The reissue oath/declaration as required by 37 CFR 1.175 is an essential part of a reissue application and must be filed with the application, or within the time period set under 37 CFR 1.53(f) along with the required surcharge as set forth in 37 CFR 1.16(f) in order to avoid abandonment. The question of the sufficiency of the reissue oath/declaration filed under 37 CFR 1.175 must in each case be reviewed and decided personally by the primary examiner.

Much of the required content of a reissue oath or declaration will differ based on the filing date of the reissue application. However, all reissue oaths or declarations must contain the following:

• (A) A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid—
  • (1) by reason of a defective specification or drawing, or
  • (2) by reason of the patentee claiming more or less than patentee had the right to claim in the patent; and
• (B) A statement of at least one error which is relied upon to support the reissue application, i.e., as the basis for the reissue.

Subsections I and II below describe the requirements for each of the aforementioned statements. See MPEP § 1414.01 for the remaining requirements for the reissue oath or declaration in a reissue application filed on or after September 16, 2012; MPEP § 1414.02 for the remaining requirements of a reissue oath or declaration in a reissue application filed before September 16, 2012; and MPEP § 1414.03 for supplemental reissue oaths or declarations in reissue applications filed before September 16, 2012.

I. A STATEMENT 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 PATENTEE HAD THE RIGHT TO CLAIM IN THE PATENT

In order to satisfy this requirement, a declaration can state for example:

• 1. “Applicant believes the original patent to be partly inoperative or invalid by reason of a defective specification or drawing.”
• 2. “Applicant believes the original patent to be partly inoperative or invalid by reason of the patentee claiming more than patentee had a right to claim in the patent.”
• 3. “Applicant believes the original patent to be partly inoperative or invalid by reason of the patentee claiming less than patentee had a right to claim in the patent.”

It should be noted that the reissue oath/declaration must also satisfy the requirement for a statement of at least one error being relied upon as the basis for reissue, in the manner set forth in subsection II below.

Even though only one error upon which reissue is based needs to be described in the reissue oath/declaration, if PTO/SB/51 or PTO/SB/52 form is used (or PTO/AIA/05 or PTO/AIA/06, for applications filed on or after September 16, 2012), applicant needs to check the appropriate box(es) on the form identifying each of the reasons why the patent is wholly or partly inoperative or invalid. Even if a PTO form is not used, applicant needs to state each of the reasons why the patent is wholly or partly inoperative or invalid in the reissue oath/declaration.

Form paragraph 14.01.05 may be used where the reissue oath/declaration does not provide the required statement as to applicant’s belief that the original patent is wholly or partly inoperative or invalid.

II. A STATEMENT OF AT LEAST ONE ERROR WHICH IS RELIED UPON TO SUPPORT THE REISSUE APPLICATION (I.E., THE BASIS FOR THE REISSUE)

• (A) A reissue applicant must acknowledge the existence of an error in the specification, drawings, or claims, which error causes the original patent to be defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). A change or departure from the original specification or claims represents an “error” in the original patent under 35 U.S.C. 251. See MPEP § 1402 for a discussion of grounds for filing a reissue that may constitute the “error” required by 35 U.S.C. 251. Not all changes with respect to the patent constitute the “error” required by 35 U.S.C. 251. It is noted that an error to be corrected under 35 U.S.C. 251 may be the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims. See In re Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011).
• (B) Applicant need only specify in the reissue oath/declaration one of the errors upon which reissue is based. Where applicant specifies one such error, this requirement of a reissue oath/declaration is satisfied. Applicant may specify more than one error and examiners should not object that more than one error is specified in the reissue oath/declaration.

  Where more than one error is specified in the oath/declaration and some of the designated “errors” are found to not be “errors” under 35 U.S.C. 251, any remaining error which is an error under 35 U.S.C. 251 will still support the reissue.

  The “at least one error” pursuant to 35 U.S.C. 251which is relied upon to support the reissue application must be specifically identified in the oath/declaration. It is not necessary, however, to point out how (or when) the error arose or occurred. Further, it is not necessary to point out how (or when) the error was discovered. If an applicant chooses to point out these matters, the statements directed to these matters will not be reviewed by the examiner, and the applicant should be so informed in the next Office action. What is needed for the oath/declaration statement as to error is the identification of “at least one error” relied upon.

