MPEP § 1410 — MPEP § 1410
Current through: 2022-07-01

1410-Content of Reissue Application 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1410 
 

 
 
 
 
 
 1410 Content of Reissue Application [R-01.2024]

 
 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.
 

 

 
 37 CFR 1.173 Reissue specification, drawings, and amendments. 

 
 (a) Contents of a reissue application . An application for reissue
 must contain the entire specification, including the claims, and the drawings of
 the patent. No new matter shall be introduced into the application. 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. 
 (1) Specification, including claims. The entire
 specification, including the claims, of the patent for which reissue is
 requested must be furnished in the form of a copy of the printed patent, in
 double column format, each page on only one side of a single sheet of paper.
 If an amendment of the reissue application is to be included, it must be
 made pursuant to paragraph (b) of this section. The formal requirements for
 papers making up the reissue application other than those set forth in this
 section are set out in § 1.52 . Additionally, a
 copy of any disclaimer ( § 1.321 ), certificate of
 correction ( §§ 1.322 through
 1.324 ), or reexamination certificate
 ( §
 1.570 ) issued in the patent must be included. (See
 also §
 1.178 ).
 

 (2) Drawings. Applicant must submit a clean copy of each
 drawing sheet of the printed patent at the time the reissue application is
 filed. If such copy complies with § 1.84 , no further
 drawings will be required. Where a drawing of the reissue application is to
 include any changes relative to the patent being reissued, the changes to
 the drawing must be made in accordance with paragraph (b)(3) of this
 section. The Office will not transfer the drawings from the patent file to
 the reissue application.
 

 
 

 
 *****

 

 The specification (including the claims and any drawings) of the reissue
 application is the copy of the printed patent for which reissue is requested that is
 submitted by applicant as part of the initial application papers. The copy of the printed
 patent must be submitted in double column format, each page of double column format being
 on only one side of the piece of paper. It should be noted that a re-typed specification is
 not acceptable in a reissue application; the full copy of the printed patent must be used.
 In addition, an applicant for reissue is required to file a reissue oath or declaration
 which, in addition to complying with 37 CFR 1.63 , must comply with
 37 CFR
 1.175 . Where the patent has been assigned, the reissue applicant must
 also provide a consent of assignee to the reissue and evidence of ownership. Where the
 patent has not been assigned, the reissue applicant should affirmatively state that the
 patent is not assigned.
 

 An amendment may be submitted at the time of filing of a reissue
 application. The amendment may be made either by:
 

 
 (A) physically incorporating the changes within the specification by
 cutting the column of the printed patent and inserting the added material and
 rejoining the remainder of the column and then joining the resulting modified column
 to the other column of the printed patent. Markings pursuant to 37 CFR 1.173(d) 
 must be used to show the changes. The columnar structure of the printed patent must
 be preserved, and the physically modified page must comply with 37 CFR
 1.52(a)(1) . As to compliance with 37 CFR
 1.52(a)(1)(iv) , the 
 "written either by a typewriter or machine printer in permanent dark ink or its
 equivalent"
 
 
 requirement is deemed to be satisfied where a
 caret and line are drawn from a position within the text to a newly added phrase,
 clause, sentence, etc. typed legibly in the margin; or
 

 (B) providing a separate amendment paper with the reissue
 application.
 

 
 The presentation of the insertions or deletions as part of the original
 reissue specification is an amendment under 37 CFR 1.173(b) . An amendment of the
 reissue application made at the time of filing of the reissue application must be made in
 accordance with 37 CFR
 1.173(b)-(e) and (g) ; see MPEP § 1453 . Note that the provisions of
 37 CFR
 1.53(b) , effective December 18, 2013, stating that an application may
 be accorded a filing date “with or without” claims, does not apply in reissue applications,
 as 37 CFR
 1.173(a)(1) requires the filing of the entire specification,
 including the claims of the original patent. A preliminary amendment cancelling all
 original claims without presenting any new claims would be inappropriate under
 37 CFR
 1.115(b)(1) . If an application is filed without claims, but otherwise
 complies with 37 CFR
 1.53(b) and the reissue rules, the Office of Patent Application
 Processing (OPAP) 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 37 CFR 1.16(f) . 
 

