MPEP § 1457 — MPEP § 1457
Current through: 2022-07-01

1457-Design Reissue Applications and Patents 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1457 
 

 
 
 
 
 
 1457 Design Reissue Applications and Patents [R-07.2022]

 A reissue application can be filed for a design patent in the same manner
 that a reissue application is filed for a utility patent. There are, however, a few
 procedures specific to design reissue applications as explained below.
 

 I. EXPEDITED EXAMINATION PROCEDURE Design reissue applications requesting expedited examination and
 complying with the requirements of 37 CFR 1.155 are examined with
 priority and undergo expedited processing throughout the entire course of prosecution in
 the Office, including appeal, if any, to the Patent Trial and Appeal Board. All
 processing is expedited from the date the request is granted.
 

 Design reissue applicants seeking expedited examination may file a
 design reissue application in the Office together with a corresponding request under
 37 CFR
 1.155 pursuant to the guidelines set forth in
 MPEP §
 1504.30 .
 

 The design reissue application and the request are processed by the
 Office of Patent Application Processing (OPAP). OPAP enters the appropriate information
 into Patent Data Center specifying when notice of the design reissue application will be
 published in the Official Gazette (see MPEP § 1441 ). After
 processing in OPAP, the design reissue application and the request are forwarded to the
 Design TC Director’s Office. Upon a decision by the Design TC Director to grant the
 request for expedited examination, the design reissue application file is referred to
 the Office of Patent Legal Administration (OPLA) for consideration under
 37 CFR
 1.182 to sua sponte waive the requirement for
 delaying action in the application until 2 months after announcement of the design
 reissue application filing is published in the Official Gazette (see
 MPEP §
 1441 ). Once the decision under 37 CFR 1.182 is
 mailed, the design reissue application file will be returned to the Design TC Director’s
 Office. In accordance with the waiver, the Design Group will begin expedited examination
 of the application under 37 CFR 1.155 promptly after the
 return of the design reissue application file from OPLA, rather than delay examination
 until after 2 months from the date the announcement is published in the
 Official Gazette and the applicant will be notified that
 examination is being expedited. The decision under 37 CFR 1.182 will require that no
 Notice of Allowance be mailed in the design reissue application until after 2 months
 from the date the announcement is published in the Official Gazette. 
 For example, if the design reissue application is allowed on the first Office action,
 then jurisdiction over the reissue application will be retained in the TC, and the
 Notice of Allowance will not be mailed until the expiration of 2 months after
 publication of the filing of the design reissue application in the Official
 Gazette (plus time for matching any protest filed with the application).
 The examiner will check the Patent Data Center contents to ascertain when publication
 actually occurred. The delay in the mailing of the Notice of Allowance is to ensure that
 any potential protests complying with 37 CFR 1.291 submitted within the
 2-month delay period will be considered by the Office. (see MPEP § 1441.01 ).
 

 The expedited examination procedure under 37 CFR 1.155 
 occurs through initial examination processing and throughout the entire prosecution in
 the Office. Once a request for expedited examination is granted, prosecution of the
 design reissue application will proceed according to the procedure under
 37 CFR
 1.155 , and there is no provision for 
 "withdrawal"
 
 
 from expedited examination
 procedure.
 

 II. DESIGN REISSUE FEE The design reissue application fee is set forth for in
 37 CFR
 1.16(e) . A search fee ( 37 CFR
 1.16(n) ) and an examination fee ( 37 CFR
 1.16(r) ) are also required. The additional fees in
 37 CFR
 1.16(h) and 37 CFR 1.16(i) do not apply for a
 design reissue application because more than one claim in not permitted in a design
 application pursuant to the last sentence of 37 CFR 1.153(a) .
 

 The fee for issuing a design reissue patent is set forth in
 37 CFR
 1.18(b) .
 

