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.
MPEP § 1414 describes 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.
II. REVIEW OF REISSUE OATH OR DECLARATION
An initial reissue oath/declaration is submitted with the reissue application (or within the time period set for filing the oath/declaration in a Notice To File Missing Parts under 37 CFR 1.53(f)). Where the reissue oath/declaration fails to comply with 37 CFR 1.175(a), the examiner will so notify the applicant in an Office action, rejecting the claims under 35 U.S.C. 251. In reply to the Office action, a replacement reissue oath/declaration should be submitted dealing with the noted defects in the reissue oath/declaration.
The examiner should carefully review the reissue oath/declaration in conjunction with the discussion in MPEP §§ 1414 et seq. in order to ensure that each element is provided in the oath/declaration. If the examiner’s review of the oath/declaration reveals a lack of compliance with any of the requirements of 37 CFR 1.175, a rejection of all the claims under 35 U.S.C. 251 should be made on the basis that the reissue oath/declaration is insufficient.
In preparing an Office action, the examiner should use form paragraphs 14.01 through 14.01.06 to state the objection(s) to the oath/declaration, i.e., the defects in the oath/declaration. These form paragraphs are reproduced in MPEP § 1414. The examiner should then use form paragraph 14.14 to reject the claims under 35 U.S.C. 251, based upon the improper oath/declaration.
¶ 14.14 Rejection, Defective Reissue Oath or Declaration
The nature of the defect(s) in the  is set forth in the discussion above in this Office action.
A lack of the inventor’s signature on a reissue oath/declaration (except as otherwise provided in 37 CFR 1.64 and 1.175(c) for applications filed on or after September 16, 2012, and pre-AIA 37 CFR 1.42, 1.43, and 1.47 and in 37 CFR 1.172 for applications filed before September 16, 2012) would be considered a lack of compliance with 37 CFR 1.175(a) and result in a rejection, including final rejection, of all the claims on the basis that the reissue oath/declaration is insufficient. If the unsigned reissue oath/declaration is submitted as part of a reply which is otherwise properly signed and responsive to the outstanding Office action, the reply should be accepted by the examiner as proper and responsive, and the oath/declaration considered fully in the next Office action. The reply should not be treated as an unsigned or improperly signed amendment (see MPEP § 714.01(a)), nor do the holdings of Ex parte Quayle apply in this situation. The lack of signature, along with any other oath/declaration deficiencies, should be noted in the next Office action rejecting the claims as being based upon an insufficient reissue oath/declaration.
III. ERRORS PREVIOUSLY IDENTIFIED NO LONGER RELIED UPON AS THE BASIS FOR REISSUE
A different situation may arise where the initial reissue oath/declaration does properly identify one or more errors under 35 U.S.C. 251 as being the basis for reissue, however, because of changes or amendments made during prosecution, none of the identified errors are relied upon any more. The required action will differ based on the filing date of the reissue application.
A. Application Filed on or After September 16, 2012
For reissue applications filed on or after September 16, 2012, a supplemental reissue oath or declaration is not required where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue. However, the applicant must explicitly identify an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment). See 37 CFR 1.175(f)(2). Identification of the error must be conspicuous and clear and must comply with 35 U.S.C. 251. Additionally, since applicant is not required to identify the new error in a reissue oath/declaration, identification of the error may not be deferred until the application is otherwise in condition for allowance.
B. Application Filed Before September 16, 2012
For reissue applications filed before September 16, 2012, where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue, a supplemental oath/declaration will be needed to identify at least one error now being relied upon as the basis for reissue, even if a prior oath/declaration was earlier found proper by the examiner. The supplemental oath/declaration is not required to indicate that the error(s) identified in the prior oath(s)/declaration(s) is/are no longer being corrected. In this instance, applicant’s submission of the supplemental reissue oath/declaration to obviate the rejection under pre-AIA 35 U.S.C. 251 may, at applicant’s option, be deferred until the application is otherwise in condition for allowance. The submission can be deferred because a proper statement of error was provided in the initial reissue oath/declaration, and therefore applicant does not need to supply a supplemental reissue oath/declaration each time the error being corrected is changed. Applicant need only conspicuously and clearly identify the new error in the remarks section of the reply and request that submission of the supplemental reissue oath/declaration be deferred until allowance. Such a request will be considered a complete reply to the rejection.
IV. SUPPLEMENTAL REISSUE OATH/DECLARATION UNDER PRE-AIA 37 CFR 1.175(b)(1)
[Editor Note: This subsection only applies to reissue applications filed before September 16, 2012.]
For applications filed before September 16, 2012, pre-AIA 37 CFR 1.175(b)(1) requires that for any error corrected which is not covered by a previously submitted compliant reissue oath or declaration, applicant must submit a supplemental oath or declaration stating that every such error arose without any deceptive intention on the part of the applicant.
Once the reissue oath/declaration is found to comply with pre-AIA 37 CFR 1.175(a), it is not required, nor is it suggested, that a new reissue oath/declaration be submitted together with each new amendment and correction of error in the patent. During the prosecution of a reissue application, amendments are often made and additional errors in the patent are corrected. The Office suggests that the reissue applicant wait until the case is in condition for allowance, and then submit a cumulative supplemental reissue oath/declaration pursuant to pre-AIA 37 CFR 1.175(b)(1).
A supplemental oath/declaration under pre-AIA 37 CFR 1.175(b)(1) must be submitted before allowance. It may be submitted with any reply before allowance. It may be submitted to overcome a rejection under 35 U.S.C. 251 made by the examiner, where it is indicated that the submission of the supplemental oath/declaration will overcome the rejection.
