Q) Reissue (variant of Tommie and Jo)

by patentbar on June 27, 2007 · 69 comments

in Exam Questions

A patent containing claims 1-10 has issued. The subject matter of claims 1-5 was invented by inventor A, who has assigned his rights to your client, company C. The subject matter of claims 6-10 was invented by inventor B, who refuses to cooperate with company C unless he is the sole named inventor of his own patent. Company C wishes to divide the claims such that one patent contains only claims 1-5 and has inventor A as the sole inventor, and another patent contains claims 6-10 and has inventor B as the sole inventor. How should you advise your client?

a) this is impossible

b) use a certificate of correction to cancel claims 6-10 and remove inventor B from the patent, and file a divisional application on claims 6-10 listing B as the inventor

c) file a reissue, cancel claims 6-10, and remove B as an inventor

d) file a reissue of the original application along with a divisional reissue, cancel claims 1-5 and remove inventor A from the first reissue, move claims 6-10 and inventor B to the divisional reissue

e) file two simultaneous reissue applications from the same patent, cancel claims 1-5 and remove inventor A from the first reissue, cancel claims 6-10 and remove inventor B from the second reissue.

This is a tough one, but, based on the description above I think the likely answer is E and not D. D sounds more like what would happen if the Examiner restricted out claims that you added when you filed the reissue, and you wanted to pursue them. Even so, I’m not sure how you “move” claims to the divisional reissue. E sounds more straightforward.

MPEP 1451

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 applications may be filed for each of the inventions identified in the restriction requirement.

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).

{ 69 comments… read them below or add one }

1 4LegsGoodNo Gravatar June 7, 2008 at 11:09 am

I don’t think E is right. Take a look at Exam Question 35 from April 2002 AM. If there is no error, the PTO will *not* issue a reissue to unchanted claims. See MPEP 1450.

Further, if there is a division, and a set of constructively elected claims has no error under 251, the PTO will hold these claims in abayance while the merits of the divisional are hammered out. If the divisional is allowed, the two applicaitons will be remerged into one reissue applicaiton. This can allow you to claim elements you had not previously claimed, but that you had a right to claim, even if there are no errors to your issued claims – only an error to your issued patent.

However, this process, in particular, makes C’s request impossible, because even if you did file the reissue, and manage to get the thing divided out, it would end up getting remerged, so he simply cannot get his own precious little patent.

Now if there are other errors, you could pull it off, but I don’t see that in the fact pattern. I think (A) is the right answer.

4LG

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2 patentbarNo Gravatar August 7, 2008 at 1:18 pm

This discussion is from patentbarquestion.com:

01/31/08: However, remember that reissues cannot be filed solely for the purpose of “dividing claims”. Ther must be an error in the patent that must be fixed in order for a reissue to proceed. Office also has the option of merging the two reissues you filed back into one reissue app!

02/19/08: So I think you are misreading 37 cfr 1.177 (c) “No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself.” …. There must be an error corrected in each reissue app in order to receive a reissue patent.

02/28/08: Take a look at 35 U.S.C. 251 – “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.” However – this is based on fixing the patent. A friend in the Patent office sent me that for a reissue there must be something that does not make the patent ‘wholly or partly inoperative or invalid,’ as required by the statute.”

04/01/08:Update from previous – I took the Pbar last month and this question was on it. Got it wrong and went to DC for a review. I talked to the PO attorney about the answer – The statutory error that allows reissue is that if there 2 separable inventions by tow separate inventors, there should have been two separate patents. Thus D is a correct method of reissue.

04/14/08: GS – I don’t agree with 04/01/08 poster. He must be mistaken because answer (e) perfectly comports with 1451, which says “Applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177”

6/3/08: Even if there are two separate inventions because there is no overlap in the claims of the invention, wouldn’t E still be the correct answer? Why would D be correct?

6/3/08: could someone explain what “mistake” is being corrected that warrants reissue apps? Is B’s refusal to corporate w/ company C a “mistake” that warrants a reissue? Is the invention by A and B claiming different subject matter that makes a dvisional reissue an acceptable route? If we don’t have a mistake to fix, then C’s wish to separate the issued patent into two patents is impossible which makes (a) the answer.

06/03/08: “The correction of misjoinder of inventors in divisional reissues has been held to be a ground for reissue.” (MPEP 1402–Grounds for Reissue). Accordingly, (D) is the correct answer.