 If the changes to be made to the patent are so extensive that reading and
 understanding the specification is extremely difficult and error-prone, a clean, typed copy
 of the specification may be submitted if accompanied by a grantable petition under
 37 CFR
 1.183 for waiver of 37 CFR 1.125(d) and 37 CFR
 1.173(a)(1) .
 

 Pursuant to 37 CFR 1.173(a)(1) , applicant is
 required to include a copy of any disclaimer ( 37 CFR 1.321 ), certificate of
 correction ( 37 CFR
 1.322 – 1.324 ), reexamination certificate
 ( 37 CFR
 1.570 and 1.997 ) or certificate from a trial
 before the Patent Trial and Appeal Board (PTAB) ( 37 CFR
 42.80 ) issued in the patent for which reissue is requested. If there
 was a prior change to the patent (made via a certificate, reissue of the patent,
 disclaimer, etc.), the first amendment of the subject reissue application must be made
 relative to the patent as changed by the prior proceeding or other mechanism for changing
 the patent.
 

 It should also be noted that 37 CFR 1.178(b) 
 requires reissue applicants to call to the attention of the Office any prior or concurrent
 proceedings in which the patent (for which reissue is requested) is or was involved, such
 as interferences, reissues, reexaminations, or litigation (litigation covers any papers
 filed in the court or issued by the court, such as, for example, motions, pleadings, and
 court decisions including court orders) and the results of such proceedings. This duty is a
 continuing duty, and runs from the time the reissue application is filed until the reissue
 application is abandoned or issues as a reissue patent. 
 

 It is no longer required that the reissue applicant physically surrender
 the original patent, see MPEP § 1416 . 
 

 When appropriate, the reissue applicant must provide a claim for
 priority/benefit under 35
 U.S.C. 119 or 120 in the reissue application. Benefit
 and priority claims made in the patent for which reissue is sought do not carry over into
 the reissue application. For any reissue filed on or after September 16, 2012, the
 priority/benefit claim information must be in an application data sheet (ADS) under
 37 CFR
 1.76 and must be made within the time period set forth in
 37 CFR
 1.55 and 1.78 unless a petition for an
 unintentionally delayed priority or benefit claim is filed. See MPEP § 1402 , subsections
 III and IV, for more information. An ADS is also required if an application under
 35 U.S.C.
 111(a) is made by a person other than the inventor.
 

 Where appropriate, the reissue applicant may also file an
 Information Disclosure Statement. 
 

 A reissue application that discloses nucleotide and/or
 amino acid sequences must comply with the sequence rules ( 37 CFR
 1.831 - 37 CFR 1.839 for reissue applications
 filed on or after July 1, 2022 and 37 CFR 1.821 - 1.825 for reissue
 applications filed before July 1, 2022). See MPEP §
 2412 et seq. for detailed information pertaining to the submission of
 “Sequence Listing XMLs” and MPEP § 2422.03 et seq. for detailed information pertaining to the submission of
 "Sequence Listings".
 

 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: Mail Stop REISSUE, Commissioner for
 Patents, P.O. Box 1450, Alexandria, VA 22313-1450. Mail Stop 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. Reissue
 applications may be filed through the USPTO patent electronic filing system. See
 MPEP §
 502.05 . When filing a reissue application electronically, an
 applicant should choose the “reissue” radio button. Regardless of the manner of filing, all
 new reissue filings should include a copy of a completed Reissue Patent Application
 Transmittal Form (PTO/AIA/50) to ensure that the filing of the new application will be
 recognized as a reissue application.
 

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

 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 . See MPEP § 1410.01 .
 

 A guide for filing reissue applications on or after
 September 16, 2012 is available at www.uspto.gov/sites/default/files/forms/
 uspto_reissue_ads_guide_Sept2014.pdf 

 Form PTO/AIA/50, Reissue Patent Application Transmittal, which may be used
 for filing reissue applications, is reproduced below.
 

 

 

 
 1410.01 Reissue Applicant and Inventor's Oath or
 Declaration [R-07.2022]
 
 I. REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012 [Editor Note: See subsection II, below, for reissue applications filed
 before September 16, 2012.] 

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

 

 *****

 
 (c) APPLICABILITY OF THIS TITLE.— 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 or the application for the original patent was filed by the assignee
 of the entire interest. 
 

