MPEP § 1444 — MPEP § 1444
Current through: 2022-07-01

1444-Review of Reissue Oath/Declaration 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1444 
 

 
 
 
 
 
 1444 Review of Reissue Oath/Declaration [R-01.2024]
 I. REQUIREMENTS OF REISSUE OATH OR DECLARATION The question of the sufficiency of the reissue
 oath/declaration filed under 37 CFR 1.175 must in each case be
 reviewed and decided personally by the primary examiner.
 

 Much of the required content of a reissue oath or
 declaration will differ based on the filing date of the reissue application. However,
 all reissue oaths or declarations must contain the following: 
 

 
 (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
 drawing, or 
 

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

 
 

 (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.
 

 
 MPEP § 1414 describes the requirements
 for each of the aforementioned statements. See MPEP §
 1414.01 for the remaining requirements for the reissue oath or
 declaration in a reissue application filed on or after September 16, 2012;
 MPEP §
 1414.02 for the remaining requirements of a reissue oath or
 declaration in a reissue application filed before September 16, 2012; and
 MPEP §
 1414.03 for supplemental reissue oaths or declarations in
 reissue applications.
 

 II. REVIEW OF REISSUE OATH OR DECLARATION An initial reissue oath/declaration is submitted with the reissue
 application (or within the time period set for filing the oath/declaration in a Notice
 To File Missing Parts under 37 CFR 1.53(f) ). 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 . In reply to the Office action, a replacement reissue
 oath/declaration should be submitted dealing with the noted defects in the reissue
 oath/declaration.
 

 The examiner should carefully review the reissue
 oath/declaration in conjunction with the discussion in MPEP §§ 1414 et seq. in order to ensure that each element is provided in the
 oath/declaration. 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 14.01.06 to state the objection(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 paragraph
 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 §
 1444 , subsection II.
 

 2. This paragraph must be preceded
 by form paragraph 14.01
 and should be preceded by form paragraphs
 14.01.01 
 to 14.01.06 
 as appropriate
 

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

 A lack of the inventor's signature on a reissue oath/declaration
 (except as otherwise provided in 37 CFR 1.64 and 1.175(c) for
 applications filed on or after September 16, 2012, and pre-AIA 37 CFR
 1.42 , 1.43 , and 1.47 and in
 37 CFR
 1.172 for applications filed before September 16, 2012) 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 submitted
 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 responsive,
 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 holdings 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.
 

 III. ERRORS PREVIOUSLY IDENTIFIED NO LONGER RELIED UPON AS THE BASIS 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, however, because of changes or
 amendments made during prosecution, none of the identified errors are relied upon any
 more. The required action will differ based on the filing date of the reissue
 application. 
 

 A. Application Filed on or After September 16, 2012 For reissue applications filed on or after September
 16, 2012, a supplemental reissue oath or declaration is not required where all errors
 previously identified in the reissue oath/declaration are no longer being relied upon
 as the basis for reissue. However, the applicant must explicitly identify an error
 being relied upon as the basis for reissue (e.g., in the remarks accompanying an
 amendment). See 37 CFR 1.175(f)(2) .
 Identification of the error must be conspicuous and clear and must comply with
 35 U.S.C.
 251 . Additionally, since applicant is not required to identify
 the new error in a reissue oath/declaration, identification of the error may not be
 deferred until the application is otherwise in condition for allowance.
 

 B. Application Filed Before September 16, 2012 For reissue applications filed before September 16, 2012, where all
 errors previously identified in the reissue oath/declaration are no longer being
 relied upon as the basis for reissue, a supplemental oath/declaration will be needed
 to identify at least one error now being relied upon as the basis for reissue, even
 if a prior oath/declaration was earlier found proper by the examiner. The
 supplemental oath/declaration is not required to indicate that the error(s)
 identified in the prior oath(s)/declaration(s) is/are no longer being corrected. In
 this instance, applicant’s submission of the supplemental reissue oath/declaration to
 obviate the rejection under pre-AIA 35 U.S.C. 251 may, at
 applicant’s option, be deferred until the application is otherwise in condition for
 allowance. The submission can be deferred because a proper statement of error was
 provided in the initial reissue oath/declaration, and therefore applicant does not
 need to supply a supplemental reissue oath/declaration each time the error being
 corrected is changed. Applicant need only conspicuously and clearly identify the new
 error in the remarks section of the reply and request that submission of the
 supplemental reissue oath/declaration be deferred until allowance. Such a request
 will be considered a complete reply to the rejection. 
 

