MPEP § 1451 — MPEP § 1451
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1400 

 Section 1451 
 

 
 
 
 
 
 1451 Divisional Reissue Applications; Continuation Reissue Applications
 Where the Parent is Pending [R-01.2024]
 

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

 *****

 
 (b) MULTIPLE REISSUED PATENTS - The Director 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 Issuance of multiple reissue patents. 

 
 (a) The Office may reissue a patent as multiple reissue patents. If
 applicant files more than one application for the reissue of a single patent, each
 such application must contain or be amended to contain in the first sentence of
 the specification a notice stating that more than one reissue application has been
 filed and identifying each of the reissue applications by relationship,
 application number and filing date. The Office may correct by certificate of
 correction under § 1.322 any reissue patent resulting from an application to
 which this paragraph applies that does not contain the required notice.
 

 (b) If applicant files more than one application for the reissue of a
 single patent, each claim of the patent being reissued must be presented in each
 of the reissue applications as an amended, unamended, or canceled (shown in
 brackets) claim, with each such claim bearing the same number as in the patent
 being reissued. The same claim of the patent being reissued may not be presented
 in its original unamended form for examination in more than one of such multiple
 reissue applications. The numbering of any added claims in any of the multiple
 reissue applications must follow the number of the highest numbered original
 patent claim.
 

 (c) If any one of the several reissue applications by itself fails to
 correct an error in the original patent as required by 35 U.S.C.
 251 but is otherwise in condition for allowance, the Office
 may suspend action in the allowable application until all issues are resolved as
 to at least one of the remaining reissue applications. The Office may also merge
 two or more of the multiple reissue applications into a single reissue
 application. No reissue application containing only unamended patent claims and
 not correcting an error in the original patent will be passed to issue by
 itself.
 

 
 

 The court in In re Graff, 111 F.3d 874, 876-77, 42
 USPQ2d 1471, 1473 (Fed. Cir. 1997) stated that “[t]he statute does not prohibit divisional
 or continuation reissue applications, and does not place stricter limitations on such
 applications when they are presented by reissue, provided of course that the statutory
 requirements specific to reissue applications are met.” Following the decision in
 Graff , the Office has adopted a policy of treating continuations and
 divisionals of reissue applications, to the extent possible, in the same manner as
 continuations and divisionals of non-reissue applications.
 

 Nonetheless, the mere fact that the application purports to be a
 continuation or divisional of a parent reissue application does not make it a reissue
 application itself, since it is possible to file a 35 U.S.C. 111(a) continuing application
 of a reissue application. See In re Bauman, 683 F.2d 405, 409, 214 USPQ
 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application
 that obtains the benefit of the reissue application's filing date). 
 

 The filing of a regular continuation or divisional
 application (e.g., a Bauman type continuation or divisional application)
 has at least two significant effects. First, the claims in a Bauman type
 continuation or divisional application will not have the same effective U.S. filing date as
 the original patent. This is because a reissue application is necessarily filed after the
 patenting of the original application. Therefore, a Bauman type
 continuation or divisional application of the reissue application could not satisfy the
 copendency requirement of 35 U.S.C. 120 with respect to the
 original patent. See Bauman, 683 F.2d at 410, 214 USPQ at 590 (regular
 continuation of a reissue cannot claim benefit to the filing date of the original patent,
 but instead is limited to the filing date of the reissue); Conover v.
 Downs, 35 F.2d 59, 17 C.C.P.A. 587, 590-91 (C.C.P.A. 1929) (reissue
 continuation of a reissue cannot claim benefit to the filing date of the original patent,
 but instead is limited to the filing date of the reissue). At best, the earliest effective
 U.S. filing date would be the filing date of the first reissue application that the
 Bauman type continuation or divisional application is entitled to
 claim benefit to under 35 U.S.C. 120 . Second, a decision to file a Bauman
 type continuation or divisional application instead of a continuation or
 divisional reissue application results in the inability to file any subsequent reissues of
 the original patent once there are no pending applications for reissue of the original
 patent. See MPEP §
 1460 for more information about surrender when there are multiple
 reissue applications and the effect of a reissue patent on other related reissue
 applications.
 

 If filing a continuation reissue application as opposed to
 a Bauman type continuation application, there must be an identification,
 on filing, that the application is a continuation reissue application. Likewise, there must
 be an identification, on filing, that the application is a divisional reissue application,
 as opposed to a divisional of a reissue application. 
 

