1410.01 Reissue Applicant and Inventor’s Oath or Declaration [R-07.2022]

I. REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012

[Editor Note: See subsection II, below, for reissue applications filed before September 16, 2012.]

For reissue applications filed on or after September 16, 2012, the reissue applicant is the original patentee, or the current patent owner, if there has been an assignment. However the inventor, or each individual inventor who is a joint inventor of a claimed invention, must execute an oath or declaration for the reissue application, except as otherwise provided in 37 CFR 1.175(c). A reissue applicant may file a substitute statement in lieu of the inventor’s oath or declaration as provided for in 37 CFR 1.64 (see MPEP § 604). In addition, the inventor’s oath or declaration may be signed by the assignee of the entire interest if (a) the reissue application does not seek to enlarge the scope of the claims of the original patent (37 CFR 1.175(c)(1)), or (b) the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest (37 CFR 1.175(c)(2)). When used in this context, “filed under 37 CFR 1.46 by the assignee of the entire interest” means that the assignee of the entire interest was named as the applicant in the applicant section of the application data sheet at the time of filing the underlying application that became the patent for which reissue is now being sought. In this situation, the reissue oath or declaration must be signed by a party authorized to act on behalf of the assignee of the entire interest and may not be signed by the patent practitioner of record. See MPEP § 325, subsection V, items (A), (B), and (D) for examples of a party authorized to act on behalf of the assignee of the entire interest in signing a reissue oath or declaration.

For continuation or divisional reissue applications, a copy of the inventor’s oath or declaration from the earlier-filed reissue application may be used, provided that: (1) the inventor, or each 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 in 37 CFR 1.64; (2) the continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or (3) the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest. See 37 CFR 1.175(f)(1). Depending on the circumstances, either Form PTO/AIA/05, Reissue Application Declaration by the Inventor, or Form PTO/AIA/06, Reissue Application Declaration by the Assignee, may be used to prepare a declaration in a reissue application. These forms are reproduced in MPEP § 1414, which includes additional information on the content of reissue oaths or declarations, such as when the statement of at least one error in a copy of the inventor’s oath or declaration from the earlier-filed reissue application will be accepted by the Office.

II. REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012

[Editor Note: See subsection I, above, for reissue applications filed on or after September 16, 2012.]

For reissue applications filed before September 16, 2012, the reissue application must be made by the inventor or the person(s) applying for a patent in place of the inventor as provided in pre-AIA 37 CFR 1.42, 1.43, and 1.47 (see MPEP § 409.01(b) and § 409.03et seq.), except that the application for reissue may be 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. See pre-AIA 35 U.S.C. 251, third paragraph.

The reissue oath must be signed and sworn to by all the inventors, or declaration made by all the inventors, except as otherwise provided in pre-AIA 37 CFR 1.42, 1.43, and 1.47. Alternatively, pursuant to pre-AIA 37 CFR 1.172, where the reissue application does not seek to enlarge the scope of any of the claims of the original patent, the reissue oath may be made and sworn to, or declaration made, by the assignee of the entire interest. In this situation, a reissue oath or declaration must be signed by a party authorized to act on behalf of the assignee of the entire interest. See MPEP § 324, subsection V. Depending on the circumstances, either Form PTO/SB/51, Reissue Application Declaration by the Inventor, or Form PTO/SB/52, Reissue Application Declaration by the Assignee, may be used to prepare a declaration in a reissue application. These forms are reproduced in MPEP § 1414, which includes additional information pertaining to reissue oaths or declarations.

III. ADDING OR DELETING AN INVENTOR

If an inventor is to be added in a reissue application, a proper reissue oath or declaration including the signatures of all of the inventors is required, except where the assignee of the entire interest can properly sign the reissue oath or declaration. If one or more inventors are being deleted in a reissue application, an oath or declaration must be supplied over the signatures of the remaining inventors, except where the assignee of the entire interest can properly sign the reissue oath or declaration. Note that although an inventor being deleted in a reissue application need not sign the oath or declaration, if that inventor to be deleted has any ownership interest in the patent (e.g., that inventor did not assign away their rights to the patent), the signature of that inventor must be supplied in a consent to the filing of the reissue application. See MPEP § 1410.02 as to consent of assignee and MPEP § 1412.04 as to correction of inventorship via reissue.