 
 *****

 

 
 37 CFR 1.172 Reissue Applicant. 

 
 (a) The reissue applicant is the original patentee, or the
 current patent owner if there has been an assignment. A reissue application
 must be accompanied by the written consent of all assignees, if any,
 currently owning an undivided interest in the patent. All assignees
 consenting to the reissue must establish their ownership in the patent by
 filing in the reissue application a submission in accordance with the
 provisions of § 3.73(c) of this
 chapter.
 

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

 
 

 
 37 CFR 1.175 Inventor's oath or declaration for a reissue application. 

 

 *****

 
 (c) The inventor, or each individual who is a joint inventor
 of a claimed invention, in a reissue application must execute an oath or
 declaration for the reissue application, except as provided for in
 §
 1.64 , and except that the inventor's oath or
 declaration for a reissue application may be signed by the assignee of the
 entire interest if: 
 
 (1) The application does not seek to
 enlarge the scope of the claims of the original patent; or 
 

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

 
 

 
 *****

 

 For reissue applications filed on or after September
 16, 2012, the reissue applicant is the original patentee, or the current patent
 owner, if there has been an assignment. However the inventor, or each individual
 inventor who is a joint inventor of a claimed invention, must execute an oath or
 declaration for the reissue application, except as otherwise provided in
 37 CFR
 1.175(c) . A reissue applicant may file a substitute statement
 in lieu of the inventor’s oath or declaration as provided for in 37 CFR 1.64 
 (see MPEP §
 604 ). In addition, the inventor’s oath or declaration may
 be signed by the assignee of the entire interest if (a) the reissue application does
 not seek to enlarge the scope of the claims of the original patent ( 37 CFR
 1.175(c)(1) ), or (b) the application for the original patent
 was filed under 37 CFR 1.46 by the assignee of the entire interest
 ( 37
 CFR 1.175(c)(2) ). When used in this context, “filed under
 37 CFR
 1.46 by the assignee of the entire interest” means that the
 assignee of the entire interest was named as the applicant in the applicant section
 of the application data sheet at the time of filing the underlying application that
 became the patent for which reissue is now being sought. In this situation, the
 reissue oath or declaration must be signed by a party authorized to act on behalf of
 the assignee of the entire interest and may not be signed by the patent practitioner
 of record. See MPEP § 325 , subsection V, items (A),
 (B), and (D) for examples of a party authorized to act on behalf of the assignee of
 the entire interest in signing a reissue oath or declaration. 
 

 For continuation or divisional reissue applications, a
 copy of the inventor’s oath or declaration from the earlier-filed reissue application
 may be used, provided that: (1) the inventor, or each 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 in 37 CFR
 1.64 ; (2) the continuing reissue application does not seek to
 enlarge the scope of the claims of the original patent; or (3) the application for
 the original patent was filed under 37 CFR 1.46 by the assignee of
 the entire interest. See 37 CFR 1.175(f)(1) . Depending on
 the circumstances, either Form PTO/AIA/05, Reissue Application Declaration by the
 Inventor, or Form PTO/AIA/06, Reissue Application Declaration by the Assignee, may be
 used to prepare a declaration in a reissue application. These forms are reproduced in
 MPEP §
 1414 , which includes additional information on the content
 of reissue oaths or declarations, such as when the statement of at least one error in
 a copy of the inventor’s oath or declaration from the earlier-filed reissue
 application will be accepted by the Office. 
 

 II. REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012 [Editor Note: See subsection I, above, for reissue applications filed on or
 after September 16, 2012.] 

 
 35 U.S.C. 251 
 (pre-AIA) Reissue of defective 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.
 

 *****

 

 
 Pre-AIA 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 interest 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 representatives or assigns as the interest may
 appear.
 

 
 

 For reissue applications filed before September 16,
 2012, the reissue application must be made by the inventor or the person(s) applying
 for a patent in place of the inventor as provided in pre-AIA 37 CFR
 1.42 , 1.43 , and 1.47 (see
 MPEP §
 409.01(b) and § 409.03 et seq. ), except that the application for reissue may be made by
 the assignee of the entire interest if the application does not seek to enlarge the
 scope of the claims of the original patent. See pre-AIA 35 U.S.C. 251 , third
 paragraph.
 