 If the application data sheet states, or the specification
 is amended to state, that the application is a 
 "continuation"
 
 
 or 
 "divisional"
 
 
 of its parent reissue application, the application may
 very well be treated as a Bauman type continuation or divisional
 application. The application data sheet should separately identify the application as (1) a
 continuation or divisional of the parent reissue application, and (2) a reissue of the
 original patent. For examples, see Reissue Filing Guide for Applications Filed
 on/after September 16, 2012 (posted at www.uspto.gov/sites/default/files/
 forms/uspto_reissue_ads_guide_Sept2014.pdf ). 
 

 In general, an application which is a continuing
 application of a reissue application will be considered a Bauman 
 application when there are no indicia on filing that a continuing reissue application is
 being filed. Indicia that a continuing reissue application is being filed are: 
 

 
 1. A 37 CFR 1.175 reissue
 oath/declaration, which is not merely a copy of the parent’s reissue
 oath/declaration. 
 

 2. A specification and/or claims in proper double column
 reissue format per 37 CFR 1.173 . 
 

 3. Amendments in proper format per 37 CFR 1.173 .
 
 

 4. A 37 CFR 3.73 statement of assignee
 ownership and consent by assignee. 
 

 5. A correct transmittal letter identifying the
 application as a reissue filing under 35 U.S.C. 251 . It is recommended
 that Form PTO/AIA/50 be used. 
 

 6. An identification of the application as being "a
 reissue continuation of application number [the parent reissue application]" or "a
 continuation of application number [the parent reissue application] and an
 application for reissue of patent number [the patent for which reissue is sought]" or
 equivalent language, rather than being "a continuation of reissue application number
 [the parent reissue application]."
 

 
 The following are hypothetical examples of acceptable
 identification in the first sentence(s) of the specification that provide the appropriate
 continuity language for a continuation or divisional reissue application (as opposed to a
 Bauman type non-reissue continuing application).
 

 
 Example 1: This application is a continuation reissue of
 application no. 99/123,456, which is an application for reissue of U.S. Patent No.
 99,234,567.
 

 

 
 Example 2: This application is a continuation reissue of
 application no. 99/123,456, which is an application for reissue of U.S. Patent No.
 99,234,567, now Re 999,999.
 

 

 
 Example 3: This application is a reissue continuation of
 application no. 99/123,456, which is an application for reissue of U.S. Patent No.
 99,234,567.
 

 

 
 Example 4: This application is a reissue divisional of
 application no. 99/123,456, which is an application for reissue of U.S. Patent No.
 99,234,567.
 

 

 
 Example 5: This is an application for reissue of U.S.
 Patent No. 99,234,567, and is a continuation of application no. 99/123,456, which is
 also an application for reissue of U.S. Patent No. 99,234,567.
 

 

 
 Example 6: This is an application for reissue of U.S.
 Patent No. 99,234,567, and is a divisional of application no. 99/123,456, which is also
 an application for reissue of U.S. Patent No. 99,234,567.
 

 

 
 Example 7: This is an application for reissue of U.S.
 Patent No. 99,234,567 and claims benefit under 35 U.S.C. 120 as a continuation of
 application no. 99/123,456, which is an application for reissue of U.S. Patent No.
 99,234,567.
 

 

 
 Example 8: This is an application for reissue of U.S.
 Patent No. 99,234,567 and claims benefit under 35 U.S.C. 120 as a continuation of
 application no. 99/123,456.
 

 

 
 Example 9: This is an application for reissue of U.S.
 Patent No. 99,234,567. This application claims benefit under 35 U.S.C. 120 as a
 continuation of application no. 99/123,456, which is an application for reissue of U.S.
 Patent No. 99,234,567.
 

 

 It is recommended that the first line of the specification
 still contain language set forth in the above examples to help ensure that the Office
 recognizes the application as a continuation reissue application or divisional reissue
 application (as opposed to a Bauman type non-reissue continuing
 application) even though the application data sheet contains the benefit claim(s).
 

 Questions relating to the propriety of divisional reissue applications and
 continuation reissue applications should be referred via the Technology Center (TC)
 Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist
 (SPRS).
 

 I. DIVISIONAL REISSUE APPLICATIONS Whenever a divisional reissue application is filed with
 a copy of the assignee consent and a copy of the oath/declaration from the parent
 reissue application, the copy of the assignee consent and the reissue oath/declaration
 should both be accepted by the Office of Patent Application Processing (OPAP) and the
 divisional reissue application accorded a filing date so long as all other filing
 requirements are met. See subsections I.A and I.B below for more information on the
 examiner’s review of the assignee consent and the oath/declaration.
 

 37
 CFR 1.176(b) permits the examiner to require restriction in a
 reissue application between the original claims of the patent and any newly added claims
 which are directed to a separate and distinct invention(s). See also
 MPEP §
 1450 . As a result of such a restriction requirement,
 divisional reissue applications may be filed for each of the inventions identified in
 the restriction requirement. 
 