07/25/08 DHG: I still don’t buy it that D) is correct. If you “remove inventor A from the first reissue” and “move[…]inventor B to the divisional reissue” Then there is no inventor for the first reissue. Or at the very least inventor B “owns” both reissues. Can anyone explain what is wrong with answer E)?

07/27/08: The Longacre blog posting of June 26 (Jim’s Practice Question of the Day #169) says the answer is A, as there is no mistake in the patent and thus nothing to fix.

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3 dgspambotNo Gravatar August 7, 2008 at 9:03 pm

Hmm, the second to the last reply is mine. So either the 4/1/08 guy is lying about going to the patent office to check the answers, or Longacre is mistaken. I’m going to stick with longacre because the 4/1/08 guy says the answer is D which makes no sense at all. Think about it, under D who is the inventor of the first reissue and who is the inventor of the second? If the 4/1/08 guy had said the answer was E, then I wouldn’t be so sure about longacre being correct.

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4 chrismcneitNo Gravatar August 7, 2008 at 9:44 pm

There is no mistake in the patent, so I would pick A. The other matters of discussion kind of ignore this. Multiple inventions in a single patent is not a defect.

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5 dgspambotNo Gravatar August 8, 2008 at 4:20 pm

Agreed. Restriction requirements are at examiner’s discretion (35 USC 121 The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.), therefore there can’t be a mistake as such.

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6 chrismcneitNo Gravatar August 8, 2008 at 5:36 pm

Wow, I tried finding where that passage was and failed to do it.

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7 mymrhNo Gravatar August 9, 2008 at 8:42 pm

In my today’s test, I have a variation for this topic.

I have the same question, but different answer choices. And I DON’T see a) this is impossible as a available choice. All 5 answers are about peition and reissue. So I believe Longacre blog is wrong on this one (unless I got a beta question, every answer is wrong). I pick (D) which is very similar to the d) above. I also believe the wording on d) above is wrong. On my test, (D) is like “file a reissue of the original application along with a divisional reissue, file claims 1-5 with inventor A on the first reissue, claims 6-10 with inventor B on divisional reissue.

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8 BigbadvoododaddyNo Gravatar July 11, 2011 at 8:42 pm

MPEP 1451
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).

The way I read this is that if there are any NEWLY ADDED claims, there can be a divisional.
The paragraph following this says:
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).

Per the MPEP Choice E would be the correct one.

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9 dgspambotNo Gravatar August 10, 2008 at 6:09 pm

Mymrh,

Curiouser and Curiouser. However, in your question, do you recall option E? I still am confused because the option D you chose seems to be very similar to the option E that I favor. The only difference now seems to be between filing “two simultaneous reissues” and “file a reissue along with a divisional reissue.” I am not sure what the difference is between the two.

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10 chrismcneitNo Gravatar August 10, 2008 at 8:25 pm

Interestingly enough there is some case law behind this.

Ethicon, Inc. and Inbae Yoon, M.D., Plaintiffs-Appellants, v. United States Surgical Corporation and Young Jae Choi, Defendants-Appellees., 135 F.3d 1456 (1998)

“There may indeed be a need for determination of the respective interests of Dr. Yoon and Mr. Choi. Dr. Yoon’s attempt to divide the ‘773 patent by reissue, although rebuffed by the Patent Office because of the ongoing litigation, would have placed the claims to which Mr. Choi contributed into a separate patent, in accordance with the practice when this patent application was filed. Dividing the patent claims would comport with common law practices. See Real Property 607[1] (discussing “inherent right to compel partition”, citing state laws); see, e.g., Hamilton v. Hamilton, 597 A.2d 856, 859-60 (Del. Fam. Ct. 1990) (“right of the co-tenant to partition is almost absolute”).”

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11 chrismcneitNo Gravatar August 10, 2008 at 9:02 pm

Ok. I believe the issue of “defect” here would apply if one wanted to go after infringers. 100% of the interest is required to sue for infringement.

If inventor B refused to cooperate, Company C could not enforce its (share) of the patent. This makes the patent defective.

Anyone buy that?

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12 chrismcneitNo Gravatar August 10, 2008 at 10:25 pm

Going back to the answer options then.. we are currently interested in D and E. Via-a-vis:

D) File a reissue of the original application along with a divisional reissue, cancel claims 1-5 and remove inventor X from the first reissue, move claims 6-10 and inventor Y to the divisional reissue.

