Allowance and Issue

"BLUE SLIP"

In all reissue applications prepared for issue, the patent 
number of the original patent which is being reissued 
should be placed in the box provided therefor below the 
box for the applicant's name on the blue Issue Classifica-
tion Slip (form PTO-270). Otherwise, the Issue Classifica-
tion Slip is prepared in the same manner as for a non-
reissue application.

For 09/ series applications, the patent number of the 
original patent which is being reissued should be placed on 
the face of the file wrapper above the box "PREPARED 
AND APPROVED FOR ISSUE" just after "(Exr. Initials)" 
in the line reading "SURRENDER OF ORIGINAL 
PATENT________(Exr. Initials)."

CHANGES TO THE ORIGINAL PATENT

The specifications of reissue patents will be printed in 
such a manner as to show the changes over the original 
patent text by enclosing any material omitted by the reissue 
in heavy brackets [ ] and printing material added by 
the reissue in italics. 37 CFR 1.173 (see MPEP ? 1411) 
requires the specification of a reissue application to be pre-
sented in a specified form, specifically designed to facili-
tate this different manner of printing, as well as for other 
reasons. 

The printed reissue patent specification will carry the 
following heading, which will be added by the Publishing 
Division of the Office of Patent Publication:

"Matter enclosed in heavy brackets [ ] appears in the original 
patent but forms no part of this reissue specification; matter 
printed in italics indicates the additions made by reissue."

The examiners should see that the specification is in 
proper form for printing. Examiners should carefully check 
the entry of all amendments to ensure that the changes 
directed by applicant will be accurately printed in any reis-
sue patent that may ultimately issue. Matter appearing in 
the original patent which is omitted by reissue should be 
enclosed in heavy brackets, while matter added by reissue 
should be underlined. 

Any material added by amendment in the reissue appli-
cation which is later canceled should be crossed through, 
and not bracketed. Material cancelled from the original 
patent should be enclosed in brackets, and not lined 
through.

All the claims of the original patent should appear in the 
reissue patent, with canceled patent claims being enclosed 
in brackets.

CLAIM NUMBERING

No renumbering of the original patent claims is permit-
ted, even if the dependency of a dependent patent claim is 
changed by reissue so that it is to be dependent on a subse-
quent higher numbered claim.

When a dependent claim in a reissue application depends 
upon a claim which has been canceled, and the dependent 
claim is not thereafter made dependent upon a pending 
claim, such a dependent claim must be rewritten in inde-
pendent form.

New claims added during the prosecution of the reissue 
application should follow the number of the highest num-
bered patent claim and should be completely underlined to 
indicate they are to be printed in italics. Often, as a result of 
the prosecution and examination, some new claims are can-
celed while other new claims remain. When the reissue is 
allowed, any claims remaining which are additional to the 
patent claims (i.e., claims added via the reissue) should be 
renumbered in sequence starting with the number next 
higher than the number of claims in the original patent. 
Therefore, the number of claims allowed will not necessar-
ily correspond to the number of the last claim in the reissue 
application, as allowed.

CLAIM DESIGNATED FOR PRINTING

At least one claim of an allowable reissue application 
must be designated for printing in the Official Gazette. 
Whenever at least one claim has been amended or added in 
the reissue, the claim (claims) designated must be (or 
include) a claim which has been changed or added by the 
reissue. A canceled claim is not to be designated as the 
claim for the Official Gazette.

If there is no change in the claims of the allowable reis-
sue application (i.e., they are the same as the claims of the 
original patent) or, if the only change in the claims is the 
cancellation of claims, then the most representative pend-
ing allowed claim is designated for printing in the Official 
Gazette.

PROVIDING PROPER FORMAT

Where a reissue application has not been prepared in the 
above-indicated manner, the examiner may request from 
the applicant a clean copy of the reissue specification pre-
pared in the indicated form. However, if the deletions from 
the original patent are small, the reissue application can be 
prepared for issue by putting the bracketed inserts at the 
appropriate places and suitably numbering the added 
claims. 

PARENT APPLICATION DATA

All parent application data on the front face of the origi-
nal patent file wrapper should be placed on the front face of 
the reissue file wrapper, if it is still proper.

It sometimes happens that the reissue is a continuation of 
another reissue application, and there is also original-patent 
parent application data. The examiner should ensure that 
the parent application data on the original patent is properly 
combined with the parent application data of the reissue, in 
the text of the specification and on the front face of the reis-
sue file wrapper. The combined statement as to parent 
application data should be checked carefully for proper 
bracketing and underlining.

REFERENCES CITED AND PRINTED

The list of references to be printed in the reissue patent 
should include both the references cited during the original 
prosecution as well as the references cited during the prose-
cution of the reissue application. A patent cannot be reis-
sued solely for the purpose of adding citations of additional 
prior art.

TRANSFER OF DRAWINGS

Where there are no formal drawings in the reissue appli-
cation, the examiner should carefully inspect the reissue 
file for the presence of a request by applicant to transfer the 
drawings from the patent to the reissue application. If the 
request is present, the drawings should be transferred at the 
time of allowance, with the appropriate transfer notation 
being made on the patent file and the reissue file. See  
MPEP ? 1413.

EXAMINER'S AMENDMENT AND SUPPLEMEN-
TAL DECLARATION

When it is necessary to amend the reissue application in 
order to place the application in condition for allowance, 
the examiner may:

(A)	request that applicant provide the amendments 
(e.g., by facsimile transmission or by hand-carry); or 

(B)	make the amendments, with the applicant's 
approval, by a formal examiner's amendment.

If the changes are made by a formal examiner's amend-
ment, the entire paragraph(s) or claim(s) being amended 
must be presented in rewritten form for any deletions or 
additions (other than the cancellation of a claim or deletion 
of a paragraph, where instructions to delete the entire para-
graph or claim would be sufficient).  See  MPEP ? 1453. 
An examiner's amendment must comply with 37 CFR 
1.121(b) in the same manner as an amendment submitted 
by applicant must comply with  37 CFR 1.121(b). Even 
where the amendments to the claims or specification are 
minor in nature, the examiner's amendment must present 
the entire claim(s) or the entire paragraph(s) being 
amended in rewritten form for any deletions or additions.

If it is necessary to amend a claim or the specification in 
order to correct an "error" under 35 U.S.C. 251 and thereby 
place the application in condition for allowance, then a sup-
plemental oath or declaration will be required. See  MPEP 
? 1444. The examiner should telephone applicant and 
request the supplemental oath or declaration, which must 
be filed before the application can be counted as an allow-
ance.

1456	Reissue Review

All reissue applications are monitored and reviewed in 
the Examining Groups by the Office of the Special Pro-
gram Examiner (includes SPRE, paralegal or other techni-
cal support who might be assigned as backup) at several 
stages during the prosecution.  In order to ensure that 
SPREs are aware of the reissue applications in their groups, 
a pair of terminal-specific PALM flags have been created 
which must be set by the SPRE before certain PALM trans-
actions can be completed.  First, when a new reissue appli-
cation enters the Examining Group, a PALM flag must be 
set at a SPRE PALM terminal before a docketing transac-
tion will be accepted.  By having to set this first flag, the 
SPRE is made aware of the assignment of the reissue appli-
cation to the Group and can take steps, as may be appropri-
ate, to instruct the examiner on reissue-specific procedures 
before the examination process begins, as well as through-
out the period that the examiner is handling the reissue 
application.  Further, a second PALM flag must be set at a 
SPRE PALM terminal before a Notice of Allowance can be 
generated or the PALM transaction for an issue revision can 
be entered, thereby ensuring that the SPRE is made aware 
of when the reissue application is being allowed so that the 
SPRE may be able to conduct a final review of the reissue 
application, if appropriate.

After leaving the Examining Groups, all reissue applica-
tions go through a screening process which is currently per-
formed in the Special Program Law Office. The screening 
process which includes review of the reissue oath or decla-
ration for compliance with 37 CFR 1.175, review of the 
presentation and entry of reissue amendments for compli-
ance with  37 CFR 1.121(b), and review of other matters to 
ensure adherence to current reissue practices. A patentabil-
ity review is made in a sample of reissue applications by 
the Office of Patent Quality Review. The screening process 
and the patentability review are appropriate vehicles for 
correcting errors, identifying problem areas and recogniz-
ing trends, providing information on the uniformity of prac-
tice, and providing feedback to the Examining Groups.

1460	Effect of Reissue 

35 U.S.C. 252.  Effect of reissue.

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 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 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 sub-
stantial 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.

The effect of the reissue of a patent is stated in 35 U.S.C. 
252. With respect to the Office treatment of the reissued 
patent, the reissued patent will be viewed as if the original 
patent had been originally granted in the amended form 
provided by the reissue.

1480	Certificates of Correction - Office 
Mistake

35 U.S.C. 254.  Certificate of correction of Patent and Trademark 
Office mistake.

Whenever a mistake in a patent, incurred through the fault of the Patent 
and Trademark Office, is clearly disclosed by the records of the Office, the 
Commissioner may issue a certificate of correction stating the fact and 
nature of such mistake, under seal, without charge, to be recorded in the 
records of patents. A printed copy thereof shall be attached to each printed 
copy of the patent, and such certificate shall be considered as part of the 
original patent. Every such patent, together with such certificate, 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 issued in such cor-
rected form. The Commissioner may issue a corrected patent without 
charge in lieu of and with like effect as a certificate of correction. 

37 CFR 1.322.  Certificate of correction of Office mistake.

(a) A certificate of correction under  35 U.S.C. 254 may be issued at 
the request of the patentee or the patentee's assignee. Such certificate will 
not be issued at the request or suggestion of anyone not owning an interest 
in the patent, nor on motion of the Office, without first notifying the paten-
tee (including any assignee of record) and affording the patentee an oppor-
tunity to be heard. When the request relates to a patent involved in an 
interference, the request shall comply with the requirements of this section 
and shall be accompanied by a motion under ? 1.635.

(b) If the nature of the mistake on the part of the Office is such that a 
certificate of correction is deemed inappropriate in form, the Commis-
sioner may issue a corrected patent in lieu thereof as a more appropriate 
form for certificate of correction, without expense to the patentee.

Mistakes incurred through the fault of the Office are the 
subject of Certificates of Correction under  37 CFR 1.322. 
If such mistakes are of such a nature that the meaning 
intended is obvious from the context, the Office may 
decline to issue a certificate and merely place the corre-
spondence in the patented file, where it serves to call atten-
tion to the matter in case any question as to it arises.