 In addition, applicant may initiate a division of the claims by filing
 more than one reissue application in accordance with 37 CFR 1.177 . The multiple reissue
 applications which are filed may contain different groups of claims from among the
 original patent claims, or some of the reissue applications may contain newly added
 groups (not present in the original patent). There is no requirement that the claims of
 the multiple reissue applications be independent and distinct from one another; if they
 are not independent and distinct from one another, the examiner must apply the
 appropriate double patenting rejections.
 

 There is no requirement that a family of divisional reissue
 applications issue at the same time; however, it is required that they contain a cross
 reference to each other in the specification. 37 CFR 1.177(a) requires that all
 multiple reissue applications resulting from a single patent must include as the first
 sentence of their respective specifications a cross reference to the other reissue
 application(s). Accordingly, the first sentence of each reissue specification must
 provide notice stating that more than one reissue application has been filed, and it
 must identify each of the reissue applications and their relationship within the family
 of reissue applications, and to the original patent. An example of the suggested
 language to be inserted is as follows:
 

 Notice: More than one reissue application has been filed for the
 reissue of Patent No. 99,999,999. The reissue applications are application number
 99/999,994 (the present application); and application numbers 99/999,995 and 99/999,998,
 both of which are divisional reissues of Patent No. 99,999,999. 
 

 The examiner should object to the specification and require an
 appropriate amendment if applicant fails to include such a cross reference to the other
 reissue applications in the first sentence of the specification of each of the reissue
 applications.
 

 Where one of the divisional reissue applications of the family has
 issued without the required cross reference to the other reissue application(s), the
 examiner will refer the matter to their Supervisory Patent Examiner (SPE) or Supervisory
 Patent Reexamination Specialist (SPRS). The SPE or SPRS will initiate a certificate of
 correction under 37
 CFR 1.322 to include the appropriate cross reference in the
 already issued first reissue patent before passing the pending reissue application to
 issue. Form paragraph 10.19 may be used for such purpose. After the SPE or
 SPRS prepares the memorandum as per form paragraph 10.19 , the memorandum
 should be forwarded to the Certificates of Correction Branch for issuance of a
 certificate. The examiner should make a reference in the pending divisional reissue
 application to the fact that an actual request for a certificate of correction has been
 initiated in the first reissue patent pursuant to 37 CFR 1.177(a) , e.g., by an entry
 in the search notes or in an examiner’s amendment.
 

 ¶ 10.19 Memorandum - Certificate of Correction (Cross-Reference to Other
 Reissues in Family)
 

 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
 CERTIFICATE
 Patent No. [7] 

 Patented: [8] 

 The present reissue patent issued from
 an application that is one of a family of divisional reissue applications resulting from
 Patent No. [9]. The present reissue patent has issued without the cross reference
 to the other reissue application(s) of the family which is required pursuant to
 37 CFR
 1.177(a) . Accordingly, insert in the first sentence of the specification
 as follows: 
 

 Notice: More than one reissue
 application has been filed for the reissue of patent [9]. The reissue
 applications are [10] .
 

 
 _________________________
 

 [11], Supervisory Patent Examiner
 

 Art Unit [12] 

 Examiner Note:
 
 1 In bracket 9, insert the patent
 number of the patent for which multiple reissue divisional applications have been
 filed.
 

 2 This is an internal memo and
 must not be mailed to the applicant. This memo should accompany
 the patented file to the Certificates of Correction Branch as noted in form paragraphs
 10.13 and
 10.14 .
 

 3. In brackets 5 and 11, insert
 the name of SPE and provide the signature of the SPE above each line.
 

 4. In brackets 6 and 12, insert
 the Art Unit number.
 

 5. Two separate pages of USPTO
 letterhead will be printed when using this form paragraph.
 

 6. In bracket 10, identify each of
 the reissue applications (including the present application) and their relationship
 within the family of reissue applications, and to the original patent.
 
 
 

 In addition to the amendment to the first sentence of the
 specification, the reissue application cross references will also be reflected in the
 file. For an IFW reissue application file, a copy of the bibliographic data sheet from
 the IFW file history should be annotated by the examiner such that adequate notice is
 provided that more than one reissue application has been filed for a single original
 patent. The annotated sheet should be scanned into IFW. 
 