(E) File two simultaneous reissue applications from the same patent, cancel claims 1-5 and remove inventor Y from the first reissue, cancel claims 6-10 and remove inventor X from the second reissue.

E is the answer. D messes up the Claims and Inventors by removing the Inventor X and his Claims from the primary reissue while moving Inventor Y and his related claims to the divisional reissue. In D, there is no longer any resissue containing Inventor 1 and his claims.

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13 mymrhNo Gravatar August 11, 2008 at 1:24 am

Sorry, I didn’t recall answer (E) in my exam. I didn’t spend too much time on this question, and I didn’t have time to check this one again. The reason I chose D) in my exam is because someone said he or she looked his or her exam in PTO and found D) is a correct answer. Also, D) in my exam is exactly the the answer I though it should be (inventor A – claims 1-5 on first reissue; inventor B – claims 6-10 on divisional reissue).

I am sure that
1. no “a) this is impossible” in my exam.
2. D) in my exam is similar to d) above, but make more sense.

When I found this topic before the exam, I tried to look it up in MPEP. I couldn’t find my answer (is it “reissue with divisional reissue” OR “2 reissue”?)

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14 dgspambotNo Gravatar August 12, 2008 at 1:40 pm

Uggh! We need someone to go to DC and check out the answer to this thing….

MPEP 1451 seems to cover all this, but I think there is some kind of nuance that separates D from E that we are missing probably because we dont have the question or the answer verbatim. I would say, if you find this question on the test go directly to MPEP 1451. Does anyone have any other places to look at in the MPEP?

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15 dgspambotNo Gravatar August 12, 2008 at 2:05 pm

MPEP 1402 has a little bit more…
Perhaps the point is that the only way correction of misjoinder of inventors is possible in a reissue is during divisional reissues? This separates D) from E)….

“The correction of misjoinder of inventors in divisional reissues has been held to be a ground for reissue. See Ex parte Scudder, 169 USPQ 814 (Bd. App. 1971).The Board of Appeals held in Ex parte Scudder, 169 USPQ at 815, that 35 U.S.C. 251 authorizes reissue application to correct misjoinder of inventors where 35 U.S.C. 256 is inadequate.

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

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

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16 geekNo Gravatar May 18, 2009 at 6:11 pm

The answer has to be A. C,D and E simply cannot be the answer because the patent will not be reissued unless there was an error in the patent. MPEP 1402. On these facts, there was no error in the patent. “B” is also incorrect because, among other reasons, you cannot file a divisional AFTER the original has been granted; it’s no longer copending.

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17 danNo Gravatar June 1, 2009 at 5:44 pm

I agree with geek; the only case D or E makes sense is if the patent is defective.

I also believe there is a question similar to this on one of the exams…

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18 newbeeNo Gravatar June 1, 2009 at 7:06 pm

Another point to think about is company C is a partial assignee and does not have rights to file a reissue unless the other inventor agrees with him. In that case A is the right ans

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19 toomuch23No Gravatar October 27, 2010 at 11:10 pm

I believe the assingee can file a reissue as long as it is not being broadened?

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20 scruffNo Gravatar July 28, 2009 at 12:40 pm

I am 99% sure that I saw this question on a recent practice test and I could swear that the correct answer is (E), which is a more logical choice than (D) because (D) results in A loosing a patent altogether which doesn’t make sense. In fact, I think the explanation to that question addresses this issue. I will work on trying to find this questions in the previous exams.

However, looking at the question now, there are a few issues here. Although reissues may correct misjoinder of inventors (MPEP 1402), I don’t think that’s applicable here because each inventor did indeed invent their respective claims. This is not a case of mistaken or false inventorship. Also, since there was no restriction requirement, the inventions must not be independent or distinct (even if there was a restriction requirement, failure to timely file a divisional application is not correctable via reissue!).

Here’s the kicker. Check out MPEP 1451 I, which states

“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…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.”

Thus, it seems as though they can TRY to file a divisional reissue, but it will probably be rejected under double patenting because the fact pattern does not indicate that the inventions are independent or distinct.

