37 C.F.R. §§ 1.171–1.179

§1.171. Application for reissue.

37 C.F.R. § 1.171

An application for reissue must contain the same parts required for an application for an original patent, complying with all the rules relating thereto except as otherwise provided, and in addition, must comply with the requirements of the rules relating to reissue applications.

Notes, amendments, and revision history

Amendments

[62 FR 53196, Oct. 10, 1997]

Authority

Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

Amendments

[62 FR 53196, Oct. 10, 1997]

§1.172. Reissue applicant.

37 C.F.R. § 1.172

(a)

The reissue applicant is the original patentee, or the current patent owner if there has been an assignment. A reissue application must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. All assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(c) of this chapter.

(b)

A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.

Notes, amendments, and revision history

Amendments

[77 FR 48821, Aug. 14, 2012]

Authority

Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

Amendments

[77 FR 48821, Aug. 14, 2012]

§1.173. Reissue specification, drawings, and amendments.

37 C.F.R. § 1.173

(a)

Contents of a reissue application. An application for reissue must contain the entire specification, including the claims, and the drawings of the patent. No new matter shall be introduced into the application. No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent, pursuant to 35 U.S.C. 251.

(1)

Specification, including claims. The entire specification, including the claims, of the patent for which reissue is requested must be furnished in the form of a copy of the printed patent, in double column format, each page on only one side of a single sheet of paper. If an amendment of the reissue application is to be included, it must be made pursuant to paragraph (b) of this section. The formal requirements for papers making up the reissue application other than those set forth in this section are set out in § 1.52. Additionally, a copy of any disclaimer (§ 1.321), certificate of correction (§§ 1.322 through 1.324), or reexamination certificate (§ 1.570) issued in the patent must be included. (See also § 1.178).

(2)

Drawings. Applicant must submit a clean copy of each drawing sheet of the printed patent at the time the reissue application is filed. If such copy complies with § 1.84, no further drawings will be required. Where a drawing of the reissue application is to include any changes relative to the patent being reissued, the changes to the drawing must be made in accordance with paragraph (b)(3) of this section. The Office will not transfer the drawings from the patent file to the reissue application.

(b)

Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:

(1)

Specification other than the claims, “Large Tables” (§ 1.58(c)), a “Computer Program Listing Appendix” (§ 1.96(c)), a “Sequence Listing” (§ 1.821(c)), or a “Sequence Listing XML” (§ 1.831(a)).

(i)

Changes to the specification, other than to the claims, “Large Tables” (§ 1.58(c)), a “Computer Program Listing Appendix” (§ 1.96(c)), a “Sequence Listing” (§ 1.821(c)), or a “Sequence Listing XML” (§ 1.831(a)), must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification where any added or rewritten paragraph is located must be identified.

(ii)

Changes to “Large Tables,” a “Computer Program Listing Appendix,” a “Sequence Listing,” or a “Sequence Listing XML” must be made in accordance with § 1.58(g) for “Large Tables,” § 1.96(c)(5) for a “Computer Program Listing Appendix,” § 1.825 for a “Sequence Listing,” and § 1.835 for a “Sequence Listing XML.”

(2)

Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.

(3)

Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.” All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.

(i)

A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Marked-up Drawings” and must be presented in the amendment or remarks section that explains the change to the drawings.

(ii)

A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.

(c)

Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.

(d)

Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding “Large Tables” (§ 1.58(c)), a “Computer Program Listing Appendix” (§ 1.96(c)), a “Sequence Listing” (§ 1.821(c)), and a “Sequence Listing XML” (§ 1.831(a)) upon filing or by an amendment paper in the reissue application, must include the following markings:

(1)

The matter to be omitted by reissue must be enclosed in brackets; and

(2)

The matter to be added by reissue must be underlined.

(e)

Numbering of patent claims preserved. Patent claims may not be renumbered. The numbering of any claim added in the reissue application must follow the number of the highest numbered patent claim.

(f)

Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.

(g)

Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.