 Pursuant to 37 CFR 1.177(b) all of the claims of
 the patent to be reissued must be presented in each reissue application in some form,
 i.e., as amended, as unamended or as canceled. Further, any added claims must be
 numbered beginning with the next highest number following the last patent claim. It is
 noted that the same claim of the patent cannot be presented for examination in more than
 one of the divisional reissue applications, as a pending claim, in either its original
 or amended versions. If a patent claim is presented in one of the divisional reissue
 applications of a reissue application 
 "family,"
 
 
 as a pending claim, then that patent claim must be
 presented as a canceled claim in all the other reissue applications of that family. Once
 a claim in the patent has been reissued, it does not exist in the original patent; thus,
 it cannot be reissued from the original patent in another reissue application. If the
 same claim of the patent, e.g., patent claim 1 is presented for examination in more than
 one of the reissue applications, in different amended versions, the following rejections
 should be made in the reissue applications with that patent claim:
 

 A rejection under 35 U.S.C. 251 , in that the reissue
 application is not correcting an error in the original patent, because original claim 1
 would be superseded by the reissuance of claim 1 in the other reissue application.
 

 A rejection under 35 U.S.C. 112 , in that claim 1 is
 indefinite because the invention of claim 1 is not particularly pointed out and
 distinctly claimed. Claim 1 presents one coverage in divisional reissue application
 X and another in the present reissue application. This is
 inconsistent.
 

 The reissue applicant should then be advised to follow a procedure
 similar to the following example:
 

 If there are patent claims 1 – 10 in two divisional reissue
 applications and an applicant wishes to revise claim 1, which is directed to AB (for
 example) to ABC in one divisional reissue application, and to ABD in a second divisional
 reissue application, applicant should do the following: Claim 1 in the first divisional
 reissue application can be revised to recite ABC. Claim 1 in the second divisional
 reissue application would be canceled, and new claim 11 would be added to recite ABD.
 The physical cancellation of claim 1 in the second divisional reissue application will
 not prejudice applicant’s rights in the amended version of claim 1 because those rights
 are retained via the first reissue application. Claim 1 continues to exist in the first
 reissue application, and both the first and second reissue applications taken together
 make up the totality of the correction of the original patent.
 

 If the same or similar claims are presented in more than one of the
 multiple reissue applications, the possibility of statutory double patenting
 ( 35 U.S.C.
 101 ) or nonstatutory (judicially created doctrine) double
 patenting should be considered by the examiner during examination, and the appropriate
 rejections made. A terminal disclaimer may be filed to overcome a nonstatutory double
 patenting rejection. The terminal disclaimer is necessary in order to ensure common
 ownership in accordance with 37 CFR 1.321(c)(3) or common
 enforcement in accordance with 37 CFR 1.321(d)(3) of the reissue
 patents during enforcement actions in the remainder of the unexpired term of the
 original patent. 
 

 A. Consent of the
 Assignee A copy of the assignee consent is only acceptable if
 the divisional reissue application is correcting an error for which consent was
 previously made. For example, in a divisional reissue application filed in response
 to a restriction requirement made in the parent reissue application, the assignee
 need not file a consent to the divided-out invention now being provided in the
 divisional reissue application if the assignee consent provided covers the error
 being corrected in the child divisional reissue application.
 

 Whenever a divisional reissue application is filed with
 a copy of the assignee consent from the parent reissue application, but with a newly
 executed reissue oath/declaration, the copy of the assignee consent from the parent
 reissue application should not be accepted. Submission of a
 new oath or declaration is indicative of correction of a different error.
 The copy of the assignee consent from the parent reissue application does
 not indicate that the assignee has consented to the addition of the new invention
 of the divisional reissue application to the original patent . In such
 circumstances, the Office of Patent Application Processing (OPAP) will accord the
 divisional reissue application a filing date, and the examiner should reject the
 claims under 35
 U.S.C. 251 and require the submission of a new assignee
 consent. See MPEP § 1410.02 . 
 

 B. Reissue
 Oath/Declaration Whenever a divisional reissue application is filed with
 a copy of the oath/declaration from the parent reissue application, the copy of the
 reissue oath/declaration in the divisional reissue application should be accepted by
 OPAP, because it is an oath/declaration, even though it may be improper under
 35 U.S.C.
 251 or 37 CFR 1.175 . 
 

 1. Copy of Reissue Oath/Declaration from Parent
 Reissue Application (a) Continuing Reissue Applications Filed On
 or After September 16, 2012 
 37 CFR 1.175 Inventor's oath or declaration for a reissue
 application. 

 *****

 
 (f)(1) The requirement for the inventor’s
 oath or declaration for a continuing reissue application that claims
 the benefit under 35 U.S.C. 120 ,
 121 ,
 365(c) , or 386(c) in compliance with §
 1.78 of an earlier-filed reissue application may
 be satisfied by a copy of the inventor’s oath or declaration from the
 earlier-filed reissue application, provided that:
 
 (i) The inventor, or each individual
 who is a joint inventor of a claimed invention, in the reissue
 application executed an inventor’s oath or declaration for the
 earlier-filed reissue application, except as provided for in
 § 1.64 ;
 

 (ii) The continuing reissue
 application does not seek to enlarge the scope of the claims of
 the original patent; or
 

 (iii) The application for the original
 patent was filed under § 1.46 by
 the assignee of the entire interest.
 