A supplemental oath/declaration under pre-AIA 37 CFR 1.175(b)(1) will be required where:
- (A) the application is otherwise (other than the need for this supplemental oath/declaration) in condition for allowance;
- (B) amendments or other corrections of errors in the patent have been made subsequent to the last oath/declaration filed in the application; and
- (C) at least one of the amendments or other corrections corrects an error under 35 U.S.C. 251.
When a supplemental oath/declaration under pre-AIA 37 CFR 1.175(b)(1) directed to the amendments or other corrections of error is required, the examiner is encouraged to telephone the applicant and request the submission of the supplemental oath/declaration by EFS-Web or fax. If the circumstances do not permit making a telephone call, or if applicant declines or is unable to promptly submit the oath/declaration, the examiner should issue a final Office action (final rejection) and use form paragraph 14.05.02.fti where the action issued is a second or subsequent action on the merits.
¶ 14.05.02.fti Supplemental Oath or Declaration Required Prior to Allowance – Application Filed Before Sept. 16, 2012
In accordance with pre-AIA 37 CFR 1.175(b)(1), for applications filed before September 16, 2012, a supplemental reissue oath/declaration must be received before this reissue application can be allowed.
Receipt of an appropriate supplemental oath/declaration will overcome this rejection. An example of acceptable language to be used in the supplemental oath/declaration is as follows:
“Every error in the patent which was corrected in the present reissue application, and is not covered by a prior oath/declaration submitted in this application, arose without any deceptive intention on the part of the applicant.”
See MPEP § 1414.01.
- 1. In bracket 1, list all claims in the reissue application.
- 2. In bracket 2, insert either –oath– or –declaration–.
- 3. This form paragraph is used in an Office action to: (a) remind applicant of the requirement for submission of the supplemental reissue oath/declaration under pre-AIA 37 CFR 1.175(b)(1) before allowance and (b) at the same time, reject all the claims since the reissue application is defective until the supplemental oath/declaration is submitted.
- 4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
- 5. Do not use this form paragraph if no amendments (or other corrections of the patent) have been made subsequent to the last oath/declaration filed in the case; instead allow the case.
- 6. This form paragraph cannot be used in an Ex parte Quayle action to require the supplemental oath/declaration, because the rejection under 35 U.S.C. 251 is more than a matter of form.
- 7. Do not use this form paragraph in an examiner’s amendment. The supplemental oath/declaration must be filed prior to mailing of the Notice of Allowability.
As noted above, the examiner will issue a final Office action where the application is otherwise in condition for allowance, and amendments or other corrections of error in the patent have been made subsequent to the last oath/declaration filed in the application. The examiner will be introducing (via form paragraph 14.05.02.fti) a rejection into the case for the first time in the prosecution, when the claims have been determined to be otherwise allowable. This introduction of a new ground of rejection under 35 U.S.C. 251 will not prevent the action from being made final on a second or subsequent action because of the following factors:
- (A) The finding of the case in condition for allowance is the first opportunity that the examiner has to make the rejection;
- (B) The rejection is being made in reply to, i.e., was caused by, an amendment of the application (to correct errors in the patent);
- (C) All applicants are on notice that this rejection will be made upon finding of the case otherwise in condition for allowance where errors have been corrected subsequent to the last oath/declaration filed in the case, so that the rejection should have been expected by applicant; and
- (D) The rejection will not prevent applicant from exercising any rights to cure the rejection, because applicant need only submit a supplemental oath/declaration with the above-described language, and it will be entered to cure the rejection.
Where the application is in condition for allowance and no amendments or other corrections of error in the patent have been made subsequent to the last oath/declaration filed in the application, a supplemental reissue oath/declaration under pre-AIA 37 CFR 1.175(b)(1) should not be required by the examiner. Instead, the examiner should issue a Notice of Allowability indicating allowance of the claims.
V. AFTER ALLOWANCE
Where applicant seeks to correct an error after allowance of the application, any amendment of the patent correcting the error must be submitted in accordance with 37 CFR 1.312. As set forth in 37 CFR 1.312, no amendment may be made as a matter of right in an application after the mailing of the notice of allowance. An amendment filed under 37 CFR 1.312 must be filed before or with the payment of the issue fee and may be entered on the recommendation of the primary examiner, and approved by the supervisory patent examiner, without withdrawing the case from issue.
Because the amendment seeks to correct an error in the patent, the amendment will affect the disclosure, the scope of a claim, or add a claim. Thus, in accordance with MPEP § 714.16, the remarks accompanying the amendment must fully and clearly state:
- (A) why the amendment is needed;
- (B) why the proposed amended or new claims require no additional search or examination;
- (C) why the claims are patentable; and
- (D) why they were not presented earlier.
For reissue applications filed before September 16, 2012, a supplemental reissue oath/declaration must accompany the amendment. The supplemental reissue oath/declaration must state that the error(s) to be corrected arose without any deceptive intention on the part of the applicant. The supplemental reissue oath/declaration submitted after allowance must be directed to the error(s) applicant seeks to correct after allowance. This oath/declaration need not cover any earlier errors, because all earlier errors should have been covered by a reissue oath/declaration submitted before allowance.
Occasionally, correcting an error after allowance does not include an amendment of the specification or claims of the patent. For example, the correction of the error could be the filing of a certified copy of the original foreign application (before the payment of the issue fee. See 37 CFR 1.55(g)(1) to obtain the right of foreign priority under 35 U.S.C. 119; see also Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968) (the claim for foreign priority had been timely made in the application for the original patent). In such a case, the requirements of 37 CFR 1.312 must still be met. This is so, because the correction of the patent is an amendment of the patent, even though no amendment is physically entered into the case. Thus, for a reissue oath/declaration submitted after allowance to correct an additional error (or errors), the reissue applicant must comply with 37 CFR 1.312 in the manner discussed above.