Letters which merely call attention to errors in patents, 
with a request that the letter be made of record in the pat-
ented file, will not be acknowledged.

In order to expedite all proper requests, a Certificate of 
Correction should be requested only for errors of conse-
quence. Instead of a request for a Certificate of Correction, 
letters making errors of record should be utilized whenever 
possible.

Each issue of the Official Gazette (patents section) 
numerically lists all United States patents having Certifi-
cates of Correction. The list appears under the heading 
"Certificates of Correction for the week of (date)." 

1481	Applicant's Mistake [R-1]

35 U.S.C. 255.  Certificate of correction of applicant's mistake.

Whenever a mistake of a clerical or typographical nature, or of minor 
character, which was not the fault of the Patent and Trademark Office, 
appears in a patent and a showing has been made that such mistake 
occurred in good faith, the Commissioner may, upon payment of the 
required fee, issue a certificate of correction, if the correction does not 
involve such changes in the patent as would constitute new matter or 
would require re-examination. Such patent, together with the certificate, 
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 issued in such 
corrected form.

37 CFR 1.323.  Certificate of correction of applicant's mistake.

Whenever a mistake of a clerical or typographical nature or of minor 
character which was not the fault of the Office, appears in a patent and a 
showing is made that such mistake occurred in good faith, the Commis-
sioner may, upon payment of the fee set forth in ? 1.20(a), issue a certifi-
cate, if the correction does not involve such changes in the patent as would 
constitute new matter or would require reexamination. A request for a cer-
tificate of correction of a patent involved in an interference shall comply 
with the requirements of this section and shall be accompanied by a 
motion under ? 1.635.

37 CFR 1.323 relates to the issuance of Certificates of 
Correction for the correction of errors which were not the 
fault of the Office.  Mistakes in a patent which are not cor-
rectable by Certificate of Correction may be correctable via 
filing a reissue application (see  MPEP ? 1401 -  ? 1460).

In re Arnott, 19 USPQ2d 1049, 1052 (Comm'r Pat. 
1991) specifies the criteria of  35 U.S.C. 255 (for a certifi-
cate of correction) as follows:

Two separate statutory requirements must be met before a cer-
tificate of correction for an applicant's mistake may issue. The 
first statutory requirement concerns the nature, i.e., type, of the 
mistake for which a correction is sought.  The mistake must be:

(1)	 of a clerical nature,

(2) 	of a typographical nature, or

(3) 	a mistake of minor character.

The second statutory requirement concerns the nature of the 
proposed correction.  The correction must not involve changes 
which would:

(1) 	constitute new matter or

(2) 	require reexamination.

If the above is not satisfied, then reissue must be used. Usu-
ally, any mistake affecting claim scope must be corrected 
by reissue.

A mistake is not considered to be of the "minor" charac-
ter required for the issuance of a Certificate of Correction if 
the requested change would materially affect the scope or 
meaning of the patent.  See also  MPEP ? 1412.04 as to cor-
rection of inventorship via certificate of correction or reis-
sue.

The fee for providing a correction of applicant's mistake, 
other than inventorship, is set forth in  37 CFR 1.20(a). The 
fee for correction of inventorship is set forth in 37 CFR 
1.20(b).

CORRECTION OF ASSIGNEES' NAMES

The Issue Fee Transmittal Form portion (PTOL-85B) of 
the Notice of Allowance provides a space (item 3) for 
assignment data which should be completed in order to 
comply with 37 CFR 3.81. Unless an assignee's name 
and address are identified in the appropriate space 
for specifying the assignee, (i.e., item 3 of the Issue Fee 
Transmittal Form PTOL-85B), the patent will issue to the 
applicant. Assignment data printed on the patent will be 
based solely on the information so supplied.

A request for a certificate of correction under 37 CFR 
1.323 arising from incomplete or erroneous assignee's 
name furnished in item 3 of PTOL-85B will not be granted 
unless a petition under 37 CFR 1.183 has been granted. 
Any such petition under 37 CFR 1.183 should be directed 
to the Office of Petitions and should include: 

(A)	the petition fee required by  37 CFR 1.17(h); 

(B)	a request that  37 CFR 3.81(a) be waived to permit 
the correct name of the assignee to be provided after issu-
ance of the patent; 

(C)	a statement that the failure to include the correct 
assignee name on the PTOL-85B was inadvertent; and 

(D)	a copy of the Notice of Recordation of Assign-
ment Document.

CORRECTION OF INVENTORS' NAMES

35 U.S.C. 256.  Correction of named inventor.

Whenever through error a person is named in an issued patent as the 
inventor, or through error an inventor is not named in an issued patent and 
such error arose without any deceptive intention on his part, the Commis-
sioner may, on application of all the parties and assignees, with proof of 
the facts and such other requirements as may be imposed, issue a certifi-
cate correcting such error.

The error of omitting inventors or naming persons who are not inven-
tors shall not invalidate the patent in which such error occurred if it can be 
corrected as provided in this section. The court before which such matter 
is called in question may order correction of the patent on notice and hear-
ing of all parties concerned and the Commissioner shall issue a certificate 
accordingly.

In requesting the Office to effectuate a court order cor-
recting inventorship in a patent pursuant to  35 U.S.C. 256, 
a copy of the court order and a certificate of correction 
under  37 CFR 1.323 should be submitted to the Certifi-
cates of Corrections Branch.

37 CFR 1.324.  Correction of inventorship in patent.

(a)	Whenever through error a person is named in an issued patent as 
the inventor, or through error an inventor is not named in an issued patent 
and such error arose without any deceptive intention on his or her part, the 
Commissioner may, on petition, or on order of a court before which such 
matter is called in question, issue a certificate naming only the actual 
inventor or inventors. A petition to correct inventorship of a patent 
involved in an interference must comply with the requirements of this sec-
tion and must be accompanied by a motion under ? 1.634.

(b)	Any petition pursuant to paragraph (a) of this section must be 
accompanied by:

(1)	A statement from each person who is being added as an 
inventor and from each person who is being deleted as an inventor that the 
inventorship error occurred without any deceptive intention on his or her 
part;

(2)	A statement from the current named inventors who have not 
submitted a statement under paragraph (b)(1) of this section either agree-
ing to the change of inventorship or stating that they have no disagreement 
in regard to the requested change;

(3)	A statement from all assignees of the parties submitting a 
statement under paragraphs (b)(1) and (b)(2) of this section agreeing to the 
change of inventorship in the patent, which statement must comply with 
the requirements of ? 3.73(b) of this chapter; and

(4)	The fee set forth in ? 1.20(b).

The petition to correct inventorship under  37 CFR 1.324 
must include the statements and fee required by  37 CFR 
1.324(b).

Under  37 CFR 1.324(b)(1), a statement is required from 
each person who is being added as an inventor, and each 
person who is being deleted as an inventor, that the inven-
torship error occurred without any deceptive intention on 
their part. In order to satisfy this, a statement such as the 
following is sufficient:

"The inventorship error of failing to include John Smith as an 
inventor of the patent occurred without any deceptive intention 
on the part of the applicant."

Nothing more is required. The examiner will determine 
only whether the statement contains the required language; 
the examiner will not make any comment as to whether or 
not it appears that there was in fact deceptive intention (see  
MPEP ? 2022.05).

Under  37 CFR 1.324(b)(2), all other inventors who did 
not submit a statement under 37 CFR 1.324(b)(1) must sub-
mit a statement either agreeing to the change of inventor-
ship, or stating that they have no disagreement with regard 
to the requested change. These "other" inventors need not 
make a statement as to whether the inventorship error 
occurred without deceptive intention.

Under  37 CFR 1.324(b)(3), a statement is required from 
the assignee(s) of the patent agreeing to the change of 
inventorship in the patent. The statement must comply with 
the requirements of  37 CFR 3.73(b). See MPEP ? 324 as to 
compliance with the requirements of  37 CFR 3.73(b).

While a petition under  37 CFR 1.48(a) is appropriate to 
request correction of inventorship in a nonprovisional 
application, a petition under  37 CFR 1.324 is the appropri-
ate vehicle to correct inventorship in a patent. If a petition 
under  37 CFR 1.48(a) is inadvertently filed in a patent, the 
petition may be treated as a petition under  37 CFR 1.324, 
and if it is grantable, form paragraph 10.14 set forth below 
should be used.

Unlike correction of inventorship in a nonprovisional 
application under  37 CFR 1.48(a), where the requirement 
for a statement by each originally named inventor may be 
waived pursuant to  37 CFR 1.183, any correction of inven-
torship in a patent under  37 CFR 1.324 requires petition of 
all the parties, i.e., originally named inventors and assign-
ees, in accordance with statute (35 U.S.C. 256) and thus the 
requirement cannot be waived. Correction of inventorship 
requests under  37 CFR 1.324 should be directed to the 
Supervisory Patent Examiner whose unit handles the sub-
ject matter of the patent. Form paragraphs 10.13 through 
10.18 may be used.

?  10.13 Petition Under 37 CFR 1.324, Granted

Paper No. [1]

In re Patent No. [2]		:

Issue Date: [3]		:  DECISION    

Appl. No.: [4]		:  GRANTING

Filed: [5]		: PETITION 

For:   [6]		: 37 CFR 1.324

This is a decision on the petition filed   [7] to correct inventorship 
under  37 CFR 1.324.

The petition is granted.

The patented file is being forwarded to Certificate of Corrections 
Branch for issuance of a certificate naming only the actual inventor or 
inventors.

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Patent Examining Group [10]

[11]

Examiner Note:

1.	Petitions to correct inventorship of an issued patent are decided by 
the Supervisory Patent Examiner, as set forth in the Commissioner's mem-
orandum dated June 2, 1989.

2.	In bracket 11, insert the correspondence address of record.

3.	This form paragraph is printed with the PTO letterhead.

4.	Prepare Certificate using form paragraph 10.15.

?  10.14 Treatment of 37 CFR 1.48 Petition Under 37 CFR 1.324, 
Granted

Paper No. [1]

In re Patent No. [2]		:

Issue Date: [3]		:   DECISION 

Appl. No.: [4]		:   GRANTING   

Filed: [5]		: PETITION

For:   [6]		:  37 CFR  1.324

This is a decision on the petition under  37 CFR 1.48, filed   [7].  In 
view of the fact that the patent has already issued, the petition has been 
treated as a petition to correct inventorship under  37 CFR 1.324.