 
 

 (2) If all errors identified in the inventor’s oath or declaration from
 the earlier-filed reissue application are no longer being relied upon
 as the basis for reissue, the applicant must identify an error being
 relied upon as the basis for reissue.
 

 
 *****

 

 In the remarks accompanying a continuing
 reissue application, the applicant should explain why the filing of the copy of
 the oath/declaration from the parent reissue application is sufficient.
 

 If the copy of the oath or declaration from the
 parent reissue application does not comply with 37 CFR
 1.175(f)(1) , the examiner should reject the claims of the
 continuing (i.e., divisional or continuation) reissue application under
 35
 U.S.C. 251 as being based on a defective
 oath/declaration, and require a new oath/declaration. See MPEP § 1414 ,
 subsection II, item (D). In addition, the examiner should check to see if the
 error statement in the copy of the oath/declaration covers an error being
 corrected in the continuing reissue application. 
 

 (b) Continuing Reissue Applications Before
 September 16, 2012 
 Pre-AIA 37 CFR 1.175 Reissue oath or
 declaration. 

 *****

 
 (e) The filing of any continuing reissue
 application which does not replace its parent reissue application must
 include an oath or declaration which, pursuant to paragraph (a)(1) of
 this section, identifies at least one error in the original patent
 which has not been corrected by the parent reissue application or an
 earlier reissue application. All other requirements relating to oaths
 or declarations must also be met.
 

 
 

 Pursuant to pre-AIA 37 CFR 1.175(e) ,
 the requirement for the inventor’s oath or declaration for a continuing reissue
 application may be satisfied by a copy of the inventor’s oath or declaration
 from the earlier-filed reissue application only when the continuing reissue
 application replaces its parent reissue application.
 

 If the copy of the oath or declaration from the
 parent reissue application does not comply with pre-AIA 37 CFR
 1.175(e) , the examiner should reject the claims of the
 continuing reissue application under 35 U.S.C. 251 as being
 based on a defective oath/declaration and require a new oath/declaration. See
 MPEP §
 1414 , subsection II, item (D). In addition, the
 examiner should check to see if the error statement in the copy of the
 oath/declaration covers an error being corrected in the continuing reissue
 application.
 

 2. Error Statement The examiner should check the copy of the
 oath/declaration to ensure that it identifies an error being corrected by the
 continuing (i.e., divisional or continuation) reissue application. For divisional
 reissue applications, the copy of the oath/declaration from the parent reissue
 application may or may not cover the error being corrected by the divisional
 reissue application because the divisional reissue application is (by definition)
 directed to a new invention. If the copy of the oath/declaration does not cover an
 error being corrected by the continuing reissue application, the examiner should
 reject the claims of the continuing reissue application under 35 U.S.C.
 251 as being based on an oath/declaration that does not
 identify an error being corrected by the continuing reissue application, and
 require a new oath/declaration and a new assignee consent if it does not cover the
 error being corrected in the continuing reissue application. See
 MPEP §§ 1414
 and 1410.02 . 
 

 For applications filed on or after September 16,
 2012, a new oath/declaration is required for identification of the error if the
 copy of the oath/declaration from the parent reissue application does not cover an
 error being corrected in the continuing reissue application. Identification of the
 error in the remarks accompanying the reissue application or a reply is not
 sufficient, because 37 CFR 1.175(f)(2) states that
 “[i]f all errors identified in the inventor’s oath or declaration from the
 earlier-filed reissue application are no longer being relied upon as the basis for
 reissue, the applicant must identify an error being relied upon as the basis for
 reissue,” and in this instance the initial oath/declaration (the copy filed) never
 stated a proper “error.” In other words, 37 CFR
 1.175(f)(2) allows for the identification of the reissuable
 error in the remarks only when a proper reissuable error was previously entered
 into the application. If the copy of the reissue oath/declaration from the parent
 reissue application does in fact cover an error being corrected in the continuing
 reissue application, no such rejection should be made. 
 