 IV. SUPPLEMENTAL REISSUE OATH/DECLARATION UNDER PRE-AIA 37 CFR 1.175(b)(1) [Editor Note: This subsection only applies to reissue applications
 filed before September 16, 2012.] 

 For applications filed before September 16, 2012,
 pre-AIA 37 CFR
 1.175(b)(1) requires that for any error corrected which is not
 covered by a previously submitted compliant reissue oath or declaration, applicant must
 submit a supplemental oath or declaration stating that every such error arose without
 any deceptive intention on the part of the applicant. 
 

 Once the reissue oath/declaration is found to comply with
 pre-AIA 37 CFR
 1.175(a) , it is not required, nor is it suggested, 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 application, amendments are
 often made and additional errors in the patent are corrected. The Office suggests that
 the reissue applicant wait until the case is in condition for allowance, and then submit
 a cumulative supplemental reissue oath/declaration pursuant to pre-AIA 37 CFR
 1.175(b)(1) .
 

 See MPEP § 1414.03 for a discussion of the
 required content of a supplemental reissue oath/declaration under pre-AIA 37 CFR
 1.175(b)(1) .
 

 A supplemental oath/declaration under pre-AIA 37 CFR
 1.175(b)(1) must be submitted before allowance. It may be
 submitted with any reply before allowance. It may be submitted 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 pre-AIA 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/declaration filed in the application; and
 

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

 
 When a supplemental oath/declaration under pre-AIA 37 CFR
 1.175(b)(1) directed to the amendments or other corrections of
 error is required, the examiner is encouraged to telephone the applicant and request
 submission of the supplemental oath/declaration. 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.fti where the action
 issued is a second or subsequent action on the merits.
 

 ¶ 14.05.02.fti Supplemental Oath or Declaration Required Prior to Allowance -
 Application Filed Before Sept. 16, 2012 
 

 In accordance with pre-AIA 37 CFR
 1.175(b)(1) , for applications filed before September 16, 2012, a
 supplemental reissue oath/declaration must be received before this reissue 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
 will overcome this rejection. An example 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
 reissue application, and is not covered by a prior oath/declaration submitted in this
 application, arose without any deceptive intention on the part of the applicant.”
 

 
 See MPEP § 1414.01 .
 

 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 applicant of the requirement for submission of the supplemental reissue
 oath/declaration under pre-AIA 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 in a reissue
 application filed on or after September 16, 2012.
 

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

 6. 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. 
 

 7. 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/declaration filed in
 the application. The examiner will be introducing (via form paragraph
 14.05.02.fti ) a rejection into the case for the first
 time in the prosecution, when the claims have been 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, so that
 the rejection should have been expected by applicant; and 
 

 (D) The rejection will not prevent applicant from exercising any
 rights to cure the rejection, because 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/declaration filed in the application, a supplemental reissue
 oath/declaration under pre-AIA 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.
 

 V. 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 under 37 CFR 1.312 must be filed before or
 with the payment of the issue fee and may be entered on the recommendation of the
 primary examiner, and approved by the supervisory patent examiner, without withdrawing
 the case from issue. 
 

 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.

 
 For reissue applications filed before September 16, 2012, a
 supplemental reissue oath/declaration must accompany the amendment. The supplemental
 reissue oath/declaration 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, because all earlier errors should have been covered by a reissue
 oath/declaration submitted before allowance.
 

 Occasionally, correcting an error 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
 (before the payment of the issue fee. See 37 CFR 1.55(g)(1) to obtain the
 right of foreign priority under 35 U.S.C. 119 ; see also
 Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir.
 1968) (the claim for foreign priority had been timely made in the application for the
 original patent). 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.
 

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 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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 Last Modified: 
 
 03/09/2026 20:49:26