Q) Reissue/Filing Amendment

by patentbar on August 19, 2008 · 9 comments

in Exam Questions

If you had a Certificate of Correction in the parent, and want to file preliminary amendment in a reissue application, what do you do type of question

1411.01 Certificate of Correction or Disclaimer in Original Patent [R-2]
The applicant should include any changes, additions, or deletions that were made by a Certificate of Correction to the original patent grant in the reissue application without underlining or bracketing. The examiner should * make certain that all Certificate of Correction changes in the patent have been properly incorporated into the reissue application. Certificate of Correction changes and disclaimer of claim(s) under 37 CFR 1.321(a) should be made without using underlining or brackets. Since these are part of the original patent and were made before the reissue was filed, they should show up in the printed reissue >patent< document as part of the original patent, i.e., not in italics or bracketed. If the changes are extensive and/or applicant has submitted them improperly with underlining and brackets, a clean copy of the specification with the Certificate of Correction changes in it may be requested by the examiner.

{ 9 comments… read them below or add one }

1 darthNo Gravatar July 21, 2010 at 3:44 pm

I had this question but I don’t remember anything about a preliminary amendment. It was basically you had a CoC that was properly filed after issue and now you want to file a reissue app. The answer I chose had to do with the above section “without using underlining or brackets’.

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2 AlexNo Gravatar August 2, 2010 at 5:57 pm

I had this question on my exam. Essentially the question stated that a patent had issued, but there were two errors, one was a typo that was possible to correct by a CoC, and the second was the defect in the claims (failed to appreciated the scope of the invention). The CoC was filed and accepted first before the reissue was filed. Should the changed in the CoC be incorporated into the reissue application?

(should you submit a clean copy or one in which the CoC corrections are underlined or bracketed)

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3 BillNo Gravatar February 9, 2011 at 12:06 am

Alex, so which one is correct? Submit a clean copy?

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4 SophieNo Gravatar February 9, 2011 at 9:14 pm

Bill: For a reissue application, the answer should state that a clean copy should be submitted. The answer would probably include the language “without bracketing or underlining.”

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5 fengyuwuzuNo Gravatar October 10, 2011 at 1:07 pm

1453 IV, says:
If there was a prior change to the patent (made via a prior concluded reexamination certificate, reissue of the patent, certificate of correction, etc.), the first amendment of the subject reissue application must be made relative to the patent specification as changed by the prior proceeding or other mechanism for changing the patent. All amendments subsequent to the first amendment must also be made relative to the patent specification in effect as of the date of the filing of the reissue application, and not relative to the prior amendment.

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6 GDBNo Gravatar April 19, 2012 at 7:04 pm

Question about certificate of correction filed after issue and now you want to file a reissue app. Must include everything in Certificate “without using underlining or brackets’.
19/04/12

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7 RandomNo Gravatar October 15, 2012 at 8:54 pm

Got this one today.

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8 gregmacdNo Gravatar March 28, 2013 at 7:16 pm

Q#6 in the April 2003 p.m. exams states the correct answer is “In a reissue application, additions and deletions to the original patent should be made by underlining and bracketing, respectively, except for changes made in prior Certificates of Correction and disclaimer(s) of claims under 37 CFR 1.321(a).”

Also 1411.01 states: “The applicant should include any changes, additions, or deletions that were made by a Certificate of Correction to the original patent grant in the reissue application without underlining or bracketing.”

So you can submit a Reissue with underlining and bracketing, but not a Certificate of Correction

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9 ZNo Gravatar March 31, 2013 at 3:18 pm

Got this 3/30/13. Answer said “without underlining or bracketing.”

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