 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
 pre-AIA 37
 CFR 1.42 , 1.43 , and 1.47 .
 Alternatively, pursuant to pre-AIA 37 CFR 1.172 , 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
 declaration made, by the assignee of the entire interest. In this situation, a
 reissue oath or declaration must be signed by a party authorized to act on behalf of
 the assignee of the entire interest. See MPEP § 324 , subsection V. Depending
 on the circumstances, either Form PTO/SB/51, Reissue Application Declaration by the
 Inventor, or Form PTO/SB/52, Reissue Application Declaration by the Assignee, may be
 used to prepare a declaration in a reissue application. These forms are reproduced in
 MPEP §
 1414 , which includes additional information pertaining to
 reissue oaths or declarations.
 

 III. ADDING OR DELETING AN
 INVENTOR If an inventor is to be added in a reissue application, a proper
 reissue oath or declaration including the signatures of all of the inventors is
 required, except where the assignee of the entire interest can properly sign the
 reissue oath or declaration. If one or more inventors are being deleted in a reissue
 application, an oath or declaration must be supplied over the signatures of the
 remaining inventors, except where the assignee of the entire interest can properly
 sign the reissue oath or declaration. Note that although an inventor being deleted in
 a reissue application need not sign the oath or declaration, if that inventor to be
 deleted has any ownership interest in the patent (e.g., that inventor did not assign
 away their rights to the patent), the signature of that inventor must be supplied in
 a consent to the filing of the reissue application. See MPEP §
 1410.02 as to consent of assignee and MPEP § 1412.04 as
 to correction of inventorship via reissue.
 

 

 
 1410.02 Assignee Consent to the Reissue [R-07.2022]
 I. WRITTEN CONSENT A reissue application, whether filed before, on, or
 after September 16, 2012, must be accompanied by the written consent of all
 assignees, if any, currently owning an undivided interest in the patent. In addition,
 all assignees consenting to the reissue must establish their ownership in the patent
 by filing in the reissue application a submission in accordance with the provisions
 of 37 CFR
 3.73 .
 

 Where no assignee exists, applicant should affirmatively state that
 fact. This can be done by simply checking the 
 "NO"
 
 
 box of item 8 of Form PTO/AIA/50, which may be signed by
 the inventors or by a registered practitioner. 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 requirement. It should be noted that the mere
 filing of a written assertion of small entity status (see MPEP § 509.03 ) or a
 certification of micro entity status (see MPEP §
 509.04 ) in no way relieves applicant of the requirement to
 affirmatively state that no assignee exists.
 

 Where a written assertion of small entity status, a certification of
 micro entity status, or other paper in file indicates that the application/patent is
 assigned, and there is no consent by the assignee named in the written assertion of
 small entity status or the certification of micro entity status, 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 a written
 consent of all assignees. Thus, where an application is filed without an oath or
 declaration, or without the consent of all assignees, if the application otherwise
 complies with 37
 CFR 1.53(b) and the reissue rules (particularly
 37 CFR
 1.173(a)(1) and 1.173(b)(2) ), the Office of
 Patent Application Processing (OPAP) 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
 37 CFR
 1.16(f) . If the reissue oath or declaration is filed but the
 assignee consent 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 that the assignees have
 consented to the filing. 
 

 The consent of assignee must be signed by a party authorized to act
 on behalf of the assignee. For applications filed on or after September 16, 2012, the
 consent may be signed by the assignee or a patent practitioner of record. For
 applications filed before September 16, 2012, the consent must be signed by the
 assignee. Where the assignee is a juristic entity, the consent may be signed by a
 person in the organization having apparent authority to sign on behalf of the
 organization, or a person who makes a statement of authorization to act on behalf of
 the assignee. For a discussion of parties authorized to act on behalf of the
 assignee, see MPEP § 325 (for applications filed
 on or after September 16, 2012) and MPEP § 324 (for applications filed
 before September 16, 2012). The consent to the reissue application may use language
 such as:
 

 
 The XYZ Corporation, assignee of U.S. Patent No. 99,999,999,
 consents to the filing of reissue application No. 99/999,999 (or the present
 application, if filed with the initial application papers) for the reissue of U.S.
 Patent No. 99,999,999.
 

 _______________ 

 Jane Doe

 Vice President,

 XYZ Corporation

 
 Where the written consent of all the assignees to the filing 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(f) 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 Baker Hughes Inc. v. Kirk, 921 F.
 Supp. 801, 809, 38 USPQ2d 1885, 1892 (D.D.C. 1995), 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).
 

