1400

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1400 Correction of Patents

1401
Reissue

1401.01
Requisites

1401.02
By Whom Filed and to Whom Granted

1401.03
Notice in Original File

1401.04
Offer to Surrender Original Patent and When
Such Patent is Returned

1401.05
Use of Original Drawing

1401.06
Form of Specification and Claims

1401.07
New Matter

1401.08
The Reissue Oath

1401.09
Examination of Reissue

1401.09 (a)
Adjudication of Original Patent

1401.10
Division and Election of Species

1401.10 (a)
Divisional Reissue Application

1401.11
Allowance and Issue

1402

1401,12
Reissue Filed While Patent is in Interference
Certificate of Correction

1402.01
Kind of Mistake Corrected

1402.02
Handling

1403
Statutory Disclaimer

Errors in a patent may be corrected in three
ways. If the error is due to inadvertence, acci-
dent or mistake, the patent may be reissued. If
the mistake is of a clerical nature on the part of
the Office or printer, a Certificate of Correction
may be issued to form a part of the patent. If
the error is due to inadvertence, accident or
mistake, and consists merely in the patentee's
claiming more than he had a right to claim, he
may file a statutory disclaimer to go with the
patent.

## 1401 Reissue

Extract from 35 U. S. C. 64; R. S. 1916 Reissue of
defective patents. Whenever any patent is wholly or
partly inoperative or invalid, by reason of a defective
or insufficient specification, or by reason of the patentee
claiming as his own invention or discovery more than
he had a right to claim as new, if the error has arisen
by inadvertence, accident, or mistake, and without any
fraudulent or deceptive intention, the commissioner
shall, on the surrender of such patent and the payment
of the duty required by law, cause a patent for the same
invention, and in accordance with the corrected specifi-
cation, to be reissued to the patentee or to his assigns or
legal representatives, for the unexpired part of the term
of the original patent. Such surrender shall take effect
upon the issue of the reissued patent, but in so far as
the claims of the original and reissued patents are
identical, such surrender shall not affect any action
then pending nor abate any cause of action then exist-
ing, and the reissued patent to the extent that its claims
are identical with the original patent shall constitute a

continuation therof and have effect continuously from
the date of the original patent.

The usual grounds for a reissue are that the
claims are too narrow or too broad, or that the
disclosure has inaccuracies.

## 1401.01 Requisites

Rule 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 pro-
vided, and in addition, must comply with the require-
ments of the rules relating to reissue applications. The
application must be accompanied by a certified copy of
an abstract of title or an order for a title report, to be
placed in the file, and by an offer to surrender the
original patent (rule 178).

[Old rules 85, 86]

## 1401.02 By Whom Filed and to Whom Granted

Rule 172 Applicants, assignees. Reissue applica-
tions must be signed and sworn to by the inventors
if they be living, and must be accompanied by the
written assent of all assignees, if any, owning an
undivided interest in the patent. If the inventor is
dead, a reissue application may be made by the assignee
of the entire interest.

A reissue will be granted to the original patentee,
his legal representatives or assigns as the interest may
appear.

[Old Rules 85, 86]

The examiner must inspect the abstract of
title to determine whether Rule 172 has been
complied with.

A reissue cannot be granted to a sole appli-
cant for a patent originally issued to joint ap-
plicants. Ex parte Barsaloux et al., 1878 C. D.
158; In re Hamilton, 1930 C. D. 210; 394 O. G.
550.

## 1401.03 Notice in Original File

Rule 179 Notice of reissue application. When an
application for a reissue is filed, there will be placed
in the file of the original patent a notice stating that
an application for reissue has been filed. When the
reissue is granted or the reissue application is other-
wise terminated, the fact will be added to the notice
in the file of the original patent.

[Old Rule 91, par. 2]

The notice is entered on the file wrapper of
the original patent, and pertinent data filled in

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by the Application Branch, and entered on the
register by the clerk of the division. When the
reissue is granted or the prosecution of the re-
issue application is terminated, the clerk of the
division completes the data on the notice and
makes an appropriate entry on the register,
giving the new patent number if the reissue has
been granted or noting abandonment of the
application if this is the fact.

## 1401.04 Offer To Surrender Original Patent and When Such Patent Is Returned

Rule 178 Original patent. The application for a re-
issue must be accompanied by an offer to surrender
the original patent. The application should also be
accompanied by the original patent, or if the original
is lost or inaccessible, by an affidavit to that effect.
The application may be accepted for examination in
the absence of the original patent or the affidavit,
but one or the other must be supplied before the case
is allowed. If a reissue be refused, the original patent
will be returned to applicant upon his request.