 For applications filed before September 16, 2012,
 even when the copy of the reissue oath/declaration from the parent covers an error
 being corrected in the continuing reissue application, a supplemental reissue
 oath/declaration pursuant to pre-AIA 37 CFR 1.175 (b)(1) 
 will be required. See MPEP § 1414.03 . Pre-AIA 37 CFR
 1.175(e) requires that the oath/declaration of a continuing
 reissue application must identify at least one error in the original patent which
 has not been corrected by the parent reissue application or an earlier reissue
 application. Thus, where a continuing reissue application, filed prior to
 September 16, 2012, corrects the same error in a different way than its parent
 reissue application does, different oaths/declarations must be presented in the
 two reissue applications. In addition, for applications filed before September 16,
 2012, if a preliminary amendment was filed with the continuing reissue
 application, the examiner should check for the need of a supplemental reissue
 oath/declaration. Pursuant to pre-AIA 37 CFR 1.175(b)(1) ,
 for any error corrected via the preliminary amendment which is not covered by the
 oath or declaration submitted in the parent reissue application, applicant must
 submit a supplemental oath/declaration stating that every such error arose without
 any deceptive intention on the part of the applicant. See MPEP §§ 1414 
 and 1414.03 .
 

 
 Example: Patent Broad claim – ABC 

 Parent Reissue - Claim to ABC canceled and
 replaced by ABC D to define over the art. 
 

 Divisional Reissue - Claim to ABC canceled and
 replaced by ABC E to define over the art. 
 

 The parent reissue oath/declaration error
 statement would be that ABC is too broad, and it was an error not to include D
 for patentability. The divisional reissue oath/declaration error statement
 would be that ABC is too broad and it was an error not to include E for
 patentability.
 

 

 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. For treatment of a plurality of divisional
 reissue applications resulting from a requirement to restrict to distinct
 inventions or a requirement to elect species, see MPEP §
 1450 .
 

 II. CONTINUATION REISSUE APPLICATIONS Whenever a continuation reissue application is filed
 with a copy of the assignee consent and a copy of the oath/declaration from the parent
 reissue application, the copy of the assignee consent and the reissue oath/declaration
 should both be accepted by OPAP and the application accorded a filing date so long as
 all other filing requirements are met. See subsections II.A and II.B below for more
 information on the examiner’s review of the assignee consent and the
 oath/declaration.
 

 A continuation reissue application of a parent reissue application 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 patents are not for “distinct and separate parts of the thing
 patented.” 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 applications, by codifying the Supreme Court decision
 [ The Corn-Planter Patent, 90 U.S. 181, 227-28 (1874)] which
 recognized that more than one patent can result from a reissue proceeding. Thus §
 251[2] places no greater burden on Mr. Graff’s continuation 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 35 apply to
 reissues.
 

 
 In re Graff, 111 F.3d at 877, 42 USPQ2d at 1473. Accordingly,
 prosecution of a continuation reissue application of a parent reissue application will
 be permitted (despite the existence of the pending parent reissue application) where the
 continuation reissue application complies with the rules for reissue.
 

 The parent and the continuation reissue applications should be examined
 together if possible. In order that the parent-continuation relationship of the reissue
 applications be specifically identified and notice be provided of reissue applications
 for both the parent and the continuation reissue application, the
 following is done: 
 

 
 (A) An appropriate amendment to the continuing data entries must be
 made to the first sentence of the specification (see the discussion above in
 subsection I under the heading “Divisional Reissue Applications”).
 

 (B) For an IFW reissue application file, a copy of the bibliographic
 data sheet from the IFW file history should be annotated by the examiner such that
 adequate notice is provided that more than one reissue application has been filed
 for a single original patent. The annotated sheet should be added to the
 application file in IFW. 
 

 
 As is true for the case of multiple divisional reissue applications,
 all of the claims of the patent to be reissued must be presented in both the parent
 reissue application and the continuation reissue application in some form, i.e., as
 amended, as unamended, or as canceled. The same claim of the patent cannot, however, be
 presented for examination in both the parent reissue application and the continuation
 reissue application, as a pending claim, in either its original or amended versions. See
 the discussion in subsection I above for treatment of this situation. Further, any added
 claims must be numbered beginning with the next highest number following the original
 patent claims.
 

 Where the parent reissue application issues before the examination of
 the continuation reissue application, the claims of the continuation reissue application
 should be carefully reviewed for double patenting over the claims of the parent reissue
 application. Where the parent and the continuation reissue applications are examined
 together, a provisional double patenting rejection should be made in both cases as to
 any overlapping claims. See MPEP § 804 - § 804.05 
 as to double patenting rejections. Any terminal disclaimer filed to obviate a
 nonstatutory double patenting rejection ensures common ownership in accordance with
 37 CFR
 1.321(c)(3) or common enforcement in accordance with
 37 CFR
 1.321(d)(3) of the reissue patents during enforcement actions in
 the remainder of the unexpired term of the original patent.
 

 If the parent reissue application issues without any cross reference to
 the continuation reissue application, amendment of the parent reissue patent to include
 a cross-reference to the continuation reissue application must be effected at the time
 of allowance of the continuation reissue application by certificate of correction. See
 the discussion above in subsection I under the heading “Divisional Reissue Applications”
 as to how the certificate of correction is to be provided.
 