The petition is granted.

The patented file is being forwarded to Certificate of Corrections 
Branch for issuance of a certificate naming only the actual inventor or 
inventors.

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Patent Examining Group [10]

[11]

Examiner Note:

1.	Petitions to correct inventorship of an issued patent are decided by 
the Supervisory Patent Examiner, as set forth in the Commissioner's mem-
orandum dated June 2, 1989.

2.	This form paragraph is printed with the PTO letterhead.

3.	Prepare Certificate using form paragraph 10.15.

4.	In bracket 11, insert the correspondence address of record.

?  10.15 Memorandum - Certificate of Correction

DATE:    [1]

TO:  **>Certificates of Correction Branch<

FROM: [2], SPE, Art Unit   [3]

SUBJECT: Request for Certificate of Correction 

Please issue a Certificate of Correction in U. S. Letters Patent No. [4] 
as specified on the attached Certificate.

______________________

[5], SPE

Art Unit [6]

UNITED STATES PATENT AND TRADEMARK OFFICE CERTIF-
ICATE

Patent No. [7]

Patented: [8] 

On petition requesting issuance of a certificate for correction of inven-
torship pursuant to  35 U.S.C. 256, it has been found that the above identi-
fied patent, through error and without deceptive intent, improperly sets 
forth the inventorship.  Accordingly, it is hereby certified that the correct 
inventorship of this patent is:

[9]

_________________________

[10], *>Supervisory Patent Examiner<

Art Unit [11]

Examiner Note:

1.	In bracket 9, insert the full name and residence (City, State) of each 
actual inventor.

2.	This is an internal memo, not to be mailed to applicant, which 
accompanies the patented file to Certificates of *>Correction< Branch as 
noted in form paragraphs 10.13 and 10.14.

3.	In brackets 5 and 10, insert name of SPE; in brackets 6 and 11 the 
Art Unit and sign above each line.

4.	Two separate pages of PTO letterhead will be printed when using 
this form paragraph.

?  10.16 Petition Under 37 CFR 1.324, Dismissed

Paper No. [1]

In re Patent No. [2]		:

Issue Date: [3]		:   DECISION 

Appl. No.: [4]		: DISMISSING 

Filed: [5]		: PETITION 

For:   [6]		: 37 CFR 1.324

This is a decision on the petition filed   [7] to correct inventorship 
under  37 CFR 1.324.

The petition is dismissed.

A petition to correct inventorship as provided by  37 CFR 1.324 
requires (1) a statement from each person who is being added as an inven-
tor and from each person who is being deleted as an inventor that the 
inventorship error occurred without any deceptive intention on their part, 
(2) a statement from the current named inventors who have not submitted 
a statement as per "(1)" either agreeing to the change of inventorship or 
stating that they have no disagreement in regard to the requested change, 
(3) a statement from all assignees of the parties submitting a statement 
under "(1)" and "(2)" agreeing to the change of inventorship in the patent; 
such statement must comply with the requirements of  37 CFR 3.73(b); 
and (4) the fee set forth in  37 CFR 1.20(b).  This petition lacks item(s) [8].

_______________________

[9]

Supervisory Patent Examiner,

Art Unit [10],

Patent Examining Group [11]

[12]

Examiner Note:

1.	If each of the four specified items has been submitted but one or 
more is insufficient, the petition should be denied.  See paragraph 10.17.  
However, if the above noted deficiency can be cured by the submission of 
a renewed petition, a dismissal would be appropriate.

2.	If the petition includes a request for suspension of the rules (37 CFR 
1.183) of one or more provisions of  37 CFR 1.324 that are required by the 
statute (35 U.S.C. 256), form paragraph 10.18 should follow this para-
graph.

3.	In bracket 8, pluralize as necessary and insert the item number(s) 
which are missing.

4.	In bracket 12, insert correspondence address of record.

5.	This form paragraph is printed with the PTO letterhead.

?  10.17 Petition Under 37 CFR 1.324, Denied

Paper No. [1]

In re Patent No. [2]	:

Issue Date: [3]	:  DECISION DENYING PETITION

Appl. No.: [4]	:  37 CFR  1.324

Filed: [5]	:

For:   [6]	:

This is a decision on the petition filed   [7] to correct inventorship 
under  37 CFR 1.324.

The petition is denied.

[8]

_______________________  

[9]

Supervisory Patent Examiner,

Art Unit [10],

Patent Examining Group [11]

[12]

Examiner Note:

1.	In bracket 8, a full explanation of the deficiency must be provided.

2.	If the petition lacks one or more of the required parts set forth in  37 
CFR 1.324, it should be dismissed using paragraph 10.14 or 7.99, rather 
than being denied.

3.	In bracket 12, insert correspondence address of record.

4.	This form paragraph is printed with the PTO letterhead.

?  10.18 Waiver of Requirements of 37 CFR 1.324 Under 37 CFR 
1.183, Dismissed

Suspension of the rules under  37 CFR 1.183 may be granted for any 
requirement of the regulations which is not a requirement of the statutes.  
In this instance,  35 U.S.C. 256 requires  [1].  Accordingly, the petition 
under  37 CFR 1.183 is dismissed as moot.

Examiner Note:

1.	This paragraph should follow paragraph 10.16 whenever the 
petition requests waiver of one or more of the provisions of  37 
CFR 1.324 that are also requirements of  35 U.S.C. 256.

2.	If the petition requests waiver of requirements of  37 CFR 
1.324 that are not specific requirements of the statute (i.e., the fee 
or the oath or declaration by all inventors), the application must be 
forwarded to a petitions examiner in the Office of the Deputy Assis-
tant Commissioner for Patent Policy and Projects  for decision.

CORRECTION TO PERFECT CLAIM FOR 35 U.S.C. 
119 (a)-(d) BENEFITS

See  MPEP ? *>201.16< for a discussion of when  
35 U.S.C. 119 (a)-(d) benefits can be perfected by certifi-
cate of correction.

CORRECTION AS TO 35 U.S.C. 120 AND 35 U.S.C. 
119(e) BENEFITS

37 CFR 1.78.  Claiming benefit of earlier filing date and cross-
references to other applications. 

(a)(1)	A nonprovisional application may claim an invention disclosed 
in one or more prior filed copending nonprovisional applications or 
copending international applications designating the United States of 
America.  In order for a nonprovisional application to claim the benefit of 
a prior filed copending nonprovisional application or copending interna-
tional application designating the United States of America, each prior 
application must name as an inventor at least one inventor named in the 
later filed nonprovisional application and disclose the named inventor's 
invention claimed in at least one claim of the later filed nonprovisional 
application in the manner provided by the first paragraph of  35 U.S.C. 
112.  In addition, each prior application must be:

(i)	An international application entitled to a filing date in accor-
dance with PCT Article 11 and designating the United States of America; 
or

(ii)	Complete as set forth in ? 1.51(b); or

(iii)	Entitled to a filing date as set forth in ? 1.53(b) or  ? 1.53(d) 
and include the basic filing fee set forth in ? 1.16; or

(iv)	Entitled to a filing date as set forth in ? 1.53(b) and have 
paid therein the processing and retention fee set forth in ? 1.21(l) within 
the time period set forth in ? 1.53(f).

(2)	Except for a continued prosecution application filed under 
? 1.53(d), any nonprovisional application claiming the benefit of one or 
more prior filed copending nonprovisional applications or international 
applications designating the United States of America must contain or be 
amended to contain in the first sentence of the specification following the 
title a reference to each such prior application, identifying it by application 
number (consisting of the series code and serial number) or international 
application number and international filing date and indicating the rela-
tionship of the applications. The request for a continued prosecution appli-
cation under ? 1.53(d) is the specific reference required by  35 U.S.C. 120 
to the prior application. The identification of an application by application 
number under this section is the specific reference required by  35 U.S.C. 
120 to every application assigned that application number. Cross-refer-
ences to other related applications may be made when appropriate (see 
? 1.14(a)).

(3)	A nonprovisional application other than for a design patent 
may claim an invention disclosed in one or more prior filed copending 
provisional applications. Since a provisional application can be pending 
for no more than twelve months, the last day of pendency may occur on a 
Saturday, Sunday, or Federal holiday within the District of Columbia 
which for copendency would require the nonprovisional application to be 
filed on or prior to the Saturday, Sunday, or Federal holiday.  In order for a 
nonprovisional application to claim the benefit of one or more prior filed 
copending provisional applications, each prior provisional application 
must name as an inventor at least one inventor named in the later filed 
nonprovisional application and disclose the named inventor's invention 
claimed in at least one claim of the later filed nonprovisional application 
in the manner provided by the first paragraph of  35 U.S.C. 112.  In addi-
tion, each prior provisional application must be:

(i)	Complete as set forth in ? 1.51(c); or

(ii)	Entitled to a filing date as set forth in ? 1.53(c) and 
include the basic filing fee set forth in ? 1.16(k).

(4)	Any nonprovisional application claiming the benefit of one 
or more prior filed copending provisional applications must contain or be 
amended to contain in the first sentence of the specification following the 
title a reference to each such prior provisional application, identifying it as 
a provisional application, and including the provisional application num-
ber (consisting of series code and serial number).

*****

Under certain conditions as specified below, a certificate 
of correction can be used, with respect to 35 U.S.C. 120 
and 119(e) priority, to correct:

(A)	the failure to make reference to a prior copending 
application pursuant to  37 CFR 1.78(a)(2) and (a)(4); or

(B)	an incorrect reference to a prior copending appli-
cation pursuant to  37 CFR 1.78(a)(2) and (a)(4).

For all situations other than where priority is based upon  
35 U.S.C. 365(c), the conditions are as follows:

(A)	for  35 U.S.C. 120 priority, all requirements set 
forth in  37 CFR 1.78(a)(1) must have been met in the 
application which became the patent to be corrected;

(B)	for  35 U.S.C. 119(e) priority, all requirements set 
forth in  37 CFR 1.78(a)(3) must have been met in the 
application which became the patent to be corrected;

(C)	the prior copending application to be added via the 
certificate of correction must be identified elsewhere (other 
than the first sentence of the specification following the 
title) in the application papers; and

(D)	it must be clear from the record of the patent and 
the parent application(s) that priority is appropriate.