[Old Rule 91, par. 1]

The examination of the reissue application
on the merits is made even though the original
patent or an affidavit has not been received, but
in such case the Examiner should require them
in the first action.

If applicant requests the return of his patent,
on abandonment of the reissue application, it
will be sent to him by the Executive Officer.

### 1401.05 Use of Original Drawing

The drawing of the original application may
be used in lieu of new drawings in the reissue
application, provided that no alteration what-
soever be made in the drawings or in any sheet
thereof. The complete set of original drawings
must be preserved in the condition existing at
the time of issue of the original patent.

When a reissue case is filed with a request for
transfer of the drawing from the original file,
applicant must submit a mounted copy of the
original drawing, or an order for same. (Rule
174.)

=

The mounted copy of the drawing will be
marked "Informal, AFE" (Admitted for Ex-
amination) by the Draftsman, but the Exam-
iner should disregard this since the informality
will be corrected by formal transfer of the
drawing before final allowance.

When the reissue case is ready for allowance,
and no change has been made in the drawing,
the Clerk of the Division forwards the file with
the mounted copy and the patented file and
drawing to the Application Branch for formal

transfer of the original drawing to the reissue
case. See 608.02 (k).

## 1401.06 Form of Specification and Claims

Rule 178 Specification. The specification of the re-
issue application must include the entire specification
and claims of the patent, with the matter to be omit-
ted by reissue enclosed in square brackets or otherwise
indicated as being deleted; and any additions made by
the reissue must be underlined, so that the old and the
new specifications and claims may be readily com-
pared. Claims should not be renumbered and the
numbering of claims added by reissue should follow
the number of the highest numbered patent claim. No
new matter shall be introduced into the specification.

[Old Rule 88]

### 1401.07 New Matter

New matter, that is, matter not present in the
patent, is excluded from a reissue application
with even greater strictness than in an ordinary
case. The claims in the reissue case must be for
the same invention claimed in the original
patent. New matter may exist by virtue of the
omission of a feature or of a step in a method.
See United States Industrial Chemicals, Inc.
v. Carbide & Carbon Chemicals Corp. 1942
C. D. 751; 538 O. G. 741.

### 1401.08 The Reissue Oath

Rule 175 Reissue oath. Applicants for reissue, in
addition to complying with the requirements of the
first sentence of rule 65, must also file with their ap-
plications a statement under oath as follows :

(a) That applicant verily believes the original
patent to be wholly or partly inoperative or invalid,
and the reasons why.

(b) When it is claimed that such patent is so in-
operative or invalid "by reason of a defective or in-
sufficient specification," particularly specifying such
defects or insufficiencies.

(c) .When it is claimed that such patent is inopera-
tive or invalid "by reason of the patentee claiming as
his own invention or discovery more than he had a
right to claim as new," distinctly specifying the part
or parts so alleged to have been improperly claimed
as new.

(d) Particularly specifying the errors which it is
claimed constitute the inadvertence, accident, or mis-
take relied upon, and how they arose or occurred.

(e) That said errors arose "without any fraudulent
or deceptive intention" on the part of the applicant.

(f) When any reissue claim is broader in any
respect than the patent claims, applicant shall explain
when and under what circumstances he became aware
of the lack of breadth in the patent claims, and shall
further explain any delay thereafter up to the filing of
such reissue application.

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Corroborating affidavits of others may be filed and
the examiner may, in any case, require additional in-
formation or affidavits concerning the application for
reissue and its object.

[Old Rule 87]

The question of the sufficiency of the reissue oath
filed under Rule 175 must in each case be reviewed
and decided personally by the Primary Examiner.
(Extract from Order 2712.)

The reissue oath must point out very specifi-
cally what the defects are and how the errors
arose. The statements of the oath must be of
facts and not conclusions.

An allegation that the specification is insuffi-
cient merely because the claims are too narrow
ordinarily satisfies paragraph (b) of the rule.

A broadened reissue claim, for the purposes
of paragraph (f) of the rule, is one which brings
within its scope any subject matter not embraced
by the patent claims. A claim broadened in
one limitation is a broadened claim though it
may be narrower in other details. Where a
broadened claim is asserted more than one year
after the issuance of the patent, a clearly con-
clusive showing must be made in justification
of the delay.

Relative to paragraph (d) of the rule, delib-
erate cancelation of a claim in the original pat-
ent application is ordinarily regarded as evi-
dence that the failure to include claims to the
involved subject matter in the patent is not due
to inadvertence, accident or mistake. Claims
drawn to substantially the same subject matter
are not ordinarily successfully urged in the re-
issue. An error arising from a lack of under-
standing or knowledge of applicant's attorney
as to the real invention may be an acceptable
reason for reissue. However, where an alleged
lack of understanding by applicant or his attor-
ney is based on a new factual situation, which
did not exist at the time the patent was taken
out, reissue is improper.