 Where a continuation reissue application is filed with
 a copy of the assignee consent from the parent reissue application, and the parent
 reissue application is not to be abandoned, the copy of the
 consent is generally not adequate for the continuation reissue application. See
 MPEP §
 1451 , subsection II.A, for more information. Where a
 continuation reissue application is filed with a copy of the assignee consent from
 the parent reissue application, and the parent reissue application is, or will be
 abandoned, the copy of the consent should be accepted by the Office.
 

 Other than the exception noted below, where a
 divisional reissue application is filed with a copy of the assignee
 consent from the parent reissue application, regardless of whether or not the parent
 reissue application is to be abandoned, the copy of the assignee consent should
 not be accepted. The copy of the consent from the parent
 does not indicate that the assignee has consented to the addition of the new
 invention of the divisional reissue application to the original patent, or to the
 addition of the new error correction of the continuation reissue application.
 (Presumably, a new correction has been added via the continuation, because the parent
 is still pending.) As noted above, OPAP will accord a filing date and the examiner
 will require the submission of a proper assignee consent. If, however, a divisional
 reissue application is being 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 submitted in the divisional application because consent has
 already been provided in the parent reissue application. See MPEP § 1451 ,
 subsection I.A.
 

 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 a consent document/statement has been submitted but is insufficient (e.g., not by all the assignees) or is otherwise ineffective
 (e.g., a conditional consent, or a copy of the consent from the parent reissue application was filed in this continuation
 reissue application and the parent reissue application is not being abandoned), an explanation of such is to be included following
 this form paragraph.
 

 3. If the case is otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51 ).
 
 
 
 II. 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 
 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 by:
 

 
 (A) filing in the reissue application documentary 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
 evidence is recorded in the Office (e.g., reel and frame number, etc.). 
 

 
 Compliance with 37 CFR 3.73 may be provided as
 part of the same paper in which the consent by assignee is provided. 
 

 In connection with option (A) above, the submission of the
 documentary evidence to establish ownership must be accompanied by a statement
 affirming that the documentary evidence of the chain of title from the original
 owners to the assignee was, or concurrently is being, submitted for recordation
 pursuant to 37 CFR
 3.11 . Thus, when filing a 37 CFR 3.73 statement to
 establish ownership, an applicant or patent owner must also submit the relied-upon
 assignment document(s) to the Office for recordation, unless such a submission has
 already been previously made. If the 37 CFR 3.73 statement is not
 accompanied by a statement affirming that the documentary evidence was, or
 concurrently is being, submitted for recordation pursuant to 37 CFR 3.11 ,
 then the 37 CFR
 3.73 statement will not be accepted, and the
 assignee(s) will not have established the right to take action in the patent
 application or the patent for which the 37 CFR 3.73 statement was
 submitted. This could result, for example, in an incomplete response, where a party
 stated to be the “assignee” signs a consent to the reissue to obviate a requirement
 for submission of assignee consent made in an Office action.
 

 Upon initial receipt of a reissue application, the examiner should
 inspect the application to determine whether the submission under 37 CFR 1.172 
 and 37 CFR
 3.73 establishing the ownership of the assignee is present and
 sufficient. 
 

 If an assignment document is attached with the 37 CFR 3.73 
 submission, the assignment should be reviewed to ensure that the named assignee is
 the same for the assignment document and the 37 CFR 3.73 statement, and that
 the assignment document is an assignment of the patent to be reissued to the
 assignee. If an assignment document is not attached with the 37 CFR 3.73 
 statement, but rather the reel and frame number where the assignment document is
 recorded in the USPTO is referenced in the 37 CFR 3.73 statement, it will be
 presumed that the assignment recorded in the USPTO supports the statement identifying
 the assignee. It will not be necessary for the examiner to obtain a copy of the
 recorded assignment document. If the submission under 37 CFR
 1.172 and 37 CFR 3.73 is not present, form
 paragraph 14.16 may be used to indicate that the assignee has
 not provided 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 evidence 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 followed 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 
 to establish ownership must be signed by a party authorized to act on behalf of the
 assignee. For applications filed on or after September 16, 2012, a patent
 practitioner of record may sign the statement (see 37 CFR
 3.73(d)(3) ). For applications filed before September 16, 2012,
 the signature of an attorney or agent registered to practice before the Office is not
 sufficient, unless that attorney or agent is authorized to act on behalf of the
 assignee. 
 