 Again, the examiner should make reference in the pending continuation
 reissue application to the fact that an actual request for a certificate of correction
 has been generated in the first reissue patent pursuant to 37 CFR 1.177(a) ,
 e.g., by an entry in the search notes or in an examiner’s amendment.
 

 A. Consent of the
 Assignee Generally, where a continuation reissue application is filed with a
 copy of the assignee consent from the parent reissue application but with a newly
 executed reissue oath/declaration, the copy of the assignee consent from the parent
 reissue application is not acceptable. A copy of the assignee consent is only
 acceptable if the continuation reissue application corrects an error for which
 consent was made. Submission of a new oath or declaration is indicative of correction
 of a different error. Under such circumstances, OPAP will accord the continuation
 reissue application a filing date, and the examiner should reject the claims under
 35 U.S.C.
 251 and require a new consent. See MPEP §
 1410.02 . 
 

 B. Reissue
 Oath/Declaration Whenever a continuation reissue application is filed
 with a copy of the oath/declaration from the parent reissue application, the copy of
 the reissue oath/declaration in the continuation reissue application should be
 accepted by OPAP because it is an oath/declaration, even though it may be improper
 under 35 U.S.C.
 251 or 37 CFR 1.175 . For continuation
 reissue applications filed on or after September 16, 2012, in the remarks
 accompanying the continuation reissue application, the applicant should explain why
 the filing of the copy of the oath/declaration from the parent reissue application is
 sufficient. The examiner should check the copy of the oath/declaration and any
 remarks pertaining to the error to ensure that an error is correctly identified by
 the continuation reissue. See MPEP § 1414 for additional
 information.
 

 1. Copy of Reissue Oath/Declaration from Parent
 Reissue Application See subsection I.B.1 above for information on when
 a copy of the reissue oath/declaration is acceptable in both AIA and pre-AIA
 continuation reissue applications.
 

 2. Error Statement See subsection I.B.2 above for information on when
 an error statement is acceptable in both AIA and pre-AIA continuation reissue
 applications.
 

 The following are examples where the
 oath/declaration from the parent application covers the error being corrected by
 the continuation reissue application:
 

 
 Example 1 

 

 
 Patent Broad claim – ABC; Dependent claim – ABCE; and
 Dependent claim – ABCF
 

 

 
 Parent Reissue Broad claim – ABC D
 originally presented in the reissue, and then canceled during
 prosecution. During prosecution, dependent claims rewritten as independent
 claims – ABC D E Q and ABC D F Q 

 

 
 Continuation Reissue Broad claim – ABC D 

 

 The parent reissue application’s supplemental
 declaration or remarks (if the parent reissue application was filed on or after
 September 16, 2012) describes the addition of Q and D to the dependent claims,
 which have been rewritten as independent claims. A copy of the original reissue
 declaration from the parent reissue application, which describes the addition of D
 to the original independent patent claim, was filed in the continuation reissue
 application. In the remarks accompanying the continuation reissue application, the
 applicant explains why the filing of the copy of the oath/declaration from the
 parent reissue application is sufficient. Thus, the copy of the oath/declaration
 describes an error being corrected in the continuation reissue application (and
 the declarations of the parent reissue application and the continuation reissue
 application correct different errors, which is a requirement if the continuation
 reissue application was filed prior to September 16, 2012). Further, the copy of
 the original consent from the parent reissue application filed in the continuation
 reissue application covers the error described in the copy of the declaration
 filed in the continuation reissue application. 
 

 A nonstatutory double patenting rejection should
 be considered by the examiner, with the requirement of a terminal disclaimer in
 each pending application. In re Berg, 140 F.3d 1428, 1435, 46
 USPQ2d 1226, 1232 (Fed. Cir. 1998) (“The two-way exception can only apply when the
 applicant could not avoid separate filings, and even then, only if the PTO
 controlled the rates of prosecution to cause the later filed species claims to
 issue before the claims for a genus in an earlier application…In Berg’s case, the
 two applications could have been filed as one, so it is irrelevant to our
 disposition who actually controlled the respective rates of prosecution.”).
 