Lastly, the comment above is correct in the sense that the inventors need the consent of company C to file the reissue, but from the facts, it seems as though company C is willing to split the patents so that B will have his own patent. Thus, consent doesn’t seem to be an issue.

In light of this analysis, I would lean towards answer choice A, unless we are to assume that the inventions are independent and distinct, in which case I would go with E.

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21 Art WilliamsNo Gravatar August 28, 2009 at 9:07 am

Can anyone reconcile two seemingly authoritative components of the discussion above that I’ve reproduced below:

From CFR 1.177
“The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.”

From comment dated 4/01/08 above:
“…the PO attorney about the answer – The statutory error that allows reissue is that if there 2 separable inventions by two separate inventors, there should have been two separate patents.”

Can we agree that divisional reissue seems to be associated with restriction initiated by the PTO, whereas multiple reissue seems to be a matter of applicant initiative. Thus, if there is, in fact, a “statutory error”, then multiple reissue is the correct answer. Right?

The distinction between multiple and divisional reissue seems implicit at best, as indicated by this passage from MPEP 1551/I (Divisional Reissue)
“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,”

Thanks, Art Williams

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22 balokNo Gravatar September 1, 2009 at 9:19 pm

If company C is willing to let inventor B have claims 6-10, why can’t they both be partial assignees a la MPEP 301?

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23 DogNo Gravatar October 17, 2009 at 1:52 pm

FYI… I did not pass the exam my first go around, but I did have this question. I remembered reading these posts before and put down the divisional reissue answer. Upon my review of my failed exam, I did not get this one wrong. So either the answer was right, or its just one of those questions that don’t count.

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24 sethzNo Gravatar January 27, 2010 at 7:06 pm

I also think the D is correct.
The reason E is not good, is because you need at least one inventor in common for continuing app, including divisional app. In situation of choice D, the reissue parent and divisional reissue only has one of A/B.

PS. also look like either the fact pattern or answer misplaced the A and B.

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25 MattNo Gravatar August 7, 2010 at 10:42 pm

(E) would have at least one inventor in common. If the parent has A and B, then each separate reissue would have either A or B and thus one inventor in common.

(D) as listed at the top of the page doesn’t make sense. It eliminates all of one inventor’s rights.

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26 MattNo Gravatar August 7, 2010 at 11:20 pm

One other thing, I still think that (A) overrides the other choices. MPEP 1402 clearly states that there MUST be an error (i.e. inoperative) for any reissue to take place.

In the absence of choice (A), or if an error is mentioned, then MPEP 1451 shows that (E) is clearly the best remaining choice.

27 Emily M.No Gravatar February 13, 2010 at 9:45 pm

I got this today. “This is impossible” wasn’t an answer. I chose file a divisional reissue.

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28 StephenNo Gravatar August 14, 2010 at 6:16 pm

I believe it would be file a divisional reissue as well. I think maybe we’re not getting the correct answer choices from the original post? Or maybe it was a beta at that stage. I think the correct course of action would be to file a reissue application canceling claims 6-10 and then filing a divisional reissue claiming 6-10 naming B as the inventor. I don’t think D is right because, as was stated before, it’s essentially canceling the original claim all together, A would no longer have a patent, which doesn’t make any sense. I think it was probably D, but the answer choice was translated incorrectly.

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29 SusanNo Gravatar August 16, 2010 at 12:22 am

According to mpep 1400, reissues require that the there must be be a problem with the issued patent which makes it inoperative…either wholly or partly. The fact pattern is slim. One would think that the original examiner would have requested restriction if the 2 inventions were distinct. Having 2 different inventors of the subject matter does not necessarily mean that there are 2 distinct inventions within the application. Of course restriction is at the discretion of the examiner. The question does not state whether the 2 sets of claims are directed to for example a method of making and a method of using, for example. If they are not, the examiner must apply appropriate double patenting rejection under 1451 – I if the applicants initiate a division of the claims by filing more than one reissue application. In any event, if we presume that the 2 sets of claims are distinct, it would seem that E is the correct answer. The way I read D, poor inventor A would lose out completely. Under E, at least they’d both retain rights, albeit now under claims 1-5 respectively (A under the 2nd reissue where 1-5 retained)) and claims 6-10 (B under the 1st reissue where 6-10 retained).