A ruling that the oath is insufficient should be
made a ground of rejection of all the claims.

### 1401.09 Examination of Reissue

Rule 176 Examination of reissue. An original
claim, if re-presented in the reissue application, is sub-
ject to re-examination, and the entire application will
be examined in the same manner as original appli-
cations, subject to the rules relating thereto, ex-
cepting that division will not be required. Applications
for reissue will be acted on by the examiner in advance
of other applications.

[Old Rule 90]

Thus, reissue cases are "special".

Examination of a reissue application involves
two aspects, first, it is examined in the same

manner as an original application and second,
it must be examined for compliance with the
reissue statute and rules. The prosecution of
the original patent must be carefully studied
for its bearing on the reissue questions.

While an original claim is subject to re-
examination, the rejection of such a claim con-
stitutes the rejection of a previously allowed
claim and must be personally considered by the
Primary Examiner with great care. To be
effective, a reference must be prior to the ef-
fective filing date of the original patent.

## 1401.09 (a) Adjudication of Original Patent

When a reissue application is filed, the Ex-
aminer should determine whether the original
patent has been adjudicated by a court. The
decision of the court and also other papers in
the suit may give information essential to the
examination of the reissue. The patented file
will contain notices of the filing and termina-
tion of infringement suits on the patent, which
notices are required by law to be filed by the
clerks of the District Courts. These notices
do not indicate if there was an opinion by the
court, nor whether a decision was published.
Shepard's Federal Citations and the cumulative
digests of the United States Patents Quarterly,
both of which are in the Law Library, contain
tables of patent numbers giving the citation of
published decisions concerning the patent.
Where papers are not otherwise conveniently
obtainable, the applicant may be requested to
supply or lend copies of papers and records in
suits, or the Solicitor's office may be requested
to obtain them from the court. The informa-
tion thus obtained should be carefully con-
sidered for its bearing on the proposed claims
of the reissue, particularly when the reissue ap-
plication was made in view of the holding of
a court.

## 1401.10 Division and Election of Species

The Examiner may not require division in a
reissue application (Rule 176 in 1401.09). If
the original patent contains claims to different
inventions which the Examiner may neverthe-
less consider divisible, and the reissue applica-
tion also claims the same divisible inventions the
Examiner should not require division between
them or take any other action with respect to the
question of plural inventions. Division is en-
tirely at the option, in the first instance, of the
applicant. If the reissue application contains
claims to a divisible invention which was not
claimed in the original patent, these claims are

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## 1401.10 (a)

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treated by a suitable rejection, such as : lack of
inoperativeness or defect in the original patent;
lack of inadvertence, accident or mistake; or
not being for the same invention as the original
patent.

When the original patent contains claims to
a plurality of species and the reissue application
contains claims to the same species, election of
species should not be required even though there
is no allowable generic claim. If the reissue
application presents claims to species not
claimed in the original patent, election of species
should not be required, but the added claims
may be rejected on an appropriate ground which
may be lack of inoperativeness or defect in the
original patent and lack of inadvertence, acci-
dent or mistake in obtaining the original patent.
Most situations require special treatment.

## 1401.10 (a) Divisional Reissue Appli- cations

As is pointed out in the preceding section the
Examiner cannot require division in reissue ap-
plications, and if the original patent contains
several divisible inventions they can only be
granted in separate reissue if the applicant de-
mands it. The following rule sets forth the
only possibility of divisional reissue applica-
tions.

Rule 177 Reissue in divisions. The Commissioner
may, in his discretion, cause several patents to be issued
for distinct and separate parts of the thing patented,
upon demand of the applicant, and upon payment of the
required fee for each division. Each division of a
reissue constitutes the subject of a separate specification
descriptive of the part or parts of the invention claimed
in such division ; and the drawing may represent only
such part or parts, subject to the provisions of rules 83
and 84. On filling divisional reissue applications, they
shall be referred to the Commissioner. Unless other-
wise ordered by the Commissioner, all the divisions
of a reissue will issue simultaneously ; if there be any
controversy as to one division, the others will be with-
held from issue until the controversy is ended, unless
the Commissioner shall otherwise order.

[Old Rule 89]

### 1401.11 Allowance and Issue

Before a reissue case is passed to issue, the file is
forwarded to the Assignment Branch in order that
the abstract of title may be brought down to the
latest date. (Extract from Order 1838).

After the case comes back from the Assign-
ment Branch, the Examiner must inspect their
report to see that the applicant has complied
with Rule 172 (see 1401.02).

