Q) Reissue (10.02.50a)

by Lizzie on April 27, 2009 · 1 comment

in Exam Concepts, Exam Questions

 50. If a reissue application is filed within two years of the original patent grant, the applicant may subsequently broaden the claims during prosecution of the pending reissue prosecution beyond the two year limit, ________________________________.

(A) if the applicant indicates in the oath accompanying the reissue application that the claims will be broadened.

(B) if an intent to broaden is indicated in the reissue application at any time within three years from the patent grant.

(C) if the reissue application is filed on the 2-year anniversary date from the patent grant, even though an intent to broaden the claims was not indicated in the application at that time.

(D) if the reissue application is a continuing reissue application of a parent reissue application, and neither reissue application contained an indication of an intent to broaden the claims until 4 years after the patent grant..

(E) provided, absent any prior indication of intent to broaden, an attempt is made to convert the reissue into a broadening reissue concurrent with the presentation of broadening claims beyond the two year limit.

 

50. ANSWER: (A) is correct. MPEP § 1412.03. In re Doll, 164 USPQ 218, 220 (CCPA 1970). (B) is wrong because 35 U.S.C. § 251 prescribes a 2-year limit for filing applications for broadening reissues. (C) is wrong because although Switzer v. Sockman, 142 USPQ 226 (CCPA 1964), holds that while a reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant, it is necessary that an intent to broaden be indicated in the reissue application within the two years from the patent grant. MPEP § 1412.03. (D) is wrong because a proposal for broadened claims must be made in the parent reissue application within two years from the grant of the original patent MPEP § 1412.03. In re Graff, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997). (E) is wrong because there was no intent to broaden indicated within the two years. MPEP § 1412.03. In re Fotland, 228 USPQ 193 (Fed. Cir. 1985).

{ 1 comment… read it below or add one }

1 triedandtestedNo Gravatar July 20, 2009 at 7:42 pm

C) is very important to keep in mind – for once, knowledge of case law is tested in this exam

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