Where  35 U.S.C. 120 and 365(c) priority based on an 
international application is to be asserted or corrected in a 
patent via a certificate of correction, the following condi-
tions must be satisfied:

(A)	all requirements set forth in  37 CFR 1.78(a)(1) 
must have been met in the application which became the 
patent to be corrected;

(B)	the prior copending application to be added via the 
certificate of correction must be identified in the applica-
tion papers other than in the first sentence of the specifica-
tion following the title and other than in a claim under  
35 U.S.C. 119(a)-(d)>;<

(C)	it must be clear from the record of the patent and 
the parent application(s) that priority is appropriate; and

(D)	the patentee must submit with the request for the 
certificate copies of documentation showing designation of 
states and any other information needed to make it clear 
from the record that the  35 U.S.C. 120 priority is appropri-
ate. See  MPEP ? 201.13(b) as to the requirements for 
35 U.S.C. 120 priority based on an international applica-
tion.

If all the above-stated conditions are satisfied, a certifi-
cate of correction can be used to amend the patent to make 
reference to a prior copending application, or to correct an 
incorrect reference to the prior copending application. Note 
In re Schuurs, 218 USPQ 443 (Comm'r Pat. 1983) which 
suggests that a certificate of correction is an appropriate 
remedy for correcting, in a patent, reference to a prior 
copending application. Also, note In re Lambrech, 202 
USPQ 620 (Comm'r Pat. 1976), citing In re Van Esdonk, 
187 USPQ 671 (Comm'r Pat. 1975). 

If any of the above-stated conditions is not satisfied, the 
filing of a reissue application (see  MPEP ? 1401 -  ? 1460) 
would be appropriate to pursue the desired correction of the 
patent.

1485	Handling of Request for Certificates 
of Correction [R-1]

A request for a certificate of correction should be 
addressed to the attention of the Certificate of Correction 
Branch, Assistant Commissioner for Patents, Washington, 
DC 20231. Requests for certificates of correction will be 
forwarded to the Certificate of Correction Branch of the 
Office of Patent Publication, where they will be listed in a 
permanent record book.

If the patent is involved in an interference, a certificate 
of correction under  37 CFR 1.324 will not be issued unless 
a corresponding motion under  37 CFR 1.634 has been 
granted by the administrative patent judge. ** Otherwise, 
determination as to whether an error has been made, the 
responsibility for the error, if any, and whether the error is 
of such a nature as to justify the issuance of a certificate of 
correction will be made by the Certificate of Correction 
Branch. If a report is necessary in making such determina-
tion, the case will be forwarded to the appropriate group 
with a request that the report be furnished. If no certificate 
is to issue, the party making the request is so notified and 
the request, report, if any, and copy of the communication 
to the person making the request are placed in the file and 
entered thereon under "Contents" by the Certificate of Cor-
rection Branch. The case is then returned to the patented 
files. If a certificate is to issue, it will be prepared and for-
warded to the person making the request by the Office of 
Patent Publication. In that case, the request, the report, if 
any, and a copy of the letter transmitting the certificate of 
correction to the person making the request will be placed 
in the file and entered thereon under "Contents".

Applicants, or their attorneys or agents, are urged to sub-
mit the text of the correction on a special Certificate of Cor-
rection form, PTO-1050, which can serve as the camera 
copy for use in direct offset printing of the certificate of 
correction. Form PTO/SB/44 may also be used.  Both parts 
of form PTO-1050 must accompany the request since the 
second part will be placed in the application file for internal 
use.

A perforated space at the bottom of form PTO-1050 has 
been provided for the patentee's current mailing address, 
and for ordering any desired additional copies of the 
printed certificate. The fee for each additional copy ordered 
is set forth in  37 CFR 1.19(a)(1). The fee should accom-
pany the request.

Where only a part of a request can be approved, or where 
the Office discovers and includes additional corrections, 
the appropriate alterations are made on the form PTO-1050 
by the Office. The patentee is notified of the changes on the 
Notification of Approval-in-part form PTOL-404. The cer-
tificate is issued approximately 6 weeks thereafter.

Form PTO-1050 (or PTO/SB/44) should be used exclu-
sively regardless of the length or complexity of the subject 
matter. Intricate chemical formulas or page of specification 
or drawings may be reproduced and mounted on a blank 
copy of PTO-1050. Failure to use the form has frequently 
delayed issuance since the text must be retyped by the 
Office onto a PTO-1050.

The exact page and line number where the errors occur 
in the application file should be identified on the request. 
However, on form PTO-1050, only the column and line 
number in the printed patent should be used.

The patent grant should be retained by the patentee. The 
Office does not attach the Certificate of Correction to pat-
entee's copy of the patent. The patent grant will be returned 
to the patentee if submitted.

Below is a sample form illustrating a variety of correc-
tions and the suggested manner of setting out the format. 
Particular attention is directed to:

(A)	Identification of the exact point of error by refer-
ence to column and line number of the printed patent or to 
claim number and line where a claim is involved.

(B)	Conservation of space on the form by typing sin-
gle space, beginning two lines down from the printed mes-
sage.

(C)	Starting the correction to each separate column as 
a sentence, and using semicolons to separate corrections 
within said column, where possible.

(D)	Two-inch space left blank at bottom of the last 
sheet for signature of attesting officer.

(E)	Use of quotation marks to enclose the exact sub-
ject matter to be deleted or corrected; use of double 
hyphens (-- --) to enclose subject matter to be added, except 
for formulas.

(F)	Where a formula is involved, setting out only that 
portion thereof which is to be corrected or, if necessary, 
pasting a photocopy onto form PTO-1050.

The examiner's comments are requested on form PTO-
306 where, under  37 CFR 1.323, there is a question involv-
ing change in subject matter.

UNITED STATES PATENT AND TRADEMARK OFFICE 
CERTIFICATE OF CORRECTION

       

 Patent No. - - - - -		Dated April 1, 1969

    

James W. Worth

    

It is certified that error appears in the above-identified patent 
and that said Letters Patent is hereby corrected as shown below:

    

In the drawings, Sheet 3, Fig. 3, the reference numeral 225 
should be applied to the plate element attached to the support 
member 207. Column 7, lines 45 to 49, the left-hand formula 
should appear as follows:



Formula XXXVII, that portion of the formula reading "-
CH2CH-" should read - -CHCH- -.  Column 2, line 68 and 
column 3, lines 3, 8 and 13, for  the claim reference numeral "2", 
each occurrence, should read -1-. Column 10, line 16, cancel 
beginning with "12.  A sensor device" to and including  "tive 
strips."  in column 11, line 8, and insert the following claim:

       

12.	A control circuit of the character set forth in claim 1 and 
for an automobile having a convertible t p, and including; means 
for moving said top between raised and lowered retracted posi-
tion; and control means responsive to said sensor relay for ener-
gizing the top moving means for moving said top from retract ed 
position to raised position. 

1490	Disclaimers [R-1]

35 U.S.C. 253.  Disclaimer.

Whenever, without any deceptive intention, a claim of a patent is 
invalid the remaining claims shall not thereby be rendered invalid. A pat-
entee, whether of the whole or any sectional interest therein, may, on pay-
ment of the fee required by law, make disclaimer of any complete claim, 
stating therein the extent of his interest in such patent. Such disclaimer 
shall be in writing, and recorded in the Patent and Trademark Office; and 
it shall thereafter be considered as part of the original patent to the extent 
of the interest possessed by the disclaimant and by those claiming under 
him.

In like manner any patentee or applicant may disclaim or dedicate to 
the public the entire term, or any terminal part of the term, of the patent 
granted or to be granted.

37 CFR 1.321.  Statutory disclaimers, including terminal 
disclaimers.

(a)	A patentee owning the whole or any sectional interest in a patent 
may disclaim any complete claim or claims in a patent. In like manner any 
patentee may disclaim or dedicate to the public the entire term, or any ter-
minal part of the term, of the patent granted. Such disclaimer is binding 
upon the grantee and its successors or assigns. A notice of the disclaimer 
is published in the Official Gazette and attached to the printed copies of 
the specification.  The disclaimer, to be recorded in the Patent and Trade-
mark Office, must:

(1)	be signed by the patentee, or an attorney or agent of record;

(2)	identify the patent and complete claim or claims, or term 
being disclaimed. A disclaimer which is not a disclaimer of a complete 
claim or claims, or term, will be refused recordation;

(3)	state the present extent of patentee's ownership interest in the 
patent; and 

(4)	be accompanied by the fee set forth in ? 1.20(d).

(b)	An applicant or assignee may disclaim or dedicate to the public 
the entire term, or any terminal part of the term, of a patent to be granted. 
Such terminal disclaimer is binding upon the grantee and its successors or 
assigns. The terminal disclaimer, to be recorded in the Patent and Trade-
mark Office, must:

(1)	be signed:

(i)	by the applicant, or

(ii)	if there is an assignee of record of an undivided part 
interest, by the applicant and such assignee, or 

(iii)	if there is an assignee of record of the entire interest, by 
such assignee, or 

(iv)	by an attorney or agent of record;

(2)	specify the portion of the term of the patent being dis-
claimed;

(3)	state the present extent of applicant's or assignee's ownership 
interest in the patent to be granted; and 

(4)	be accompanied by the fee set forth in ? 1.20(d).

(c)	A terminal disclaimer, when filed to obviate a judicially created 
double patenting rejection in a patent application or in a reexamination 
proceeding, must:

(1)	Comply with the provisions of paragraphs (b)(2) through 
(b)(4) of this section;

(2)	Be signed in accordance with paragraph (b)(1) of this section 
if filed in a patent application or in accordance with paragraph (a)(1) of 
this section if filed in a reexamination proceeding; and 

(3)	Include a provision that any patent granted on that applica-
tion or any patent subject to the reexamination proceeding shall be 
enforceable only for and during such period that said patent is commonly 
owned with the application or patent which formed the basis for the rejec-
tion.

A disclaimer is a statement filed by an owner (in part or 
in entirety) of a patent or of a patent to be granted (i.e., an 
application), in which said owner relinquishes certain legal 
rights to the patent. There are two types of disclaimers:  a 
statutory disclaimer and a terminal disclaimer. The owner 
of a patent or an application is the original inventor(s) or 
the assignee of the original inventor(s). The patent or appli-
cation is assigned by one assignment or by multiple assign-
ments which establish a chain of title from the inventor(s) 
to the assignee(s). The owner of the patent or application 
can sign a disclaimer, and a person empowered to sign the 
disclaimer can also sign it. Per 37 CFR 1.321(b)(1)(iv), an 
attorney or agent of record is permitted to sign the dis-
claimer. For a disclaimer to be accepted, it must be signed 
by the proper party as follows:

(A)	A disclaimer filed in an application must be 
signed by either

(1)	the applicant where the application has not been 
assigned, 

(2)	the applicant and the assignee where each owns 
a part interest in the application, 

(3)	the assignee where assignee owns the entire 
interest in the application, or

(4)	an attorney or agent of record.

