The examiner completes the Issue Classification information in the same manner as for a non-reissue application. In addition, a copy of an internal review form must also be completed.
II. CHANGES TO THE ORIGINAL PATENT
The specifications of reissue patents will be printed in such a manner as to show the changes over the original patent text by enclosing any material omitted by the reissue in heavy brackets [ ] and printing material added by the reissue in italics.37 CFR 1.173 (see MPEP § 1411) requires the specification of a reissue application to be presented in a specified form, specifically designed to facilitate this different manner of printing, as well as for other reasons.
The printed reissue patent specification will carry the following heading, which will be added by the Office of Data Management:
“Matter enclosed in heavy brackets [ ] appears in the original patent but forms no part of this reissue specification; matter printed in italics indicates the additions made by reissue.”
The examiners should see that the specification is in proper form for printing. Examiners should carefully check the entry of all amendments to ensure that the changes directed by applicant will be accurately printed in any reissue patent that may ultimately issue. Matter appearing in the original patent which is omitted by reissue should be enclosed in brackets, while matter added by reissue should be underlined. Any material added by amendment in the reissue application (as underlined text) which is later canceled should be crossed through, and not bracketed. Material canceled from the original patent should be enclosed in brackets, and not lined through.
All the claims of the original patent should appear in the reissue patent, with canceled patent claims being enclosed in brackets.
III. CLAIM NUMBERING
No renumbering of the original patent claims is permitted, even if the dependency of a dependent patent claim is changed by reissue so that it is to be dependent on a subsequent higher numbered claim.
When a dependent claim in a reissue application depends upon a claim which has been canceled, and the dependent claim is not thereafter made dependent upon a pending claim, such a dependent claim must be rewritten in independent form.
New claims added during the prosecution of the reissue application should follow the number of the highest numbered patent claim and should be completely underlined to indicate they are to be printed in italics on the printed patent. Often, as a result of the prosecution and examination, some new claims are canceled while other new claims remain. When the reissue application is allowed, any claims remaining which are additional to the patent claims (i.e., claims added via the reissue application) should be renumbered in sequence starting with the number next higher than the number of the last claim in the original patent (the printed patent). Therefore, the number of claims allowed will not necessarily correspond to the number of the last claim in the reissue application, as allowed. The number of claims appearing in the “Total Claims Allowed” box on the Issue Classification sheet at the time of allowance should be consistent with the number of claims indicated as allowable on the Notice of Allowability (Form PTOL-37).
IV. CLAIM DESIGNATED FOR PRINTING
At least one claim of an allowable reissue application must be designated for printing in the Official Gazette. Whenever at least one claim has been amended or added in the reissue, the claim (claims) designated for printing must be (or include) a claim which has been changed or added by the reissue. A canceled claim is not to be designated as the claim for the Official Gazette.
If there is no change in the claims of the allowable reissue application (i.e., when they are the same as the claims of the original patent) or, if the only change in the claims is the cancellation of claims, then the most representative pending allowed claim is designated for printing in the Official Gazette.
V. PROVIDING PROPER FORMAT
Where a reissue application has not been prepared in the above-indicated manner, the examiner may obtain from the applicant a clean copy of the reissue specification prepared in the indicated form, or a proper submission of a previously improperly submitted amendment. However, if the deletions from the original patent are small, the reissue application can be prepared for issue by putting the bracketed inserts at the appropriate places and suitably numbering the added claims.
When applicant submits a clean copy of the reissue specification, or a proper submission of a previous improper amendment, a supplemental reissue declaration should not be provided to address this submission, because the correction of format does not correct a 35 U.S.C. 251 error in the patent.
VI. PARENT APPLICATION DATA
All parent application data on the bibliographic data sheet of the original patent file (or front face of the original patent file wrapper if the original patent is a paper file) should be present on the bibliographic data sheet of the reissue application.
It sometimes happens that the reissue is a continuation reissue application of another reissue application, and there is also original-patent parent application data. The examiner should ensure that the parent application data on the original patent is properly combined with the parent application data of the reissue, in the text of the specification (if present therein) and on the bibliographic data sheet. The combined statement as to parent application data should be checked carefully for proper bracketing and underlining.
VII. REFERENCES CITED AND PRINTED
The examiner should list on a PTO-892 form any reference that was cited during the original prosecution of the patent which is again cited/applied in the reissue application. It is noted that the Office will not print in the reissue patent “References Cited” section any reference cited in the patent but not again cited in the reissue application. Accordingly, should an applicant wish to ensure that all of the references which were cited in the original patent are 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. A patent cannot be reissued solely for the purpose of adding citations of additional prior art.
VIII. EXAMINER’S AMENDMENT AND REISSUE OATH OR DECLARATION
When it is necessary to amend the reissue application in order to place the application in condition for allowance, the examiner may:
- (A) request that applicant provide the amendments (e.g., by electronic filing or by hand-carry); or
- (B) make the amendments, with the applicant’s approval, by a formal examiner’s amendment.
If the changes are made by a formal examiner’s amendment, the entire paragraph(s) or claim(s) being amended need not be presented in rewritten form for any deletions or additions. Changes to the specification including the claims of an application made by the Office in an examiner’s amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner’s amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. 37 CFR 1.121(g).
For applications filed on or after September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, a supplemental reissue oath or declaration is not required. However, where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue, the applicant must explicitly identify on the record an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment). See 37 CFR 1.175(d). Identification of the error must be conspicuous and clear, and must comply with 35 U.S.C. 251.
If the reissue application was filed before September 16, 2012 and the amendment corrects an “error” under 35 U.S.C. 251, then a supplemental oath or declaration will be required. See MPEP § 1414.03 and MPEP § 1444. The examiner should telephone applicant and request the supplemental oath or declaration, which must be filed before the application can be counted as an allowance.
IX. FINAL REVIEW OF THE REISSUE APPLICATION BY THE EXAMINER
Before forwarding a reissue application to the Technology Center (TC) Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS) for final review, the examiner should complete and initial an Examiner Reissue Checklist. A copy of the checklist should be available from the TQAS or SPRS.