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30 SusanNo Gravatar August 16, 2010 at 12:33 am

One final comment…reissues require a defect. The patent is not defective under the facts….nor is there any mentioning of broadening because the patentee did not claim all he had the right to claim. Having assignment issues does not make the patent defective…it’s a business issue, and B has the right to exclude anyone from using. If I get this on my upcoming exam….I will have a hard time choosing between A and E.

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31 RandyNo Gravatar August 20, 2010 at 4:40 pm

To me, it sounds like there are two separate inventions by two separate inventors. This is a defect.

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32 toomuch23No Gravatar October 27, 2010 at 11:16 pm

Something to think about…Its not a real defect per statutory rules, it may be a defect only because someone changed their mind

33 StephenNo Gravatar August 16, 2010 at 6:24 pm

I took the patent bar today and am happy to say I passed. I had this question, it was almost verbatim from the question but the answer choices were not the same as posted above. I believed i picked the choice that said you file a reissue to change inventorship in claims 1-5 to A, and file a divisional reissue for claims 6-10 under Inventor B. A couple of the choices mentioned a certificate of correction, but that wouldn’t work because B isn’t willing to change inventorship in claims 1-5, so you would have to file a reissue to do so. It specifically states in the MPEP that you may use a reissue when there is a misjoinder of inventors. Under these circumstances I believe there is a misjoinder of inventors. I think you could file a redivisional in claims 1-5 and a certificate of correction for 6-10, but I don’t think that was one of the choices. One or two of the choices were kind of off the wall…

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34 maggieNo Gravatar November 15, 2011 at 2:40 pm

Thanks !

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35 SusanNo Gravatar August 16, 2010 at 8:40 pm

Congratulations!

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36 Entropy111No Gravatar September 28, 2010 at 2:01 am

E is right….pretty sure.

MPEP 1415….In some instances, more than one reissue patents
will be granted to replace a single original patent. ….The existence of multiple reissue patents for one original patent can arise where multiple
divisional reissue applications are filed for the same
patent, and the multiple applications issue as reissue
patents (all to replace the same original patent).

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37 Kevin LeeNo Gravatar October 11, 2010 at 10:50 pm

Just had this question today, 8/11. Concept of E above is the right answer.
In my variant, my answer did not have Reissue + Divisional. So only correct answer could be 2x Reissue, one broadening, one divisional (answer C for my variant). Other answers were something like RCE+Divisional, Divisional App, CPA+Divisional…

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38 toomuch23No Gravatar November 1, 2010 at 11:19 pm

From http://www.bitlaw.com/source/mpep/1414.html

Where a divisional reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, the reissue oath/declaration should be accepted by *>OPAPbecausebecausebecause< a new invention is being added by the filing of the divisional reissue application, a supplemental reissue oath/declaration pursuant to 37 CFR 1.175 (b)(1) will be required. See MPEP § 1414.01. Form paragraph 14.01.01 may be used where the reissue oath/declaration does not identify an error.

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39 toomuch23No Gravatar November 1, 2010 at 11:23 pm

Let me try that again:

Where a divisional reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, the reissue oath/declaration should be accepted by *>OPAPbecausebecausebecause< a new invention is being added by the filing of the divisional reissue application, a supplemental reissue oath/declaration pursuant to 37 CFR 1.175 (b)(1) will be required. See MPEP § 1414.01. Form paragraph 14.01.01 may be used where the reissue oath/declaration does not identify an error.

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40 toomuch23No Gravatar November 1, 2010 at 11:23 pm

Just visit the site, for some reason it is not letting me cut and paste

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41 BryanNo Gravatar March 13, 2011 at 4:14 pm

Complicating things further, the sections quoted above in support of (E) are found in a section of 1451 entitled “Divisional Reissue Applications.”

Also, after re-reading this section several times, I have a feeling that when filing multiple reissue applications and grouping your claims differently in each reissue, what you end up producing is a “family of reissues.” Each application in the family may be considered a “divisional reissue” – even though these probably aren’t technically “divisional reissues.”

Thus, maybe this is all just an issue of semantics. (D) could be correct just because they use the word “divisional.”

This interpretation could be entirely wrong.