(B)	A disclaimer filed in a patent or a reexamination 
proceeding must be signed by either

(1)	the patentee (the assignee, the inventor(s) if the 
patent is not assigned, or the assignee and the inventors if 
the patent is assigned-in-part), or

(2)	an attorney or agent of record.

(C)	Where the assignee (of an application or of a 
patent being reexamined or to be reissued) signs the dis-
claimer, there is a requirement to comply with  37 CFR 
3.73(b) in order to satisfy  37 CFR 1.321, unless an attor-
ney or agent of record signs the disclaimer. In order to com-
ply with  37 CFR 3.73(b), the assignee's ownership interest 
must be established by:

(1)	filing in the application or patent evidence of a 
chain of title from the original owner to the assignee, or

(2)	specifying in the record of the application or 
patent where such evidence is recorded in the Office (e.g., 
reel and frame number, etc.). 

The submission with respect to  37 CFR 3.73(b) to 
establish ownership must be signed by a party authorized to 
act on behalf of the assignee. See also  MPEP ? 324 as to 
compliance with  37 CFR 3.73(b). A copy of the "Certifi-
cate Under 37 CFR 3.73 (b)," which is reproduced in  
MPEP ? 324, may be sent by the examiner to applicant to 
provide an acceptable way to comply with the requirements 
of  37 CFR 3.73 (b). 

(D)	Where the attorney or agent of record signs the 
disclaimer, there is no need to comply with 37 CFR 
3.73(b).

(E)	The signature on the disclaimer need not be an 
original signature. Pursuant to  37 CFR 1.4(d)(2), the sub-
mitted disclaimer can be a copy, such as a photocopy or 
facsimile transmission of an original disclaimer.

STATUTORY DISCLAIMERS

Under  37 CFR 1.321(a) the owner of a patent may dis-
claim a complete claim or claims of his patent. This may 
result from a lawsuit or because he has reason to believe 
that the claim or claims are too broad or otherwise invalid. 
If the patent is involved in an interference, see  **>37 CFR 
1.662(c)<.

TERMINAL DISCLAIMERS

37 CFR 1.321(a) also provides for the filing by an appli-
cant or patentee of a terminal disclaimer which disclaims or 
dedicates to the public the entire term or any portion of the 
term of a patent or patent to be granted.

37 CFR 1.321(c) specifically provides for the filing of a 
terminal disclaimer in an application or a reexamination 
proceeding for the purpose of overcoming a judicially cre-
ated double patenting rejection.  See  MPEP ? 804.02.

PROCESSING

The Certificates of Corrections Branch is responsible for 
the handling of all statutory disclaimers filed under the first 
paragraph of  35 U.S.C. 253, whether the case is pending or 
patented, and all terminal disclaimers (filed under the sec-
ond paragraph of  35 U.S.C. 253) except for those filed in 
an application pending in an Examining Group. This 
involves:

(A)	Determining compliance with  35 U.S.C. 253 and  
37 CFR 1.321 and 3.73;

(B)	Notifying applicant or patentee when the dis-
claimer is informal and thus not acceptable;

(C)	Recording the disclaimers; and

(D)	Providing the disclaimer data for printing.

TERMINAL DISCLAIMER IN PENDING APPLICA-
TION PRACTICE

Where a terminal disclaimer is filed in an application 
pending in an Examining Group, it will be processed by the 
paralegal of the Office of the Special Program Examiner of 
the Examining Group having responsibility for the applica-
tion. The paralegal will:

(A)	Determine compliance with 35 U.S.C. 253 and 
37 CFR 1.321 and 3.73;

(B)	Notify the examiner having charge of the applica-
tion whether the terminal disclaimer is acceptable or not;

(C)	Where the terminal disclaimer is not acceptable, 
indicate the nature of the informalities so that the examiner 
can inform applicant in the next Office action;

(D)	Where the terminal disclaimer is acceptable, 
record the terminal disclaimer; and

(E)	Where the terminal disclaimer is acceptable, pro-
vide the appropriate terminal disclaimer data for printing.

The paralegal will identify a terminal disclaimer as being 
present in an application by:

(A)	Attaching a green label to the file wrapper;

(B)	Stamping a notice on the file of the term which 
has been disclaimed;

(C)	Endorsing the paper containing the terminal dis-
claimer submission on the "Contents" flap of the applica-
tion file; and

(D)	Entering the terminal disclaimer into the PALM 
system records, for the application.

The Group's paralegal completes a Terminal Disclaimer 
Informal Memo to notify the examiner of the nature of any 
informalities in the terminal disclaimer. The examiner 
should notify the applicant of the informalities in the next 
Office action, or by interview with applicant if such will 
expedite prosecution of the application. Further, the exam-
iner should initial and date the Terminal Disclaimer Infor-
mal Memo and return it to the paralegal to indicate that the 
examiner has appropriately notified applicant about the ter-
minal disclaimer, and so that the Terminal Disclaimer 
Informal Memo may be discarded.

PTO Form Terminal Disclaimer Informal Memo

Since the claims of pending applications are subject to 
cancellation, amendment, or renumbering, a terminal dis-
claimer directed to a particular claim or claims will not be 
accepted; the disclaimer must be of a terminal portion of 
the term of the entire patent to be granted. The statute does 
not provide for conditional disclaimers and accordingly, a 
proposed disclaimer which is made contingent on the 
allowance of certain claims cannot be accepted. The dis-
claimer should identify the disclaimant and his or her inter-
est in the application and should specify the date when the 
disclaimer is to become effective.

A terminal disclaimer filed to obviate a double patenting 
rejection is effective only with respect to the application 
identified in the disclaimer unless by its terms it extends to 
continuing applications. For example, a terminal disclaimer 
filed in a parent application normally has no effect on a 
continuing application claiming filing date benefits of the 
parent application under  35 U.S.C. 120. A terminal dis-
claimer filed in a parent application to obviate a double pat-
enting rejection does, however, carry over to a continued 
prosecution application (CPA) filed under  37 CFR 1.53(d). 
The terminal disclaimer filed in the parent application car-
ries over because the CPA retains the same application 
number as the parent application, i.e., the application num-
ber to which the previously filed terminal disclaimer is 
directed. If applicant does not want the terminal disclaimer 
to carry over to the CPA, applicant must file a petition 
under  37 CFR 1.182 along with the required petition fee, 
requesting the terminal disclaimer filed in the parent appli-
cation not be carried over to the CPA; see below "With-
drawing a Terminal Disclaimer" (paragraph "A. Before 
Issuance of Patent"). If two (or more) pending applications 
are filed, in each of which a rejection of one claimed inven-
tion over the other on the ground of obviousness-type dou-
ble patenting is proper, the rejection will be made in each 
application. An appropriate terminal disclaimer must be 
filed in each application. This is because a terminal dis-
claimer filed to obviate a double patenting rejection is 
effective only with respect to the application identified in 
the disclaimer. Moreover, the filing of an appropriate termi-
nal disclaimer in each application will prevent a potential 
improper timewise extension of patent rights in the last 
application to be issued.

The following form paragraphs may be used to inform 
the applicant (or patent owner) of the status of a submitted 
terminal disclaimer.

?  14.23 Terminal Disclaimer Proper

The terminal disclaimer filed on [1] disclaiming the terminal portion of 
any patent granted on this application which would extend beyond the 
expiration date of   [2] has been reviewed and is accepted.  The terminal 
disclaimer has been recorded.

Examiner Note:

1.	In bracket 1, insert the date the terminal disclaimer was filed.

2.	In bracket 2, list the Patent Number and/or Application Number 
(including series code and serial no.) preceded by the phrase --any patent 
granted on Application Number--.

3.	If an assignment is submitted to support the terminal disclaimer, also 
use form paragraph 14.34 to suggest that the assignment be separately 
submitted for recording in the Office.

4.	See  MPEP ? 1490 for discussion of requirements for a proper termi-
nal disclaimer.

5.	Use form paragraph 14.23.01 for reexamination proceedings.	

6.	For improper terminal disclaimers, see the form paragraphs which 
follow.

?  14.23.01 Terminal Disclaimer Proper (Reexamination Only)

The terminal disclaimer filed on [1] disclaiming the terminal portion of 
the patent being reexamined which would extend beyond the expiration 
date of   [2] has been reviewed and is accepted.  The terminal disclaimer 
has been recorded.

Examiner Note:

1.	In bracket 1, insert the date the terminal disclaimer was filed.

2.	In bracket 2, list the Patent Number and/or Application Number 
(including series code and serial no.) preceded by the phrase --any patent 
granted on Application Number--.

3.	If an assignment is submitted to support the terminal disclaimer, also 
use 14.34 to suggest that the assignment be separately submitted for 
recording in the Office.

4.	See  MPEP ? 1490 for discussion of requirements for a proper termi-
nal disclaimer.

5.	For improper terminal disclaimers, see the form paragraphs which 
follow.

?  14.24 Terminal Disclaimer Not Proper - Introductory 
Paragraph

The terminal disclaimer filed on   [1] disclaiming the terminal portion 
of any patent granted on this application which would extend beyond the 
expiration date of [2] has been reviewed and is NOT accepted.

Examiner Note:

1.	In bracket 1, insert the date the terminal disclaimer was filed.

2.	In bracket 2, list the Patent Number and/or Application Number 
(including series code and serial no.) preceded by the phrase --any patent 
granted on Application Number--.

3.	One or more of the appropriate form paragraphs 14.26 to 14.32 
MUST follow this form paragraph to indicate why the terminal disclaimer 
is not accepted.

4.	Form paragraph 14.33 includes the full text of rule  37 CFR 3.73 and 
may be included in the Office action when deemed appropriate.

5.	Form paragraph 14.35 may be used to inform applicant that an addi-
tional disclaimer fee will not be required for the submission of a replace-
ment or supplemental terminal disclaimer.