 III. MULTIPLE DESIGN REISSUE APPLICATIONS The design reissue application can be filed based on the
 
 "error"
 
 
 of failing to include
 a design for a patentably distinct segregable part of the design claimed in the original
 patent or a patentably distinct subcombination of the claimed design. A reissue design
 application claiming both the entire article and the patentably distinct subcombination
 or segregable part would be proper under 35 U.S.C. 251 , if such a reissue
 application is filed within two years of the issuance of the design patent, because it
 is considered a broadening of the scope of the patent claim. Restriction will be
 required under 37 CFR
 1.176(b) in such a reissue design application, and the added
 design to the segregable part or subcombination will be held to be constructively
 non-elected and withdrawn from consideration. See MPEP § 1450 . In the
 Office action containing the restriction requirement, the examiner should suggest to the
 applicant that a divisional design reissue application directed to the constructively
 non-elected segregable part or subcombination subject matter may be filed. The claim to
 the patented design for the entire article will then be examined and, if
 found allowable without change from the patent , a rejection will be made
 under 35 U.S.C.
 251 based on the fact that there is no 
 "error"
 
 
 in the non-amended original patent claim.
 In the Office action making this rejection, applicant should be advised that a proper
 response to the rejection must include (A) a request to suspend action in this original
 reissue application pending completion of examination of a divisional reissue
 application directed to the constructively non-elected segregable part or subcombination
 subject matter, (B) the filing of the divisional reissue application, or a statement
 that one has already been filed (identifying it at least by application number), and (C)
 an argument that a complete response to the rejection has been made based upon the
 filing of the divisional reissue application and the request for suspension. Action in
 the original design reissue application will then be suspended, and the divisional will
 be examined.
 

 If, after examination, the divisional design reissue application is
 also determined to be allowable, a requirement must be made in the divisional design
 reissue application to submit a petition under 37 CFR 1.183 requesting waiver of
 37 CFR
 1.153 in order to permit the rejoining of the designs to the
 entire article (of the original application) and the segregable part or subcombination
 (of the divisional) under a single claim into a single design reissue application for
 issuance, the single application being the first design reissue application.
 

 It should be noted that the filing of a design reissue application
 would not be proper if applicant did in fact include the design
 for a segregable part or subcombination thereof in the original design patent
 application, a restriction was thus made, and then applicant failed to file a divisional
 reissue application for a non-elected invention that was canceled in view of a
 restriction requirement (before issue of the original application). See In re
 Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re
 Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977).
 

 IV. CONVERSION TO UTILITY PATENT A design patent cannot be converted to a utility patent via
 reissue.
 

 35
 U.S.C. 251 requires that the “patent is, through error without any
 deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a
 defective specification or drawing, or by reason of the patentee claiming more or less
 than he had a right to claim in the patent”; however, the design patent (for which the
 reissue application would be filed) is not wholly or partly inoperative or invalid.
 There is no error in the design patent. Also, converting a design patent to a utility
 patent will, in most instances, involve the introduction of new matter into the patent.
 The disclosure of a design patent is not directed to how the invention is made and used,
 and the introduction of new matter is required to bridge this gap and provide support
 for the utility patent. Accordingly, the examiner should consider rejections based on
 the introduction of new matter under 35 U.S.C. 251 and lack of enablement
 and/or description under 35 U.S.C. 112 , when a reissue
 application is filed to convert a design patent to a utility patent. 
 

 Further, the term of a design patent may not be extended by reissue.
 Ex parte Lawrence, 70 USPQ 326, 1946 C.D. 1 (Comm’r Pat. 1946).
 Thus, any reissue application filed to convert a design patent to a utility patent,
 which conversion would thereby extend the term of the patent, should be rejected as
 failing to comply with 35 U.S.C. 251 , which permits reissue only 
 "for the unexpired part of the term of the original
 patent."
 
 
 The statute requires that the reissued patent shall not
 extend the term of the original patent.
 

 V. CONVERSION TO A DESIGN PATENT A utility patent cannot be converted to a design patent
 via reissue. 
 

 35 U.S.C. 251 requires that the “patent is,
 through error, deemed wholly or partly inoperative or invalid, by reason of a defective
 specification or drawing, or by reason of the patentee claiming more or less than he had
 a right to claim in the patent”; however, the utility patent is not wholly or partly
 inoperative or invalid. There is no error in the utility patent. It is also noted that
 conversion to a design patent would exempt the existing utility patent from maintenance
 fees, and there is no statutory basis for exempting an existing patent from maintenance
 fees. See also subsection IV above regarding patent term. 
 

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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 20:49:27