In a reissue application, the examiner should consider all references that have been cited during the original prosecution of the patent, and list on a PTO-892 form any reference again cited/applied in the reissue application. See MPEP § 1455. It is noted that a reference cited in the original patent may no longer be relevant, e.g., in view of a narrowing of the claim scope in the reissue application, and therefore may not need to be listed on the PTO-892 form.
Should applicants wish to ensure that all of the references which were cited in the original patent are considered and cited in the reissue application, an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and 1.98 should be filed in the reissue application. See MPEP § 609. The requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS has been eliminated, unless required by the Office. 37 CFR 1.98(a)(2) requires a legible copy of:
- (A) each foreign patent;
- (B) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
- (C) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion; and
- (D) all other information or that portion which caused it to be listed.
See MPEP § 609.04(a). The Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the references cited in the patent for which reissue is sought. Rather, applicant has a continuing duty under 37 CFR 1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in the reissue application. See MPEP §1418.
Where a copy of a reference other than a U.S. patent or U.S. patent application publication that was cited in the original patent is not available and cannot be obtained through any source other than the reissue applicant (who has not submitted the copy), the examiner will not consider that reference and therefore, will not list that reference on the PTO-892 form. If that reference was listed by the reissue applicant on a PTO/SB/08 form but a copy has not been provided, the examiner will line-through the reference to indicate that the reference has not been considered.