6.	Do not use in reexamination proceedings, use form paragraph 14.25 
instead.

?  14.25 Terminal Disclaimer Not Proper - Introductory 
Paragraph (Reexamination Only)

The terminal disclaimer filed on  [1] disclaiming the terminal portion 
of the patent being reexamined which would extend beyond the expiration 
date of [2] has been reviewed and is NOT accepted.

Examiner Note:

1.	In bracket 1, insert the date the terminal disclaimer was filed.

2.	In bracket 2, list the Patent Number and/or the Application Number 
(including series code and serial no.) preceded by the phrase --any patent 
granted on Application Number--.

3.	One or more of the appropriate form paragraphs 14.26 to 14.32 
MUST follow this form paragraph to indicate why the terminal disclaimer 
is not accepted.

4.	Form paragraph 14.33 includes the full text of rule 37 CFR 3.73 and 
may be included in the Office action when deemed appropriate.

5.	Form paragraph 14.35 may be used to inform applicant that an addi-
tional disclaimer fee will not be required for the submission of a replace-
ment or supplemental terminal disclaimer.

?  14.26 Does Not Comply With 37 CFR 1.321(b) and/or (c) "Sub-
Heading" Only

The terminal disclaimer does not comply with  37 CFR 1.321(b) and/or 
(c) because: 

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 and followed by one or more of the appropriate form paragraphs 
14.26.01 to 14.27.03.

?  14.26.01 Extent of Interest Not Stated

The person who has signed the disclaimer has not stated the extent of 
his/her interest, or the business entity's interest, in the application/patent.  
See  37 CFR  1.321(b)(3).

Examiner Note:

This form paragraph MUST be preceded by form paragraphs 14.24 or 
14.25 AND 14.26.

?  14.26.02 Directed to Particular Claim(s)

It is directed to a particular claim or claims, which is not acceptable, 
since "the disclaimer must be of a terminal portion of the term of the entire 
[patent or] patent to be granted."  See  MPEP ? 1490.

Examiner Note:

This form paragraph MUST be preceded by form paragraphs 14.24 or 
14.25 AND 14.26.

?  14.26.03 Not Signed

The terminal disclaimer was not signed.

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 AND 14.26.

?  14.26.04 Application/Patent Not Identified

The application/patent being disclaimed has not been identified.

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 AND 14.26.

?  14.26.05 Application/Patent Improperly Identified

The application/patent being disclaimed has been improperly identified 
since the number used to identify the [1] being disclaimed is incorrect.  
The correct number is [2].

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 AND 14.26.

2.	In bracket 1, insert --application-- or --patent--.

3.	In bracket 2, insert the correct Application Number (including series 
code and serial no.) or the correct Patent Number being disclaimed.

4.	A terminal disclaimer is acceptable if it includes the correct Patent 
Number or the correct Application Number or the serial number together 
with the proper filing date or the proper series code. 

?  14.26.06 Not Signed by All Owners

It was not signed by all owners and, therefore, supplemental terminal 
disclaimers are required from the remaining owners.

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 AND 14.26.

?  14.26.07 No Disclaimer Fee Submitted

The disclaimer fee of $  [1] in accordance with 37 CFR 1.20(d) has not 
been submitted, nor is there any authorization in the application file to 
charge a specified Deposit Account.

Examiner Note:

1.	In bracket 1, insert the fee for a disclaimer.

2.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 AND 14.26.  If the disclaimer fee was paid for a terminal dis-
claimer which was not accepted, applicant does not have to pay another 
disclaimer fee when submitting a replacement or supplemental terminal 
disclaimer, and this paragraph should not be used.

?  14.27.01 Lacks Clause of Enforceable Only During Period of 
Common Ownership

It does not include a recitation that any patent granted shall be enforce-
able only for and during such period that said patent is commonly owned 
with the application(s) or patent(s) which formed the basis for the double 
patenting rejection.  See  37 CFR 1.321(c)(3).

Examiner Note:

This form paragraph MUST be preceded by form paragraphs 14.24 or 
14.25 AND 14.26.

?  14.27.02 Fails To Disclaim Terminal Portion of Any Patent 
Granted On Subject Application

It fails to disclaim the terminal portion of any patent granted on the 
subject application.

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 AND 14.26.

2.	Use this form paragraph when the period disclaimed is not the cor-
rect period or when no period is specified at all.

3.	When using this form paragraph, give an example of proper terminal 
disclaimer language using form paragraph 14.27.04 following this or the 
series of statements concerning the defective terminal disclaimer.

?  14.27.03 Fails To Disclaim Terminal Portion of Subject Patent

It fails to disclaim the terminal portion of the subject patent.

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 AND 14.26.

2.	Use this paragraph in a reissue application or reexamination pro-
ceeding when the period disclaimed is not the correct period or when no 
period is specified at all.

3.	When using this form paragraph, give an example of proper terminal 
disclaimer language using form paragraph 14.27.05 (for reissue) or form 
paragraph 14.27.06 (for reexamination proceeding) following this or the 
series of statements concerning the defective terminal disclaimer.

?  14.27.04 Examples of Acceptable Terminal Disclaimer 
Language in Patent To Be Granted 

Examples of acceptable language for making the disclaimer of the ter-
minal portion of any patent granted on the subject application follow:

I. If a Provisional Obviousness-Type Double Patenting Rejec-
tion Over A Pending Application was made, use:

Petitioner hereby disclaims, except as provided below, the ter-
minal part of any patent granted on the instant application, which 
would extend beyond the expiration date of any patent granted on 
Application No. ___/__________, filed on _________, as short-
ened by any terminal disclaimer.  Petitioner hereby agrees that any 
patent so granted on the instant application shall be enforceable 
only for and during such period that it and any patent granted on the 
above-listed application are commonly owned.  This agreement 
runs with any patent granted on the instant application and is bind-
ing upon the grantee, its successors, or assigns.

II. If an Obviousness-Type Double Patenting Rejection Over A 
Prior Patent was made, use:

Petitioner hereby disclaims, except as provided below, the ter-
minal part of any patent granted on the instant application, which 
would extend beyond the expiration date of  Patent No. 
____________, as presently shortened by any terminal disclaimer.  
Petitioner hereby agrees that any patent so granted on the instant 
application shall be enforceable only for and during such period 
that it and the above listed patent are commonly owned.  This 
agreement runs with any patent granted on the instant application 
and is binding upon the grantee, its successors, or assigns.

?  14.27.05 Examples of Acceptable Terminal Disclaimer 
Language in An Existing Patent

Examples of acceptable language for making the disclaimer of the ter-
minal portion of the subject patent follow:

I. If a Provisional Obviousness-Type Double Patenting Rejec-
tion Over A Pending Application was made, use:

Petitioner hereby disclaims, except as provided below, the ter-
minal part of any patent granted on the instant application, which 
would extend beyond the expiration date of any patent granted on 
Application No. ____/_________, filed on ________, as shortened 
by any terminal disclaimer.  Petitioner hereby agrees that any patent 
so granted on the instant application shall be enforceable only for 
and during such period that it and any patent granted on the above-
listed application are commonly owned.  This agreement runs with 
any patent granted on the instant application and is binding upon 
the grantee, its successors, or assigns.

II.	If an Obviousness-Type Double Patenting Rejection Over A 
Prior Patent was made, use:

Petitioner hereby disclaims, except as provided below, the terminal 
part of any patent granted on the instant application, which would 
extend beyond the expiration date of Patent No. _________, as 
presently shortened by any terminal disclaimer.  Petitioner hereby 
agrees that any patent so granted on the instant application shall be 
enforceable only for and during such period that it and the above 
listed patent are commonly owned.  This agreement runs with any 
patent granted on the instant application and is binding upon the 
grantee, its successors, or assigns.

?  14.27.06 Examples of Acceptable Terminal Disclaimer 
Language in Patent (Reexamination Situation)

Examples of acceptable language for making the disclaimer of the ter-
minal portion of the patent being reexamined follow:

I.	If a Provisional Obviousness-Type Double Patenting Rejec-
tion Over A Pending Application was made, use:

Petitioner hereby disclaims, except as provided below, the ter-
minal part of the patent being reexamined, which would extend 
beyond the expiration date of any patent granted on Application 
No. ___/________, filed on _______, as shortened by any terminal 
disclaimer.  Petitioner hereby agrees that the patent being reexam-
ined shall be enforceable only for and during such period that it and 
any patent granted on the above-listed application are commonly 
owned.  This agreement runs with any reexamination certificate 
issued on the instant patent and is binding upon the grantee, its suc-
cessors, or assigns.

II.	If an Obviousness-Type Double Patenting Rejection Over A 
Prior Patent was made, use:

Petitioner hereby disclaims, except as provided below, the ter-
minal part of the patent being reexamined, which would extend 
beyond the expiration date of  Patent No. __________, as presently 
shortened by any terminal disclaimer.  Petitioner hereby agrees that 
the patent for which a reexamination certificate is issued as a result 
of this proceeding shall be enforceable only for and during such 
period that it and the above listed patent are commonly owned.  
This agreement runs with any reexamination certificate issued on 
the instant patent and is binding upon the grantee, its successors, or 
assigns. 

?  14.28 Failure To State Capacity To Sign

The person who signed the terminal disclaimer has failed to state his/
her capacity to sign for the corporation or other business entity, and he/she 
has not been established as being authorized to act on behalf of the 
assignee.

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
OR 14.25 and 14.26.

?  14.29 Not Recognized as Officer of Assignee - "Sub-Heading" 
Only

The person who signed the terminal disclaimer is not recognized as an 
officer of the assignee, and he/she has not been established as being autho-
rized to act on behalf of the assignee.  See  MPEP ? 324.

Examiner Note:

1.	This form paragraph is to be used when the person signing the termi-
nal disclaimer is not an authorized officer as defined in  MPEP ? 324.

2.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 and followed by form paragraphs 14.29.01 and/or 14.29.02 when 
appropriate.  An attorney or agent of record is always authorized to sign 
the terminal disclaimer, even though there is no indication that he or she is 
an officer of the assignee.

3.	Use form paragraph 14.29.02 to explain how an official, other than a 
recognized officer, may properly execute a terminal disclaimer.  

?  14.29.01 Attorney/Agent Not of Record

An attorney or agent, not of record, is not authorized to sign a terminal 
disclaimer in the capacity as an attorney or agent acting in a representative 
capacity as provided by 37 CFR 1.34 (a).  See  37 CFR 1.321(b) and/
or (c).