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42 patenttipsNo Gravatar March 17, 2011 at 4:25 pm

I don’t believe it is correct to file two reissues. Not sure though. Arg. :-/

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43 misspatentNo Gravatar March 31, 2011 at 8:25 pm

Has anyone considered this language from 1450? “As stated in 37 CFR 1.176(b), the examiner is not permitted to require restriction among original claims of the patent (i.e., among claims that were in the patent prior to filing the reissue application). Even where the original patent contains claims to different inventions which the examiner considers independent or distinct, and the reissue application claims the same inventions, a restriction requirement would be improper. If such a restriction requirement is made, it
must be withdrawn.”

Does this mean that the examiner cannot give a restriction requirement to separate two unamended inventions, but the applicant can effectively do this by filing multiple reissues that divide among them the two unamended inventions?

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44 BoNo Gravatar July 6, 2011 at 12:29 am

I’m confused by this area also. I think the examiner can require a restriction for claims added to the parent app in the reissue. He can’t for the original claims because if you don’t file a divisional in the original app, you can’t try to get it in a reissue. I hope that makes sense, and I would greatly appreciate some clarification too!

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45 pbNo Gravatar July 6, 2011 at 12:04 pm

It is like Res Judicata, but not exact. As long as the examiner does not require a restriction in the original application, the claims of which are assumed to be non-distinct, he waives his right to bring it up again in the reissue. Does it sound like issue preclusion?

46 LinzabeeNo Gravatar April 1, 2011 at 5:36 pm

I just took the PatBar today and passed!

I had this question, and it was phrased in terms of using either a certificate of correction or a reissue to correct the issue with the inventors. There was no choice “a” as listed in the original post. The certificate of correction couldn’t work in a situation like this. The “d” choice said to file a reissue app where A claimed 1-5, and then a divisional reissue where B claimed 6-10, so that is the one I picked.

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47 patentworldNo Gravatar April 1, 2011 at 6:59 pm

Linzabee..congrats! To what question are you referring?

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48 zebrafishNo Gravatar April 1, 2011 at 8:09 pm

Took the test and passed Today with my first try!
Thanks a lot for those took a lot time to share their experience and contribute their conception. It’s really helpful.

Generally speaking, the morning section was a little easier than afternoon section, I had around 20-25 repeat questions(??). lots of appeal(6-8) and PCT Question (>8).

Repeat question:
45 Japanese (non-publication)
Mirror
Red ink
Spanish Phone- Design 6 month for foreign priority
Lip Gloss
Maintenance fee returned
Piecemeal
Assignment
TP submissions
PCT publication
2 best mode– requirement
PCT missing part
PCT claim a US provisional app, but with wrong app date–so what is the last date to submit the cope of the app.
PCT AL German, Publication in Gaman not English-designated US– What is the patent’s 102(e) day??– the National Stage, I chose the date signed the declaration day????

3 Small Entity Status—, one is the non-established assignee may sign paper
other two all about paid small entity fee, later change status ( I can not remember It looks like an old question—file a paper showing pay small entity fee with good faith.. and pay the deficiency fee.

3 reissue —1 like 1-5 to A, 6-10 to B, and B don’t want to assign to X, so what should do, only one is like file a reissue for 1-5 only the claims for A, and file a division reissue for 6-10.

I will continue to put later after giving my brain a break.

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49 LinzabeeNo Gravatar April 1, 2011 at 9:27 pm

Thanks! Sorry, I should have been more clear. The question was A & B had a patent together, with A having invented claims 1-5, and B having invented 6-10. A wants to assign his interest to C Corp, B wants nothing to do with C Corp at all. This version asked how they could correct inventorship in conformance with MPEP blah blah blah with either a certificate of correction or a reissue app.

Congrats to Zebrafish too!

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50 zebrafishNo Gravatar April 2, 2011 at 8:54 am

Hello Linzabee,
Thank you and congrats to you too!

I don’t know if we take the same set question yesterday or not . I don know the policy how USPTO changes the test —day by day or month by month?

Anyway, I felt afternoon section is more tough because I had at least 5 questions I never seen before and even i look up MPEP.

I have several questions variants of old question like
Ex parte reexamination – one applied for patent and granted, another feel it was he first invent and sold more than 1 years, so what should the latter do ( before 11-2901999).

Other questions I had:
102(a) reference–reference authored by the same applicant and less than one years, never could be a 102(a) reference.

102(b) — several choice –I choice that one sale happened in US, but to Germany partner more than one year. also have one more question about what is “in sale”

102(d) reference requirement—published is unnecessary.

