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.
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).