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 AND 14.29.

2.	An attorney or agent, however, may sign a terminal disclaimer pro-
vided he/she is an attorney or agent of record or is established as an appro-
priate official of the assignee. To suggest to the attorney or agent, not of 
record,  how he/she may establish status as an appropriate official of the 
assignee to execute a terminal disclaimer, use form paragraph 14.29.02.

?  14.29.02 Criteria To Accept Terminal Disclaimer When Signed 
by a Non-Recognized Officer

It would be acceptable for a person, other than a recognized officer, to 
execute a terminal disclaimer, provided the record for the application 
includes a statement that the person is empowered to sign terminal dis-
claimers and/or act on behalf of the organization.

	Accordingly, a new terminal disclaimer which includes the above 
empowerment statement will be considered to be executed by an appropri-
ate official of the assignee. A separately filed paper referencing the previ-
ously filed terminal disclaimer and containing a proper empowerment 
statement would also be acceptable.

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25 AND 14.29.

2.	When form paragraph 14.29 is used to indicate that a terminal dis-
claimer is denied because it was not signed by a recognized officer nor by 
an attorney or agent of record, this form paragraph should be used to point 
out one way to correct the problem.

3.	While an indication of the person's title is desirable, its inclusion is 
not mandatory when this option is employed.

4.	A sample terminal disclaimer should be sent with the Office action.

?  14.30 No Evidence of Chain of Title to Assignee - Application

The assignee has not established its ownership interest in the applica-
tion, in order to support the terminal disclaimer. There is no submission in 
the record establishing the ownership interest by either (a) providing docu-
mentary evidence of a chain of title from the original inventor(s) to the 
assignee, or (b) specifying (by reel and frame number) where such docu-
mentary evidence is recorded in the Office (37 CFR 3.73(b)).

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25.

2.	Where an attorney or agent of record signs a terminal disclaimer, 
there is no need to provide a statement under  37 CFR 3.73(b).  Thus, this 
form paragraph should not be used.

3.	It should be noted that the documentary evidence or the specifying 
of reel and frame number may be found in the terminal disclaimer itself or 
in a separate paper.

?  14.30.01 No Evidence of Chain of Title to Assignee - Patent

The assignee has not established its ownership interest in the patent, in 
order to support the terminal disclaimer. There is no submission in the 
record establishing the ownership interest by either (a) providing docu-
mentary evidence of a chain of title from the original inventor(s) to the 
assignee, or (b) specifying (by reel and frame number) where such docu-
mentary evidence is recorded in the Office (37 CFR 3.73(b)).

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25.

2.	Where an attorney or agent of record signs a terminal disclaimer, 
there is no need to provide a statement under  37 CFR 3.73(b). Thus, this 
form paragraph should not be used.

3.	It should be noted that the documentary evidence or the specifying 
of reel and frame number may be found in the terminal disclaimer itself or 
in a separate paper in the application.

?  14.30.02 Evidence of Chain of Title to Assignee - Submission 
Not Signed by Appropriate Party - Terminal Disclaimer Is Thus 
Not Entered

The submission establishing the ownership interest of the assignee is 
informal. There is no indication of record that the party who signed the 
submission establishing the ownership interest is authorized to sign the 
submission  (37 CFR 3.73(b)).

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25.

2.	Where an attorney or agent of record signs a terminal disclaimer, 
there is no need to provide any statement under  37 CFR 3.73(b).  Thus, 
this form paragraph should not be used.

3.	This form paragraph should be followed by one of form paragraphs 
14.16.02 or 14.16.03. In rare situations where BOTH form paragraphs 
14.16.02 and 14.16.03 do not apply and thus cannot be used, the examiner 
should instead follow this form paragraph with a detailed statement of 
why the there is no authorization to sign. 

4.	Use form paragraph 14.16.06 to point out one way to correct the 
problem.

?  14.32 Application/Patent Which Forms Basis for Rejection Not 
Identified

The application/patent which forms the basis for the double patenting 
rejection is not identified in the terminal disclaimer.

Examiner Note:

1.	This form paragraph MUST be preceded by form paragraphs 14.24 
or 14.25.

2.	Use this form paragraph when no information is presented. If incor-
rect information is contained in the terminal disclaimer, use form para-
graphs 14.26 and 14.26.05.

?  14.33 37 CFR 3.73 - Establishing Right of Assignee To 
Prosecute

The following is a statement of  37 CFR 3.73, which became effective 
on September 4, 1992, and was revised to its present form in 1997:

37 CFR 3.73  Establishing right of assignee to prosecute.

(a) The inventor is presumed to be the owner of a patent applica-
tion, and any patent that may issue therefrom, unless there is an 
assignment.  The original applicant is presumed to be the owner of 
a trademark application unless there is an assignment.

(b) When an assignee seeks to take action in a matter before the 
Office with respect to a patent application, trademark application, 
patent, registration, or reexamination proceeding, the assignee must 
establish its ownership of the property to the satisfaction of the 
Commissioner. Ownership is established by submitting to the 
Office, in the Office file related to the matter in which action is 
sought to be taken, documentary evidence of a chain of title from 
the original owner to the assignee (e.g., copy of an executed assign-
ment submitted for recording or by specifying (e.g., reel and frame 
number) where such evidence is recorded in the Office. The sub-
mission establishing ownership must be signed by a party autho-
rized to act on behalf of the assignee.  Documents submitted to 
establish ownership may be required to be recorded as a condition 
to permitting the assignee to take action in a matter pending before 
the Office.

?  14.34 Suggestion To Record Assignment Submitted With 
Terminal Disclaimer

The assignment document filed on [1] is acceptable as the documen-
tary evidence required by  37 CFR 3.73.  If the assignment document is 
not already recorded with the Patent and Trademark Office, it is suggested 
that the assignment document be submitted for recording among the 
Office assignment records.  See  37 CFR 3.11 and  MPEP ? 302.

Examiner Note:

1.	In bracket 1, insert the date the assignment document was filed.

2.	This form paragraph should be used when an assignment document 
(an original, facsimile, or copy) is submitted for recording among the 
assignment records of the Office.

?  14.35 Disclaimer Fee Not Required Twice - Applicant

It should be noted that applicant is not required to pay another dis-
claimer fee as set forth in  37 CFR 1.20(d) when submitting a replacement 
or supplemental terminal disclaimer.

Examiner Note:

1.	This form paragraph can be used to notify an applicant that another 
disclaimer fee will not be required when a replacement or supplemental 
terminal disclaimer is submitted.

2.	Use form paragraph 14.35.01 for providing notification to patent 
owner, rather than an applicant.

?  14.35.01 Disclaimer Fee Not Required Twice - Patent Owner

It should be noted that patent owner is not required to pay another dis-
claimer fee as set forth in  37 CFR 1.20(d) when submitting a replacement 
or supplemental terminal disclaimer.

Examiner Note:

This form paragraph can be used to notify a patent owner that another 
disclaimer fee will not be required when a replacement or supplemental 
terminal disclaimer is submitted.

?  14.36 Suggestion That "Applicant" Request a Refund

Since the required fee for the terminal disclaimer was previously paid, 
applicant's payment of an additional terminal disclaimer fee is not 
required.  Applicant may request a refund of this additional terminal dis-
claimer fee by submitting a written request for a refund and a copy of this 
Office action to: Commissioner of Patents and Trademarks, Office of 
Finance, Washington, DC 20231.

Examiner Note:

1.	This form paragraph should be used to notify applicant that a refund 
can be obtained if another terminal disclaimer fee was paid when a 
replacement or supplemental terminal disclaimer was submitted.

2.	Note - If applicant has authorized or requested a fee refund to be 
credited to a specific Deposit Account, then an appropriate credit should 
be made to that Deposit Account and this paragraph should NOT be used.

3.	Use form paragraph 14.36.01 for providing notification to patent 
owner, rather than an applicant.

?  14.36.01 Suggestion That "Patent Owner" Request a Refund

Since the required fee for the terminal disclaimer was previously paid, 
patent owner's payment of an additional terminal disclaimer fee is not 
required.  Patent owner may request a refund of this additional terminal 
disclaimer fee by submitting a written request for a refund and a copy of 
this Office action to: Commissioner of Patents and Trademarks, Office of 
Finance, Washington, DC 20231.

Examiner Note:

1.	This form paragraph should be used to notify patent owner that a 
refund can be obtained if another terminal disclaimer fee was paid when a 
replacement or supplemental terminal disclaimer was submitted.

2.	Note - If patent owner has authorized or requested a fee refund to be 
credited to a specific Deposit Account, then an appropriate credit should 
be made to that Deposit Account and this paragraph should NOT be used.

?  14.37 Samples of a Terminal Disclaimer Over a Pending 
Application and Assignee Certificate Enclosed

Enclosed with this Office action is a sample terminal disclaimer which 
is effective to overcome a provisional obviousness-type double patenting 
rejection over a pending application (37 CFR 1.321(b) and (c)).

Also enclosed is a sample Certificate Under  37 CFR 3.73(b) which an 
assignee may use in order to ensure compliance with the rule.  Part A of 
the Certificate is used when there is a single assignment from the inven-
tor(s).  Part B of the Certificate is used when there is a chain of title.  The 
"Copies of assignments..."  box should be checked when the assignment 
document(s) (set forth in part A or part B ) is/are not recorded in the 
Office, and a copy of the assignment document(s) is/are attached.  When 
the "Copies of assignments..." box is checked, either the part A box or the 
part B box, as appropriate, must be checked, and the "Reel_____, 
Frame_____" entries should be left blank.  If the part B box is checked, 
and copies of assignments are not included, the "From:______ 
To:______" blank(s) must be filled in.  This certificate should be used the 
first time an assignee seeks to take action in an application under  37 CFR 
3.73(b), e.g., when signing a terminal disclaimer or a power of attorney.

Examiner Note:

1.	This form paragraph can be used to provide applicant samples of a 
terminal disclaimer which contains the necessary clauses to overcome a 
provisional obviousness-type double patenting rejection over a pending 
application and a Certificate to be signed by an assignee to ensure compli-
ance with  37 CFR 3.73(b).