102(f) reference—reduction to produce by others and not abandonment suppression..
Signing inventors—looks new variant ( sorry I can not remember now).
PCT fax the missing documents —abandoned
inert gas (4.03.30)
3 or more new ground rejection of board looks like new variant
one after file appeal brief-then file RCE— claim1-5 cancelled and 6-7 allowed

another is old
Board confirm independent claim 1 is rejected , the claim 2 and 3 depend on claim1 — then abandon the appl

Issue fee transmittal form -XYZ company
Verification statement
Provisional appl miss page 2 and 3 how to amend later, I did no find in MPEP, I choice the answer like – file a new provision app with the miss parts. (??)

147 claim counting- easy one
Using “high” cause definite or indefinite—It should be definite if one person in ordinary are can recognize the meaning ..

1 Restriction twice –no appeal
2rejection once in continuation –may appeal — Have two question about this.

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51 maggieNo Gravatar November 15, 2011 at 2:36 pm

So funny you got the claim counting- 147 answer repeat !! I

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52 HSNo Gravatar October 14, 2011 at 2:58 pm

Regarding the original question posted, answer is (A), (courtesy John White the Great!). You cannot file a reissue unless there is an error without deceptive intent in the patent.

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53 lilyNo Gravatar December 11, 2011 at 8:39 pm

how did you get the answer from john white?

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54 AGMNo Gravatar November 15, 2011 at 6:20 pm

So what I understand is that you can file two (if not more) divisional reissues because in the hypo they have two distinct inventions, thus the application is defective. BUT you cannot file multiple reissues just because you don’t like the other inventor and want to split claims where there is only one invention in the application.

Does that make sense? The way I read the hypo (as others did) is that there are two separate inventions and that is why E or D depending on your answer choices is right.

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55 GDBNo Gravatar April 20, 2012 at 12:09 am

I got this or something similar 04/19/12

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56 RTNo Gravatar May 11, 2012 at 12:34 pm

Got it 5-10-12

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57 JAYNo Gravatar July 1, 2012 at 4:21 pm

I think the answer is (D) in the original question. According to MPEP(1400-3p, last paragraph in the right column), misjoinder can be an error for reissue application. So, inventors A and B file reissue application for misjoinder and subsequently, divisional reissue can be made to correct inventor.

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58 PotentialNo Gravatar July 1, 2012 at 5:48 pm

I asked John White on this question, Answer A – it is impossible.

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59 PatentGrrlNo Gravatar July 3, 2012 at 1:07 pm

But a lot of people report that A isn’t an option anymore. *sigh*

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60 JohnNo Gravatar July 8, 2012 at 12:13 am

I really do not know what is the answer of this question.
I found a old test question very close this question.(October 16, 2002 Examination, Morning, Q11)
12. Inventor A filed a patent application and assigned the entire interest in the application to his employer, MegaCorp. The application issued as a utility patent on July 9, 2002. In June 2004, MegaCorp’s management first learns that a second inventor, Inventor B, should have been named as a co-inventor with respect to at least one claim of the issued patent. There was no deceptive intent in failing to name Inventor B in the original application. Inventor A, who is unfamiliar with patent law and concepts of inventorship, incorrectly believes that he should be the sole named inventor on the patent, and refuses to cooperate with any effort by MegaCorp to change the named inventive entity. The issued patent contains no other error. In accordance with the Manual of Patent Examining Procedure, which of the following procedures is/are available for MegaCorp to seek correction of the named inventive entity without any agreement, cooperation or action from Inventor A?
(A) File, on or before July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
(B) File, after July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
(C) Request a Certificate of Correction to add Inventor B as a named inventor.
(D) Submit in the issued patent file: a Request for Correction of Inventorship Under the Provisions of 37 CFR 1.48 that sets forth the desired inventorship change; a statement by Inventor B that the error in inventorship occurred without deceptive intention on her part; an oath or declaration executed by Inventor B; all required fees; and the written consent of MegaCorp.
(E) A and B are each available procedures.
12. ANSWER: The best choice is (E). See MPEP § 1412.04. Reissue is a proper vehicle for correcting inventorship in a patent. Because correction of inventorship does not enlarge the scope of the patent claims, the reissue application may be filed more than two years after the patent issued. Answers (A) and (B) are therefore both correct, and (E) is the best response.
Although a certificate of correction may be used to correct inventorship where all parties are in agreement, the facts of the question show that Inventor A is not in agreement. Choice (C) is thus not an available option for MegaCorp. Choice (D) is incorrect because the provisions of 37 C.F.R. § 1.48 are not available to correct inventorship in an issued patent.
After reading this question, I thought that the correct answer is (e).
Waiting for a opinion from others.

