Q) Broadening Reissue (10.03.11p)

by admin on April 10, 2010 · 3 comments

in Exam Questions

Recent test takers report that question #11 from the October 2003 (PM) test is in the patent bar exam database.

11. A U.S. patent was granted on May 8, 2001 to five inventors. The five inventors assigned their entire patent rights to Q Company. Q Company needs to file a reissue application to broaden the claims of the patent. The registered practitioner preparing the application has been unable to locate any of the five inventors to sign the reissue oath or declaration. Today is May 8, 2003. Which of the following should the practitioner do to enable the applicant to broaden the patent claims in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) Wait to file the reissue application until the first day the signatures of all five inventors can be obtained. At that time, pay the filing fee and file a petition seeking May 8, 2003 as the filing date. File with the petition a showing of the unavailability of all inventors until the filing of the application.
(B) Wait to file the reissue application until the signatures of at least three inventors can be obtained. At that time, file a petition seeking May 7, 2003 as the filing date accompanied by a showing of the unavailability of all inventors on May 8th. Payment of the filing fees may be postponed until receipt of a decision on the petition.
(C) File the reissue application on May 8, 2003, presenting only the claims in the patent, and include a listing of inventors, but not pay the filing fee at the time of filing.
(D) Wait to file the reissue application until the signature of one of the inventors has been obtained since at least one inventor is needed to show a lack of deceptive intent on the part of the applicants.
(E) File the complete reissue application complying with 37 CFR 1.173(a) and 1.53(b) with an unexecuted reissue declaration listing the names of all the inventors with at least one broadening claim on May 8, 2003.

ANSWER: (E) is the most correct answer. 35 U.S.C. § 251; 37 CFR § 1.53(f); MPEP § 1403. Filing a broadened reissue application with at least one broadening claim prior to the expiration of the two-year time period set in the statute satisfies the diligence provisions of 35 U.S.C. § 251. The executed reissue oath/declaration and the filing fee may be filed at a later time. According to MPEP § 1403, a reissue application can be granted a filing date without an oath or declaration, or without the filing fee being present. See 37 CFR § 1.53(f). The reissue applicant will be given a period of time to provide the missing parts and to pay the surcharge under 37 CFR § 1.16(e). See MPEP § 1410.01. (A), (B) and (D) are clearly incorrect since the inventors and assignee would be barred from a broadening reissue if filed after the two year period set in the statute. (C) is incorrect since the reissue application was filed without at least one broadening claim prior to the expiration of the two-year time period set in 35 U.S.C. § 251.

{ 3 comments… read them below or add one }

1 XNo Gravatar June 16, 2010 at 6:03 pm

Does a reissue application have to contain at least 1 broadened claim within the 2 year period or can it just show an intent to broaden within 2 years (with no broadened claims in the application) and then file broadened claims after the 2 years? Not sure if there was a change in rules after 2003, but the MPEP E8R4 1412.03 says:

A broadened claim can be presented within two
years from the grant of the original patent in a reissue
application. In addition, a broadened claim can be
presented after two years from the grant of the original
patent in a broadening reissue >applicationThus, a broadened
claim may be presented in a reissue application
after the two years, even though the broadened claim
presented after the two years is different than the
broadened claim presented within the two years.<

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2 studierNo Gravatar December 3, 2010 at 12:06 pm

I would guess that intent = presenting a broadening claim. I doubt a question would make you distinguish between the 2. For example, “hey mr. examiner, I plan to broaden these claims, but I have no idea how yet…” — i don’t think this would work, but I also don’t think a test question would ask this.

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3 ELSNo Gravatar March 4, 2011 at 11:53 am

I think a good example of the intent required is explained in this question: http://mypatentbar.com/2009/04/27/q-reissue-100250a/

From that question, it seems as though the intent required is something less than the presentation of a broadening claim. Rather, it can be the indication in the oath accompanying the reissue application that the claims will be broadened at some point in the application.

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