2.	Note that the requirements for compliance with  37 CFR 3.73 (b) 
have been made more liberal, such that certain specifics of the sample cer-
tificate are no longer required. At present, in order to comply with  37 
CFR 3.73(b), the assignee's ownership interest must be established by (a) 
filing in the application or patent evidence of a chain of title from the orig-
inal owner to the assignee, or (b) specifying in the record of the applica-
tion or patent where such evidence is recorded in the Office (e.g., reel and 
frame number, etc.). The submission with respect to (a) and (b) to estab-
lish ownership must be signed by a party authorized to act on behalf of the 
assignee.

(See your Group Paralegal or Special Program Examiner for copies of the 
sample terminal disclaimer and Certificate to enclose with the Office 
action.  Alternatively, it is permissible to copy the sample terminal dis-
claimer found in  MPEP ? 1490 and the Sample Certificate found in  
MPEP ? 324.)

?  14.38 Samples of a Terminal Disclaimer Over a Prior Patent 
and Assignee Certificate Enclosed

Enclosed with this Office action is a sample terminal disclaimer which 
is effective to overcome an obviousness-type double patenting rejection 
over a prior patent (37 CFR 1.321(b) and (c)).

Also enclosed is a sample Certificate Under  37 CFR  3.73(b) which an 
assignee may use in order to ensure compliance with the rule. Part A of the 
Certificate is used when there is a single assignment from the inventor(s).  
Part B of the Certificate is used when there is a chain of title.  The "Copies 
of assignments..."  box should be checked when the assignment docu-
ment(s) (set forth in part A or part B ) is/are not recorded in the Office, and 
a copy of the assignment document(s) is/are attached.  When the "Copies 
of assignments..." box is checked, either the part A box or the part B box, 
as appropriate, must be checked, and the "Reel_____, Frame_____" 
entries should be left blank.  If the part B box is checked, and copies of 
assignments are not included, the "From:______ To:______" blank(s) 
must be filled in.  This certificate should be used the first time an assignee 
seeks to take action in an application under  37 CFR 3.73(b), e.g., when 
signing a terminal disclaimer or a power of attorney.

Examiner Note:

1.	This form paragraph can be used to provide applicant samples of a 
terminal disclaimer which contains the necessary clauses to overcome an   
obviousness-type double patenting rejection over a prior patent and a Cer-
tificate to be signed by an assignee to ensure compliance with 37 CFR 
3.73(b).

2.	Note that the requirements for compliance with 37 CFR 3.73 (b) 
have been made more liberal, such that certain specifics of the sample cer-
tificate are no longer required.  At present, in order to comply with  37 
CFR 3.73(b), the assignee's ownership interest must be established by (a) 
filing in the application or patent evidence of a chain of title from the orig-
inal owner to the assignee, or (b) specifying in the record of the applica-
tion or patent where such evidence is recorded in the Office (e.g., reel and 
frame number, etc.).  The submission with respect to (a) and (b) to estab-
lish ownership must be signed by a party authorized to act on behalf of the 
assignee.

(See your Group Paralegal or Special Program Examiner for copies of the 
sample terminal disclaimer and Certificate to enclose with the Office 
action. Alternatively, it is permissible to copy the sample terminal dis-
claimer found in MPEP ? 1490 and the Sample Certificate found in  
MPEP ? 324.)

?  14.39 Sample Assignee Certificate Under 37 CFR 3.73(b) 
Enclosed

Enclosed with this Office action is a sample Certificate under  37 CFR 
3.73(b) which an assignee may use in order to ensure compliance with the 
Rule.  Part A of the Certificate is used when there is a single assignment 
from the inventor(s).  Part B of the Certificate is used when there is a chain 
of title.  The "Copies of assignments..."  box should be checked when the 
assignment document(s) (set forth in part A or part B ) is/are not recorded 
in the Office, and a copy of the assignment document(s) is/are attached.  
When the "Copies of assignments..." box is checked, either the part A box 
or the part B box, as appropriate, must be checked, and the "Reel_____, 
Frame_____" entries should be left blank.  If the part B box is checked, 
and copies of assignments are not included, the "From:______ 
To:______" blank(s) must be filled in.  This certificate should be used the 
first time an assignee seeks to take action in an application under  37 CFR 
3.73(b).

Examiner Note:

1.	This form paragraph can be used to provide applicant a sample of a 
Certificate to be signed by an assignee to ensure compliance with  37 CFR 
3.73(b).

2.	Note that the requirements for compliance with  37 CFR 3.73 (b) 
have been made more liberal, such that certain specifics of the sample cer-
tificate are no longer required.  At present, in order to comply with  37 
CFR 3.73(b), the assignee's ownership interest must be established by (a) 
filing in the application or patent evidence of a chain of title from the orig-
inal owner to the assignee, or (b) specifying in the record of the applica-
tion or patent where such evidence is recorded in the Office (e.g., reel and 
frame number, etc.).  The submission with respect to (a) and (b) to estab-
lish ownership must be signed by a party authorized to act on behalf of the 
assignee.

(See your Group Paralegal or Special Program Examiner for copies of the 
sample terminal disclaimer and Certificate to enclose with the Office 
action.  Alternatively, it is permissible to copy the sample certificate found 
in  MPEP ? 324.)

WITHDRAWING A RECORDED TERMINAL  DIS-
CLAIMER 

If timely requested, a recorded terminal disclaimer may 
be withdrawn before the application in which it is filed 
issues as a patent, or in a reexamination proceeding before 
the reexamination certificate issues. After a patent or reex-
amination certificate issues, it is unlikely that a recorded 
terminal disclaimer will be nullified. 

A.	 Before Issuance Of Patent 

While the filing and recordation of an unnecessary ter-
minal disclaimer has been characterized as an "unhappy 
circumstance" in In re Jentoft, 392 F.2d 633, 157 USPQ 
363 (CCPA 1968), there is no statutory prohibition against 
nullifying or otherwise canceling the effect of a recorded 
terminal disclaimer which was erroneously filed before the 
patent issues. Since the terminal disclaimer would not take 
effect until the patent is granted, and the public has not had 
the opportunity to rely on the terminal disclaimer, relief 
from this unhappy circumstance may be available by way 
of petition or by refiling the application (other than by refil-
ing it as a CPA). 

Under appropriate circumstances, consistent with the 
orderly administration of the examination process, the nul-
lification of a recorded terminal disclaimer may be 
addressed by filing a petition under  37 CFR 1.182 request-
ing withdrawal of the recorded terminal disclaimer. Peti-
tions seeking to reopen the question of the propriety of the 
double patenting rejection that prompted the filing of the 
terminal disclaimer have not been favorably considered. 
The filing of a continuing application other than a CPA, 
while abandoning the application in which the terminal dis-
claimer has been filed, will typically nullify the effect of a 
terminal disclaimer. 

B.	After Issuance Of Patent 

The mechanisms to correct a patent - certificate of cor-
rection (35 U.S.C. 255), reissue (35 U.S.C. 251), and reex-
amination (35 U.S.C. 305) - are not available to withdraw 
or otherwise nullify the effect of a recorded terminal dis-
claimer. As a general principle, public policy does not favor 
the restoration to the patent owner of something that has 
been freely dedicated to the public, particularly where the 
public interest is not protected in some manner - e.g., 
intervening rights in the case of a reissue patent. See, e.g., 
Altoona Publix Theatres v. American Tri-Ergon Corp., 
294 U.S. 477, 24 USPQ 308 (1935). 

Certificates of correction (35 U.S.C. 255) are available 
for the correction of an applicant's mistake. The scope of 
this remedial provision is limited in two ways - by the 
nature of the mistake for which correction is sought and the 
nature of the proposed correction. In re Arnott, 19 USPQ2d 
1049 (Comm'r Pat. 1991). The nature of the mistake for 
which correction is sought is limited to those mistakes that 
are: 

(A)	of a clerical nature, 

(B)	of a typographical nature, or 

(C)	of a minor character. 

The nature of the proposed correction is limited to those 
situations where the correction does not involve changes 
which would: 

(A)	constitute new matter, or 

(B)	require reexamination. 

A mistake in filing a terminal disclaimer does not fall 
within any of the categories of mistake for which a certifi-
cate of correction of applicant's mistake is permissible, and 
any attempt to remove or nullify the effect of the terminal 
disclaimer would typically require reexamination of the cir-
cumstances under which it was filed. 

Although the remedial nature of reissue (35 U.S.C. 251) 
is well recognized, reissue is not available to correct all 
errors. It has been the Office position that reissue is not 
available to withdraw or otherwise nullify the effect of a 
terminal disclaimer recorded in an issued patent. First, the 
reissue statute only authorizes the Commissioner to reissue 
a patent "for the unexpired part of the term of the original 
patent." Since the granting of a reissue patent without the 
effect of a recorded terminal disclaimer would result in 
extending the term of the original patent, reissue under 
these circumstances would be contrary to the statute. Sec-
ond, the principle against recapturing something that has 
been intentionally dedicated to the public dates back to 
Leggett v. Avery, 101 U.S. 256 (1879). The attempt to 
restore that portion of the patent term that was dedicated to 
the public to secure the grant of the original patent would 
be contrary to this recapture principle. Finally, applicants 
have the opportunity to challenge the need for a terminal 
disclaimer during the prosecution of the application that 
issues as a patent. "Reissue is not a substitute for Patent 
Office appeal procedures." Ball Corp. v. United States, 
729 F.2d 1429, 1435, 221 USPQ 289, 293 (Fed. Cir. 1984). 
Where applicants did not challenge the propriety of the 
examiner's obvious-type double patenting rejection, but 
filed a terminal disclaimer to avoid the rejection, the filing 
of the terminal disclaimer did not constitute error within the 
meaning of  35 U.S.C. 251. Ex parte Anthony, 230 USPQ 
467 (Bd. App. 1982), aff'd, No. 84-1357 (Fed. Cir. June 14, 
1985). 

Finally, the nullification of a recorded terminal dis-
claimer would not be appropriate in a reexamination pro-
ceeding. There is a prohibition (35 U.S.C. 305) against 
enlarging the scope of a claim during a reexamination pro-
ceeding. As noted by the Board in   Anthony, supra, if a ter-
minal disclaimer was nullified, "claims would be able to be 
sued upon for a longer period than would the claims of the 
original patent. Therefore, the vertical scope, as opposed to 
the horizontal scope (where the subject matter is enlarged), 
would be enlarged."

Form PTO/SB/43. Disclaimer in Patent

Form PTO/SB/25. Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection Over a Pending Second Application

Form PTO/SB/26. Terminal Disclaimer to Obviate a Double Patenting Rejection Over a Prior Patent