1457 Design Reissue Applications and Patents [R-08.2017]
A reissue application can be filed for a design patent in the same manner that a reissue application is filed for a utility patent. There are, however, a few procedures specific to design reissue applications as explained below.
I. EXPEDITED EXAMINATION PROCEDURE
Design reissue applications requesting expedited examination and complying with the requirements of 37 CFR 1.155 are examined with priority and undergo expedited processing throughout the entire course of prosecution in the Office, including appeal, if any, to the Patent Trial and Appeal Board. All processing is expedited from the date the request is granted.
Design reissue applicants seeking expedited examination may file a design reissue application in the Office together with a corresponding request under 37 CFR 1.155 pursuant to the guidelines set forth in MPEP § 1504.30.
The design reissue application and the request are processed by the Office of Patent Application Processing (OPAP). OPAP enters the appropriate information into PALM specifying when notice of the design reissue application will be published in the Official Gazette (see MPEP § 1441). After processing in OPAP, the design reissue application and the request are forwarded to the Design TC Director’s Office. Upon a decision by the Design TC Director to grant the request for expedited examination, the design reissue application file is referred to the Office of Patent Legal Administration (OPLA) for consideration under 37 CFR 1.182 to sua sponte waive the requirement for delaying action in the application until 2 months after announcement of the design reissue application filing is published in the Official Gazette (see MPEP § 1441). Once the decision under 37 CFR 1.182 is mailed, the design reissue application file will be returned to the Design TC Director’s Office. In accordance with the waiver, the Design Group will begin expedited examination of the application under 37 CFR 1.155 promptly after the return of the design reissue application file from OPLA, rather than delay examination until after 2 months from the date the announcement is published in the Official Gazette and the applicant will be notified that examination is being expedited. The decision under 37 CFR 1.182 will require that no Notice of Allowance be mailed in the design reissue application until after 2 months from the date the announcement is published in the Official Gazette. For example, if the design reissue application is allowed on the first Office action, then jurisdiction over the reissue application will be retained in the TC, and the Notice of Allowance will not be mailed until the expiration of 2 months after publication of the filing of the design reissue application in the Official Gazette (plus time for matching any protest filed with the application). The examiner will check the PALM contents to ascertain when publication actually occurred. The delay in the mailing of the Notice of Allowance is to ensure that any potential protests complying with 37 CFR 1.291 submitted within the 2-month delay period will be considered by the Office. (see MPEP § 1441.01).
The expedited examination procedure under 37 CFR 1.155 occurs through initial examination processing and throughout the entire prosecution in the Office. Once a request for expedited examination is granted, prosecution of the design reissue application will proceed according to the procedure under 37 CFR 1.155, and there is no provision for “withdrawal” from expedited examination procedure.
II. DESIGN REISSUE FEE
The design reissue application fee is set forth for in 37 CFR 1.16(e). A search fee (37 CFR 1.16(n)) and an examination fee (37 CFR 1.16(r)) are also required. The additional fees in 37 CFR 1.16(h) and 37 CFR 1.16(i) do not apply for a design reissue application because more than one claim in not permitted in a design application pursuant to the last sentence of 37 CFR 1.153(a).
The fee for issuing a design reissue patent is set forth in 37 CFR 1.18(b).
III. MULTIPLE DESIGN REISSUE APPLICATIONS
The design reissue application can be filed based on the “error” of failing to include a design for a patentably distinct segregable part of the design claimed in the original patent or a patentably distinct subcombination of the claimed design. A reissue design application claiming both the entire article and the patentably distinct subcombination or segregable part would be proper under 35 U.S.C. 251, if such a reissue application is filed within two years of the issuance of the design patent, because it is considered a broadening of the scope of the patent claim. Restriction will be required under 37 CFR 1.176(b) in such a reissue design application, and the added design to the segregable part or subcombination will be held to be constructively non-elected and withdrawn from consideration. See MPEP § 1450. In the Office action containing the restriction requirement, the examiner should suggest to the applicant that a divisional design reissue application directed to the constructively non-elected segregable part or subcombination subject matter may be filed. The claim to the patented design for the entire article will then be examined and, if found allowable without change from the patent, a rejection will be made under 35 U.S.C. 251 based on the fact that there is no “error” in the non-amended original patent claim. In the Office action making this rejection, applicant should be advised that a proper response to the rejection must include (A) a request to suspend action in this original reissue application pending completion of examination of a divisional reissue application directed to the constructively non-elected segregable part or subcombination subject matter, (B) the filing of the divisional reissue application, or a statement that one has already been filed (identifying it at least by application number), and (C) an argument that a complete response to the rejection has been made based upon the filing of the divisional reissue application and the request for suspension. Action in the original design reissue application will then be suspended, and the divisional will be examined.
If, after examination, the divisional design reissue application is also determined to be allowable, a requirement must be made in the divisional design reissue application to submit a petition under 37 CFR 1.183 requesting waiver of 37 CFR 1.153 in order to permit the rejoining of the designs to the entire article (of the original application) and the segregable part or subcombination (of the divisional) under a single claim into a single design reissue application for issuance, the single application being the first design reissue application.
It should be noted that the filing of a design reissue application would not be proper if applicant did in fact include the design for a segregable part or subcombination thereof in the original design patent application, a restriction was thus made, and then applicant failed to file a divisional reissue application for a non-elected invention that was canceled in view of a restriction requirement (before issue of the original application). See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977).
IV. CONVERSION TO UTILITY PATENT
A design patent cannot be converted to a utility patent via reissue.
35 U.S.C. 251 requires that the “patent is, through error without any deceptive intention, deemed 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 he had a right to claim in the patent”; however, the design patent (for which the reissue application would be filed) is not wholly or partly inoperative or invalid. There is no error in the design patent. Also, converting a design patent to a utility patent will, in most instances, involve the introduction of new matter into the patent. The disclosure of a design patent is not directed to how the invention is made and used, and the introduction of new matter is required to bridge this gap and provide support for the utility patent. Accordingly, the examiner should consider rejections based on the introduction of new matter under 35 U.S.C. 251 and lack of enablement and/or description under 35 U.S.C. 112, when a reissue application is filed to convert a design patent to a utility patent.
Further, the term of a design patent may not be extended by reissue. Ex parte Lawrence, 70 USPQ 326 (Comm’r Pat. 1946). Thus, any reissue application filed to convert a design patent to a utility patent, which conversion would thereby extend the term of the patent, should be rejected as failing to comply with 35 U.S.C. 251, which permits reissue only “for the unexpired part of the term of the original patent.” The statute requires that the reissued patent shall not extend the term of the original patent.
V. CONVERSION TO A DESIGN PATENT
A utility patent cannot be converted to a design patent via reissue.
35 U.S.C. 251 requires that the “patent is, through error, deemed 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 he had a right to claim in the patent”; however, the utility patent is not wholly or partly inoperative or invalid. There is no error in the utility patent. It is also noted that conversion to a design patent would exempt the existing utility patent from maintenance fees, and there is no statutory basis for exempting an existing patent from maintenance fees. See also subsection IV above regarding patent term.