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61 chemEgirlNo Gravatar August 7, 2012 at 7:55 pm

i would initially think A looking at this question because reissue is only filed to correct an error (which does not appear to be the case here). However, some people are reporting that A is no longer included in choices which would then lead me to think E (according to 1451). But I do not know what the answer should be if A and E are both included as options.

Any feedback on A vs E is appreciated.

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62 EEPANo Gravatar August 8, 2012 at 10:33 am

I think CFR 1.177(b) perfectly applies to this situation.

(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.

Therefore, in my opinion, E is clearly the right answer.

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63 tappylilyiNo Gravatar September 15, 2012 at 6:50 pm

I got this from http://brittpatbar.blogspot.com/2010/09/complete-guide-to-unpublished-patent.html

Divisional Reissue Question
A patent issues with 10 claims allowed. Claims 1-5 were made by Inventor A, and 6-10 by inventor B….A assigned his side to Corp C, and B is pissed and won’t assign and wants his own patent. What should Corp C do?
File TWO Reissues, Cancel 1-5 and remove A in the first reissue, and in the Second reissue, Cancel 6-10 and Remove B. See 1415.

I think he means MPEP 1451. He seems to think E is the right answer.

I looked at MPEP 1451 and couldn’t find anything on point.

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64 iploveNo Gravatar September 22, 2012 at 7:10 am

A COC is out of the question since all of the parties are not in agreement. The only option left is reissue. However, MPEP 1412.04(II) states (under the heading Reissue as a Vehicle for Correction Inventorship):

The correction of inventorship does not enlarge the scope of the patent claims. Where a reissue application does not seek to enlarge the scope of the claims of the original patent, the reissue oath may be made and sworn to, or the declaration made, by the assignee of the entire interest under 37 CFR 1.172.

An assignee of part interest may not file a reissue application to correct inventorship where the other co-owner did not join in the reissue application and has not consented to the reissue proceeding.

In my opinion, C corp is an assignee of part interest and B is the other co-owner who does not want to join in the reissue application (well, in the way C Corp wants it). Thus, I have to go with answer (A), This is impossible.

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65 tappylilyiNo Gravatar September 22, 2012 at 1:37 pm

iplove, I agree that correction of inventorship through a reissue must be filed by an assignee of full interest, but I don’t think this is a correction of inventorship, because no party was incorrectly named as an inventor here, but rather, they want to split the patent through a reissue.

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66 PractionerNo Gravatar November 6, 2012 at 11:04 am

MPEP 1451 – Does allow divisional/continuation reissue applications, however this is “provided of course that the statutory requirements specific to reissue applications are met”.

A reissue requires “at least one error in teh patent to provide grounds for reissue of the patent” See MPEP 1402. While “[t]he correction of misjoinder of inventors in divisional ressiues has been held to be a ground for a reissue”, there has to be a misjoinder! Meaning that the claims as listed in the issue patent have an error in inventorship. Likewise, while MPEP 1402.04 titled “correction of inventorship” states that “correction of misjoinder of inventors has been held to be a ground for reissue”, again there must be a misjoinder. Further, as stated in MPEP 1412.04(II), “[t]he failure to name the correct inventive entity is an error in the patent which is correctable”. However, in this case, according to the facts given, the inventive entity is correct for the claims of the patent. Rather, inventor B just wishes not to be associated with the other inventor, which is not a grounds for reissue.

The fact the Examiner did not issue a restriction during prosecution, is not a “defect”, it just means the Examiner’s efficiency at the PTO is very low as he may have been able to separate the Examination into two separate dockets and lessened his workload, but chose not to. This is not an error in the patent.

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67 taking in JanuaryNo Gravatar December 18, 2013 at 1:15 pm

there is no right answer

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68 taking in JanuaryNo Gravatar December 18, 2013 at 1:16 pm

because it is a catch 22

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69 igNo Gravatar September 29, 2015 at 11:36 am

Is it possible to apply two simultaneous reissue applications from the same patent?

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