Q) Broadening Reissue (4.03.14p)

by admin on April 8, 2010 · 8 comments

in Uncategorized

Recent test takers report question #14 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.

14. Mark Twine obtains a patent directed to a machine for manufacturing string. The patent contains a single claim (Claim 1) which recites six claim elements. The entire interest in Twine’s patent is assigned to the S. Clemens String Co., and Twine is available and willing to cooperate with S. Clemens String Co. to file a reissue application. A subsequent reissue application includes Claim 2, which is similar to original Claim 1. However, one of the elements recited in Claim 2 is broader than its counterpart element in the original claim. The remaining five elements are narrower than their respective counterpart elements in the original patent claim. Which of the following scenarios accords with the USPTO rules and the procedures set forth in the MPEP?
(A) The S. Clemens String Co. files the reissue application more than 2 years after the issue date of the original patent application.
(B) The S. Clemens String Co. files the reissue application less than 2 years after the issue date of the original patent but more than 2 years after original application filing date.
(C) Mark Twine files the reissue application less than 2 years after the issue date of the original patent but more than 2 years after original application filing date.
(D) Mark Twine files the reissue application more than 2 years after the issue date of the original patent.
(E) Mark Twine and the S. Clemens String Co. jointly file the reissue application more than 2 years after the issue date of the original patent.



ANSWER: (C) is the most correct answer. Answers (A), (D) and (E) are incorrect because a broadening reissue application must be filed within two years of issuance of the original patent. 35 U.S.C. § 251; MPEP § 1412.03. Answer (B) is incorrect because the assignee may not file a broadening reissue application. MPEP § 706.03(x).

{ 7 comments… read them below or add one }

1 Chemist62No Gravatar April 12, 2010 at 12:03 am

I do not understand this, unless there was a rule change.

37 CFR 1.172. Applicants, assignees.
(a)
A reissue oath must be signed and sworn to or declaration made by the inventor or inventors except as otherwise provided (see §§ 1.42, 1.43, 1.47), and must be accompanied by the written consent of all assignees, if any, owning an undivided interest in the patent, but a reissue oath may be made and sworn to or declaration made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. All assignees consenting to the reissue must establish their ownership interest in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(b) of this chapter.

In the current MPEP E8R4, 706.03x does not contain the line quoted.

Also $1444 states: A lack of signature on a reissue oath/declaration (except as otherwise provided in 37 CFR 1.42, 1.43, and 1.47 and in 37 CFR 1.172) would be considered a lack of compliance with 37 CFR 1.175(a) and result in a rejection, including final rejection, of all the claims on the basis that the reissue oath/declaration is insufficient.

So this means, that if an inventor refuses to sign, the assignee may file a broadened reissue as explained in MPEP E8R4. Yes?

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2 SNo Gravatar April 12, 2010 at 10:53 am

My understanding is that the assignee can only file for a reissue in cases to correct the inventorship.
1481.02:
If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, since the inventor’s statement is not required for a non-broadening reissue application to correct inventorship.

To broaden a claim, the inventor needs to file a reissue with the assignee’s consent.
Somebody correct me, pl, if I am wrong.

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3 Chemist62No Gravatar April 12, 2010 at 8:20 pm

I finally found it, non-signing inventor and broadening reissue:

1414.01 Supplemental Reissue Oath/ Declaration [R-3]

III. < SUPPLEMENTAL OATH/DECLARA-TION IN BROADENING REISSUE
A broadening reissue application must be applied for by all of the inventors (patentees), that is, the original reissue oath/declaration must be signed by all of the inventors. See MPEP § 1414. If a supplemental oath/declaration in a broadening reissue application is subsequently needed in the application in order to fulfill the requirements of 37 CFR 1.175, the supplemental reissue oath/declaration must be signed by all of the inventors. In re Hayes, 53 USPQ2d 1222, 1224 (Comm’r Pat. 1999) (“37 CFR 1.175(b)(1), taken in conjunction with Section 1.172, requires a supplemental declaration be signed by all of the inventors. This is because all oaths or declarations necessary to fulfill the rule requirements in a reissue application are taken together collectively as a single oath or declaration. Thus, each oath and declaration must bear the appropriate signatures of all the inventors.”).
If a joint inventor refuses or cannot be found or reached to sign a supplemental oath/declaration, a supplemental oath/declaration listing all the inventors, and signed by all the available inventors may be filed provided it is accompanied by a petition under 37 CFR 1.183 along with the petition fee, requesting waiver of the signature requirement of the nonsigning inventor.

But this is not as I thought through the 1.42, 43, 47 rules, but through
37 CFR § 1.183 Suspension of rules.

Here we go!

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4 RockyvxiiNo Gravatar January 6, 2012 at 9:31 pm

Chemist62 and S, I think you guys are both looking in the wrong place for the answer to this (even though the explanation does say to check MPEP 1400).

The question is not asking about the requirements for filing a reissue oath/declaration. The call of the question is instead asking for the general requirements for filing a reissue and who can file it.

I used the subject matter index to search for “Reissue application” –> “Broadened” –> MPEP 706.03(x)

That section of the MPEP says that a broadening reissue must be filed within 2 years of the original patent being granted, and that the assignee of complete interest is barred from filing such a broadening reissue:

“35 U.S.C. 251 forbids the granting of a reissue “enlarging the scope of the claims of the original patent” unless the reissue is applied for within 2 years from the grant of the original patent. This is an absolute bar and cannot be excused. This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent. Such claims may be rejected as being barred by 35 U.S.C. 251. However, when the reissue is applied for within 2 years or properly claims the benefit of a broadening reissue application filed within 2 years of the patent grant, the examiner does not go into the question of undue delay.
The same section permits the filing of a reissue application by the assignee of the entire interest only in cases where it does not “enlarge the scope of the claims of the original patent.”

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5 KerstinNo Gravatar January 31, 2012 at 10:33 pm

So can someone explain to me how if S. Clemens filed the reissue app here in the appropriate timeframe (answer C) why that option would be an assignee with an entire interest ‘enlarging the scope of the claims of the original patent.’ to quote the language currently in 706.03(x), and thus something that is not allowed. I understand why B is right, but I don’t understand why C is wrong. Why can’t the asaignee file for the reissue? I’m not seeing how the current language in 706.03 fits the answer choices. I don’t see anywhere in the Q that would indicate the assignee would be enlarging the scope of the original patent by filing the reissue. Thanks!

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6 KerstinNo Gravatar January 31, 2012 at 10:34 pm

Has anyone seen this question recently anyway?

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7 KerstinNo Gravatar January 31, 2012 at 10:40 pm

oh, I see. Claim 2 is now broader then the ORIGINAL claim 1 (there was no claim 2 in the original claim set), hence the applicability of the following language “This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent” from 706.03(x). Geez

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