37 CFR 1.171 Application for reissue.
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.
37 CFR 1.173 Reissue specification, drawings, and amendments.
- (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.
The specification (including the claims and any drawings) of the reissue application is the copy of the printed patent for which reissue is requested that is submitted by applicant as part of the initial application papers. The copy of the printed patent must be submitted in double column format, each page of double column format being on only one side of the piece of paper. It should be noted that a re-typed specification is not acceptable in a reissue application; the full copy of the printed patent must be used. In addition, an applicant for reissue is required to file a reissue oath or declaration which, in addition to complying with 37 CFR 1.63, must comply with 37 CFR 1.175. Where the patent has been assigned, the reissue applicant must also provide a consent of assignee to the reissue and evidence of ownership. Where the patent has not been assigned, the reissue applicant should affirmatively state that the patent is not assigned.
An amendment may be submitted at the time of filing of a reissue application. The amendment may be made either by:
- (A) physically incorporating the changes within the specification by cutting the column of the printed patent and inserting the added material and rejoining the remainder of the column and then joining the resulting modified column to the other column of the printed patent. Markings pursuant to 37 CFR 1.173(d) must be used to show the changes. The columnar structure of the printed patent must be preserved, and the physically modified page must comply with 37 CFR 1.52(a)(1). As to compliance with 37 CFR 1.52(a)(1)(iv), the “written either by a typewriter or machine printer in permanent dark ink or its equivalent” requirement is deemed to be satisfied where a caret and line are drawn from a position within the text to a newly added phrase, clause, sentence, etc. typed legibly in the margin; or
- (B) providing a separate amendment paper with the reissue application.
The presentation of the insertions or deletions as part of the original reissue specification is an amendment under 37 CFR 1.173(b). An amendment of the reissue application made at the time of filing of the reissue application must be made in accordance with 37 CFR 1.173(b)-(e) and (g); see MPEP § 1453. Note that the provisions of 37 CFR 1.53(b), effective December 18, 2013, stating that an application may be accorded a filing date “with or without” claims, does not apply in reissue applications, as 37 CFR 1.173(a)(1) requires the filing of the entire specification, including the claims of the original patent. A preliminary amendment cancelling all original claims without presenting any new claims would be inappropriate under 37 CFR 1.115(b)(1). If an application is filed without claims, but otherwise complies with 37 CFR 1.53(b) and the reissue rules, the Office of Patent Application Processing (OPAP) will accord a filing date and send out a notice of missing parts setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 37 CFR 1.16(f).
If the changes to be made to the patent are so extensive that reading and understanding the specification is extremely difficult and error-prone, a clean, typed copy of the specification may be submitted if accompanied by a grantable petition under 37 CFR 1.183 for waiver of 37 CFR 1.125(d) and 37 CFR 1.173(a)(1).
Pursuant to 37 CFR 1.173(a)(1), applicant is required to include a copy of any disclaimer (37 CFR 1.321), certificate of correction (37 CFR 1.322–1.324), reexamination certificate (37 CFR 1.570 and 1.997) or certificate from a trial before the Patent Trial and Appeal Board (PTAB) (37 CFR 42.80) issued in the patent for which reissue is requested. If there was a prior change to the patent (made via a certificate, reissue of the patent, disclaimer, etc.), the first amendment of the subject reissue application must be made relative to the patent as changed by the prior proceeding or other mechanism for changing the patent.
It should also be noted that 37 CFR 1.178(b) requires reissue applicants to 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, reissues, reexaminations, or litigation (litigation covers any papers filed in the court or issued by the court, such as, for example, motions, pleadings, and court decisions including court orders) and the results of such proceedings. This duty is a continuing duty, and runs from the time the reissue application is filed until the reissue application is abandoned or issues as a reissue patent.
It is no longer required that the reissue applicant physically surrender the original patent, see MPEP § 1416.
When appropriate, the reissue applicant must provide a claim for priority/benefit under 35 U.S.C. 119 or 120 in the reissue application. Benefit and priority claims made in the patent for which reissue is sought do not carry over into the reissue application. For any reissue filed on or after September 16, 2012, the priority/benefit claim information must be in an application data sheet (ADS) under 37 CFR 1.76 and must be made within the time period set forth in 37 CFR 1.55 and 1.78 unless a petition for an unintentionally delayed priority or benefit claim is filed. See MPEP § 1402, subsections III and IV, for more information. An ADS is also required if an application under 35 U.S.C. 111(a) is made by a person other than the inventor.
Where appropriate, the reissue applicant may also file an Information Disclosure Statement.
A reissue application that discloses nucleotide and/or amino acid sequences must comply with the sequence rules (37 CFR 1.821–1.825). See MPEP § 2422.03et seq. for detailed information pertaining to the submission of sequence listings.
For expedited processing, new and continuing reissue application filings under 37 CFR 1.53(b) may be addressed to: Mail Stop REISSUE, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. Mail Stop REISSUE should only be used for the initial filing of reissue applications, and should not be used for any subsequently filed correspondence in reissue applications. Reissue applications may be filed through the Office’s web-based electronic filing system (EFS-Web). See MPEP § 502.05. When filing a reissue application electronically, an applicant should choose the “reissue” radio button. Regardless of the manner of filing, all new reissue filings should include a copy of a completed Reissue Patent Application Transmittal Form (PTO/AIA/50) to ensure that the filing of the new application will be recognized as a reissue application.
The oath or declaration, any matters ancillary thereto (such as the consent of assignee), and the basic filing fee, search fee, and examination fee may be submitted after the filing date pursuant to 37 CFR 1.53(f).
A guide for filing reissue applications on or after September 16, 2012 is available at www.uspto.gov/sites/default/files/forms/ uspto_reissue_ads_guide_Sept2014.pdf
Form PTO/AIA/50, Reissue Patent Application Transmittal, which may be used for filing reissue applications, is reproduced below.