Notes, amendments, and revision history

Amendments

[65 FR 54675, Sept. 8, 2000, as amended at 68 FR 38630, June 30, 2003; 69 FR 56543, Sept. 21, 2004; 86 FR 57048, Oct. 14, 2021; 87 FR 30817, May 20, 2022]

Authority

Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

Amendments

[65 FR 54675, Sept. 8, 2000, as amended at 68 FR 38630, June 30, 2003; 69 FR 56543, Sept. 21, 2004; 86 FR 57048, Oct. 14, 2021; 87 FR 30817, May 20, 2022]

§1.174. Reserved

37 C.F.R. § 1.174

Notes, amendments, and revision history

Authority

Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

§1.175. Inventor's oath or declaration for a reissue application.

37 C.F.R. § 1.175

(a)

The inventor's oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.

(b)

If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.

(c)

The inventor, or each individual who is a joint inventor of a claimed invention, in a reissue application must execute an oath or declaration for the reissue application, except as provided for in § 1.64, and except that the inventor's oath or declaration for a reissue application may be signed by the assignee of the entire interest if:

(1)

The application does not seek to enlarge the scope of the claims of the original patent; or

(2)

The application for the original patent was filed under § 1.46 by the assignee of the entire interest.

(d)

If errors previously identified in the inventor's oath or declaration for a reissue application pursuant to paragraph (a) of this section are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.

(e)

The inventor's oath or declaration for a reissue application required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f), except that the provisions of § 1.53(f)(3) do not apply to a reissue application.

(f)

(1)

The requirement for the inventor's oath or declaration for a continuing reissue application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed reissue application may be satisfied by a copy of the inventor's oath or declaration from the earlier-filed reissue application, provided that:

(i)

The inventor, or each individual who is a joint inventor of a claimed invention, in the reissue application executed an inventor's oath or declaration for the earlier-filed reissue application, except as provided for in § 1.64;

(ii)

The continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or

(iii)

The application for the original patent was filed under § 1.46 by the assignee of the entire interest.

(2)

If all errors identified in the inventor's oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.

(g)

An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1), will be placed in the file record of the reissue application, but may not necessarily be reviewed by the Office.

Notes, amendments, and revision history

Amendments

[77 FR 48821, Aug. 14, 2012, as amended at 80 FR 17964, Apr. 2, 2015]

Authority

Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

Amendments

[77 FR 48821, Aug. 14, 2012, as amended at 80 FR 17964, Apr. 2, 2015]

§1.176. Examination of reissue.

37 C.F.R. § 1.176

(a)

A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.

(b)

Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.

Notes, amendments, and revision history

Amendments

[65 FR 54676, Sept. 8, 2000]

Authority

Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

Amendments

[65 FR 54676, Sept. 8, 2000]

§1.177. Issuance of multiple reissue patents.

37 C.F.R. § 1.177

(a)

The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.

(b)

If applicant files more than one application for the reissue of a single patent, each claim of the patent being reissued must be presented in each of the reissue applications as an amended, unamended, or canceled (shown in brackets) claim, with each such claim bearing the same number as in the patent being reissued. The same claim of the patent being reissued may not be presented in its original unamended form for examination in more than one of such multiple reissue applications. The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim.

(c)

If any one of the several reissue applications by itself fails to correct an error in the original patent as required by 35 U.S.C. 251 but is otherwise in condition for allowance, the Office may suspend action in the allowable application until all issues are resolved as to at least one of the remaining reissue applications. The Office may also merge two or more of the multiple reissue applications into a single reissue application. No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself.

Notes, amendments, and revision history

Amendments

[65 FR 54676, Sept. 8, 2000]

Authority

Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

Amendments

[65 FR 54676, Sept. 8, 2000]

§1.178. Original patent; continuing duty of applicant.

37 C.F.R. § 1.178

(a)

The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.

(b)

In any reissue application before the Office, the applicant must call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings (see also § 1.173(a)(1)).

Notes, amendments, and revision history

Amendments

[65 FR 54676, Sept. 8, 2000, as amended at 69 FR 56544, Sept. 21, 2004; 77 FR 46625, Aug. 6, 2012]

Authority

Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

Amendments

[65 FR 54676, Sept. 8, 2000, as amended at 69 FR 56544, Sept. 21, 2004; 77 FR 46625, Aug. 6, 2012]

§1.179. Reserved

37 C.F.R. § 1.179

Notes, amendments, and revision history

Authority

Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Authority

Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

Source

Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.