1443 Initial Examiner Review [R-07.2022]
As part of an examiner’s preparation for the examination of a reissue application, the Examiner Reissue Guide and Checklist should be consulted for basic guidance and suggestions for handling the prosecution. The Technology Center (TC) Training Quality Assurance Specialists (TQASs) or Supervisory Patent Reexamination Specialist (SPRS) should make the Guide and Checklist available at the time a reissue application is docketed to an examiner.
On initial receipt of a reissue application, the examiner should inspect the submission under 37 CFR 1.172 as to documentary evidence of a chain of title from the original owner to the assignee to determine whether the consent requirement of 37 CFR 1.172 has been met. The examiner will compare the consent and documentary evidence of ownership; the assignee indicated by the documentary evidence must be the same assignee which signed the consent. Also, the person who signs the consent for the assignee and the person who signs the submission of evidence of ownership for the assignee must both be persons having authority to do so. See also MPEP §§ 324 and 325. If an assignment document is not attached with the 37 CFR 3.73 statement, but rather the reel and frame number where the assignment document is recorded in the USPTO is referenced in the 37 CFR 3.73 statement, it will be presumed that the assignment recorded in the USPTO supports the statement identifying the assignee. It will not be necessary for the examiner to obtain a copy of the recorded assignment document.
Where the application is assigned, and there is no submission under 37 CFR 1.172 as to documentary evidence in the application, the examiner should require the submission using form paragraph 14.16. Once the submission under 37 CFR 1.172 as to documentary evidence is received, it must be compared with the consent to determine whether the assignee indicated by the documentary evidence is the same assignee which signed the consent. See MPEP § 1410.02 for further discussion as to the required consent and documentary evidence.
Where there is a statement of record by the applicant that the application is not assigned, and Office records do not cast doubt on the statement, there should be no submission under 37 CFR 1.172 as to documentary evidence of ownership in the application, and none should be required by the examiner.
The filing of all reissue applications, except for continued prosecution applications (CPAs) (only available for design applications) filed under 37 CFR 1.53(d), must be announced in the Official Gazette. Accordingly, for any reissue application other than a CPA, the examiner should determine if the filing of the reissue application has been announced in the Official Gazette as provided in 37 CFR 1.11(b). The contents entry on the Patent Data Portal Content History should be checked for the presence of “NRE” and “NOTICE OF REISSUE PUBLISHED IN OFFICIAL GAZETTE” entries in the contents, and the date of publication. If the filing of the reissue application has not been announced in the Official Gazette, jurisdiction over the reissue application should be returned to the Office of Patent Application Processing (Special Processing) to handle the announcement. The examiner should not further act on the reissue until 2 months after announcement of the filing of the reissue has appeared in the Official Gazette. See MPEP § 1440.
The examiner should determine if there is concurrent litigation, and if so, the status thereof (MPEP § 1442.01), and whether the reissue file history has been appropriately marked. Note MPEP § 1404.
The examiner should determine if a protest has been filed, and if so, it should be handled as set forth in MPEP § 1901.06. For a discussion of protests under 37 CFR 1.291 in reissue applications, see MPEP § 1441.01.
The examiner should determine whether the patent is involved in an interference, and if so, should refer to MPEP § 1449.01 before taking any action on the reissue application.
The examiner should verify that all certificate of correction changes have been properly incorporated into the reissue application. See MPEP § 1411.01.
The examiner should verify that the patent on which the reissue application is based has not expired, either because its term has run or because required maintenance fees have not been paid. Once a patent has expired, the Director of the USPTO no longer has the authority under 35 U.S.C. 251 to reissue the patent. See In re Morgan, 990 F.2d 1230, 26 USPQ2d 1392 (Fed. Cir. 1993). See also MPEP § 1415.01.