  For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. If the initial reissue oath/declaration “states at least one error” in the original patent, and, in addition, recites the specific corrective action taken in the reissue application, the oath/declaration would be considered acceptable, even though the corrective action statement is not required.

• (C) It is not sufficient for an oath/declaration to merely state “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.” Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.

  A statement in the oath/declaration of “…failure to include a claim directed to …” and then reciting all the limitations of a newly added claim, would not be considered a sufficient “error” statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that “this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10.” In both cases, the error has not been identified.

  Likewise, a statement of the error as “…the inclusion of claims 3-5 which were unduly broad…” and then canceling claims 3-5, would not be considered a sufficient “error” statement because applicant has not pointed out what the canceled claims lacked that the remaining claims contain. The statement of what the remaining claims contain need not identify specific limitations, but rather may provide a general identification, such as “Claims 3-5 did not provide for any of the tracking mechanisms of claims 6-12, nor did they provide an attachment mechanism such as those in claims 1-2 and 9-16.”

• (D) For continuation or divisional reissue applications:
  • (1) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration that identifies a new error or a statement explaining compliance with 37 CFR 1.175(f)(2) if appropriate. If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2) for a reissue application filed on or after September 16, 2012. For these applications, a petition under 37 CFR 1.183 is not needed. For a reissue application filed before September 16, 2012, a petition under 37 CFR 1.183 will be needed to waive pre-AIA 37 CFR 1.175(e) in order to rely on the same error identified in the parent but being corrected in a different way. See 37 CFR 1.175(f)(2) for reissue applications filed on or after September 16, 2012, and pre-AIA 37 CFR 1.175(e) for reissue applications filed before September 16, 2012. One of form paragraphs 14.01.01, 14.01.02, or 14.01.03 may be used.
  • (2) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is, or will be abandoned, the copy of the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP), and the examiner should check to ensure that the oath/declaration identifies an error which is still being corrected in the continuation application. For reissue applications filed before September 16, 2012, pursuant to pre-AIA 37 CFR 1.175(b)(1), for any error corrected via the preliminary amendment which is not covered by the oath or declaration submitted in the parent reissue application, applicant must submit a supplemental oath/declaration stating that such error arose without any deceptive intention on the part of the applicant. See MPEP § 1414.03.
  • (3) Where a divisional reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, the reissue oath/declaration should be accepted by OPAP, because it is an oath/declaration, though it may be improper under 35 U.S.C. 251. The examiner should check the copy of the oath/declaration to ensure that it identifies an error being corrected by the divisional reissue application. The copy of the oath/declaration from the parent reissue application may or may not cover an error being corrected by the divisional reissue application because the divisional reissue application is (by definition) directed to a new invention. If the copy of the oath/declaration does not cover an error being corrected by the divisional reissue application, the examiner should reject the claims of the divisional reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the divisional reissue application, and require a new oath/declaration. Even where the divisional reissue application was filed on or after September 16, 2012, a new reissue oath/declaration will be required, because the divisional reissue application is a new application, and a new application requires the error to be set forth in the oath/declaration. If the copy of the reissue oath/declaration from the parent reissue application does in fact cover an error being corrected in the divisional reissue application, no such rejection should be made. See MPEP § 1414.01. Form paragraph 14.01.01 may be used where the reissue oath/declaration does not identify an error.

Where the reissue oath/declaration does identify an error or errors, the oath/declaration must be checked carefully to ensure that at least one of the errors identified is indeed an “error” which will support the filing of a reissue, i.e., an “error” that will provide grounds for reissue of the patent. See MPEP § 1402. If the error identified in the oath/declaration is not an appropriate error upon which a reissue can be based, then the oath/declaration must be indicated to be defective in the examiner’s Office action.

Form paragraphs 14.01.02 and 14.01.03 may be used where the reissue oath/declaration fails to provide at least one error upon which a reissue can be based.