 
 Example 2: 

 

 
 Patent Broad claim – ABC; Dependent claim – ABCE; and
 Dependent claim – ABCF
 

 

 
 Parent Reissue Broad claim – ABC D
 originally presented in the reissue, and then canceled during
 prosecution. During prosecution, dependent claims rewritten as independent
 claims – ABC D E and ABC D F
 

 

 
 Continuation Reissue Broad claim – ABC D 

 

 The parent reissue application’s supplemental
 declaration or remarks (if the parent reissue application was filed on or after
 September 16, 2012) describes the addition of D to the ABCE and ABCF combinations,
 correcting an error in the original dependent claims. The copy of the original
 reissue declaration from the parent reissue application filed in the continuation
 reissue application describes the addition of D to the broad claim, correcting an
 error in the original independent claim. A copy of the original reissue
 declaration is filed in the continuation reissue application and the applicant
 explains, in the remarks section, why the filing of the copy of the
 oath/declaration from the parent reissue application is sufficient. The filing of
 the continuation reissue application is permitted because the applicant is free to
 split the correction of an error as to different claims into different reissue
 applications, where one is a continuing application of another. See In re
 Graff, 111 F.3d at 877, 42 USPQ2d at 1473, where the Federal Circuit
 stated that 35
 U.S.C. 251 places “no greater burden on Mr. Graff’s
 continuation reissue application than upon a continuation of an original
 application…” 
 

 Again, a nonstatutory double patenting rejection
 should be considered by the examiner, with the requirement of a terminal
 disclaimer in each pending application. See In re Berg, 140
 F.3d at 1437, 46 USPQ2d at 1233. 
 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1400.01-Introduction 

 1401-Reissue 

 1402-Grounds for Filing 

 1403-Diligence in Filing 

 1404-Submission of Papers Where Reissue Patent Is in Litigation 

 1405-Reissue and Patent Term 

 1406-Citation and Consideration of References Cited in Original Patent 

 1407-1409-[Reserved] 

 1410-Content of Reissue Application 
 1410.01-Reissue Applicant and Inventor's Oath or Declaration 

 1410.02-Assignee Consent to the Reissue 

 
 

 1411-Form of Specification 
 1411.01-Certificate of Correction or Disclaimer in Original Patent 

 1411.02-New Matter 

 
 

 1412-Content of Claims 
 1412.01-Reissue Claims Must Be for Same General Invention 

 1412.02-Recapture of Canceled Subject Matter 

 1412.03-Broadening Reissue Claims 

 1412.04-Correction of Inventorship By Reissue 

 1412.05-Correction of Inventorship in a Broadening Reissue Application 

 
 

 1413-Drawings 

 1414-Content of Reissue Oath/Declaration 
 1414.01-Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012 

 1414.02-Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012 

 1414.03-Supplemental Reissue Oath/Declaration 

 
 

 1415-Reissue Application and Issue Fees 
 1415.01-Maintenance Fees on the Original Patent 

 
 

 1416-No Physical Surrender of Original Patent 

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

 1418-Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability 

 1419-1429-[Reserved] 

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

 1431-1439-[Reserved] 

 1440-Examination of Reissue Application 

 1441-Two-Month Delay Period 
 1441.01-Protest and Pre-issuance Submission in Reissue Applications 

 
 

 1442-Special Status 
 1442.01-Litigation-Related or PTAB Trial-Related Reissues 

 1442.02-Concurrent Litigation or Trial Before the Patent Trial and Appeal Board 

 1442.03-Litigation Stayed 

 1442.04-Litigation Involving Patent 

 1442.05-Court Ordered Filing of Reissue Application 

 
 

 1443-Initial Examiner Review 

 1444-Review of Reissue Oath/Declaration 

 1445-Reissue Application Examined in Same Manner as Original Application 

 1446-1447-[Reserved] 

 1448-Fraud, Inequitable Conduct, or Duty of Disclosure Issues 

 1449-Protest Filed in Reissue Where Patent Is in Interference or Contested Case 
 1449.01-Concurrent Office Proceedings 

 1449.02-Interference in Reissue 

 1449.03-Reissue Application in Derivation Proceeding 

 
 

 1450-Restriction and Election of Species Made in Reissue Application 

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

 1452-Request for Continued Examination of Reissue Application 

 1453-Amendments to Reissue Applications 

 1454-Appeal Brief 

 1455-Allowance and Issue 

 1456-Reissue Review 

 1457-Design Reissue Applications and Patents 

 1458-1459-[Reserved] 

 1460-Effect of Reissue 

 1461-1469-[Reserved] 

 1470-Public Access to Reissue Applications 

 1471-1479-[Reserved] 

 1480-Certificates of Correction — Office Mistake 
 1480.01-Expedited Issuance of Certificates of Correction - Error Attributable to Office 

 
 

 1481-Certificates of Correction - Applicant’s Mistake 
 1481.01-Correction of Assignees’ Names 

 1481.02-Correction of Named Inventor 

 1481.03-Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits 

 
 

 1482-1484-[Reserved] 

 1485-Handling of Request for Certificates of Correction 

 1486-1489-[Reserved] 

 1490-Disclaimers 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:26