 If the submission under 37 CFR 3.73 to establish
 ownership is not signed by a party authorized to sign pursuant to 37 CFR
 3.73 , 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. See 37 CFR
 3.73 .
 

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

 Examiner Note:
 
 1. This form paragraph should be
 followed: by one of form paragraphs 14.16.02 through 14.16.04.fti , and then optionally
 by form paragraph 14.16.06 . 
 

 2. See MPEP § 1410.02 .
 
 
 

 ¶ 14.16.02 Failure To State Capacity To Sign

 The person who signed the submission establishing ownership interest has
 failed to state in what capacity the submission on behalf of the corporation or other business
 entity was signed, and the person who signed it has not been established as being authorized
 to act on behalf of the assignee. For reissue applications filed on or after September 16,
 2012, the submission establishing ownership may be signed by a patent practitioner of record.
 See 37 CFR
 3.73 ; MPEP § 325 .
 

 Examiner Note:
 
 1. This form paragraph is to be used when the person signing the
 submission establishing ownership interest does not state the person's capacity (e.g.,
 as a recognized officer) to sign for the assignee, and is not established as being
 authorized to act on behalf of the assignee. For reissue applications filed on or after
 September 16, 2012, the submission establishing ownership may be signed by a patent
 practitioner of record (i.e., who has been given power in a power of attorney document
 in the file).
 

 2. Use form paragraph
 14.16.06 
 to explain how an official, other than a recognized officer, may properly sign a
 submission establishing ownership 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 the person who signed it has not been
 established as being authorized to act on behalf of the assignee. See MPEP § 324 (for applications
 filed before September 16, 2012) and § 325 (for applications filed on or after
 September 16, 2012).
 

 

 ¶ 14.16.04.fti Attorney/Agent of Record Signs - Application Filed Before
 Sept. 16, 2012 
 

 The submission establishing ownership interest was signed by
 applicant’s [1] . For reissue applications filed before September 16, 2012, an
 attorney or agent of record is not authorized to sign a submission establishing ownership
 interest, unless the attorney or agent 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 in reissue
 applications filed before September 16, 2012, when the person signing the submission
 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. For reissue applications filed on
 or after September 16, 2012, the submission may be signed by a patent practitioner of
 record. See 37 CFR 3.73(d)(3) .
 

 2. Use form paragraph 14.16.06 to explain how an official,
 other than a recognized officer, may properly sign a submission establishing ownership
 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 sign a submission establishing ownership interest,
 provided the record for the application includes a duly signed
 statement that the person is empowered to sign a submission establishing ownership interest
 and/or act on behalf of the assignee.
 

 Accordingly, a new submission
 establishing ownership interest which includes such a statement above, will be considered to
 be signed by an appropriate official of the assignee. A separately filed paper referencing the
 previously filed submission establishing ownership interest and containing 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.fti .
 

 2. When one of form paragraphs 14.16.02 , 14.16.03 or
 14.16.04.fti 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 ownership as to the
 patent, the assignee’s ownership as to the reissue application will be presumed.
 Accordingly, a submission as to the ownership of the patent will be construed to
 satisfy the 37 CFR
 1.172 (and 37 CFR 3.73 ) requirements for
 establishing ownership of the application. Thus, a terminal disclaimer 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 showing ownership of
 the reissue application. However, if there is a submission under 37 CFR
 3.73 present in the patent file, but there is no copy in the reissue application
 file, a copy of the submission under 37 CFR 3.73 
 for the patent must be submitted in the reissue file.
 

 Even if the submission states that it is establishing ownership 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 application must, of necessity,
 include chain of title as to the patent.
 

 III. COMPARISON OF ASSIGNEE THAT CONSENTS TO ASSIGNEE SET FORTH IN SUBMISSION
 ESTABLISHING OWNERSHIP INTEREST The examiner must inspect both the consent and documentary evidence
 of ownership to determine whether the requirements of 37 CFR 1.172 
 have been met. The assignee identified by the documentary evidence 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 ownership for the
 assignee must both be persons having authority to do so. See also
 MPEP §§
 324 and 325 .
 

 The reissue patent will be granted to the original patentee, their
 legal representatives or assigns as the interest may appear. 
 

 

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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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 03/09/2026 20:49:26