NOTE: Transfer of drawing 1401.05.

The notice of allowance is not mailed from the
examining division. The file with the notice is sent
to the Issue and Gazette Branch, where the notice
is stamped and mailed. (Extract from Order 2729).

The date of issue is stamped on the notice of
allowance by the Issue and Gazette Branch and
mailed. The issue date can be determined at
this time because there is no final fee for a
reissue application.

## 1401.12 Reissue Filed While Patent Is in Interference

If an application for reissue of a patent is filed
while the patent is involved in interference, that
application must be called to the attention of the
Commissioner before any action by the Examiner is
taken thereon. (Extract from Order No. 3193).

When an application for reissue of a patent is
filed while the patent is involved in interference,
a letter entitled in the interference is placed in
the interference file and in the reissue applica-
tion file, and a copy thereof is sent to each of the
interfering parties, giving notice of the filing
of the reissue application. (See 1111.08).

### 1402 Certificate of Correction

Rule 822 Certificate of correction. A certificate of
correction under the act of March 4, 1925, 43 Stat. 1268,
35 U. S. C. 88, may be issued at the request of the
patentee or his assignee and endorsed on the patent
itself. Such certificate will not be issued at the request
or suggestion of anyone not owning an interest in the
patent, nor on motion of the Office, without first notify-
ing the patentee (including any assignee of record) and
affording him an opportunity to be heard.

If the nature of the mistake on the part of the Office
is such that a certificate of correction is deemed in-
appropriate in form, the Commissioner, with the con-
sent of the patentee (or assignee of record, if any) may
issue a reissued patent in lieu thereof as a more appro-
priate form for certificate of correction, without ex-
pense to the patentee.

[Old Rule 170, par. 1]

### 1402.01 Kind of Mistake Corrected

Mistakes incurred through the fault of the
Office and of clerical and typographical nature
are the subject of Certificates of Correction.

Rule 828 Other mistakes not corrected. Mistakes
not incurred through the fault of the Office, and not
affording legal grounds for reissue, will not be corrected
after the date of the patent.

Changes or corrections will not be made in a patent
after the date thereof except as provided in rule 322.
[Old Rule 170, pars. 2. 3]

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#### 1402.02 Handling

Requests for Certificates of Correction will be for-
warded by the Register, Correspondence and Mail
Branch to Issue and Gazette Branch, where they
will be listed in a permanent record book.

When the error is a printer's error, or an error
originating in Issue and Gazette Branch, the Chief
of Issue and Gazette Branch will state the facts and
forward the file with the request for a certificate of
correction to the Commissioner for action. If there
is an office error which did not originate in Issue and
Gazette Branch, the Chief of Issue and Gazette
Branch will obtain a report thereof from the Di-
vision responsible for the error and forward it with
the file to the Commissioner for action. So far as
possible, all reports, if more than one is necessary,
will be on a single sheet of paper. After action by
the Commissioner, the paper and the file will be re-
turned to Issue and Gazette Branch. If the certifi-
cate of correction is ordered to issue, it will be pre-
pared and forwarded to the person making the re-
quest, by Issue and Gazette Branch.

The request, the report, and a copy of the letter
transmitting the certificate of correction to the per-
son making the request will be placed in the file and
entered on the index by Issue and Gazette Branch,
after which the file will be returned to the patented
files.

If the certificate of correction is refused, the re-
quest, the report, and a copy of the communication
to the person making the request will be placed in
the file and entered on the index by Issue and"
Gazette Branch, after which the file will be returned
to the patented files. (Order No. 2737, Revised).

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##### 1403 Statutory Disclaimer

Rule 321 Statutory disclaimer in patent. A dis-
claimer under R. S. 4917; 35 U. S. C. 65, must comply
with the requirements of the statute and must also
identify the patent, specify that the claiming of more
than the patentee had a right to claim occurred
through inadvertence, accident or mistake and without
any fraudulent or deceptive intention, identify the
claim or claims subject to the disclaimer, and be signed
by the person making the disclaimer. Such disclaimers
are not examined except as to formal matters, but a
disclaimer observed not to be a disclaimer in fact may
be refused, and the recording of a disclaimer does not
indicate that it is considered by the Patent Office to be
proper or valid or that the patent after disclaimer, or
any claim thereof, is considered valid. A notice of
the disclaimer is published in the Official Gazette and
attached to the printed copies of the specification.
See rule 21 for fee for disclaimer.

[Old Rule 181]

According to the common law a patent with
an invalid claim was wholly void. In order to
mitigate the effect of this common law rule the
statute on disclaimers was enacted. Under the
statute, if the patentee disclaims the invalid por-
tion of his patent without unreasonable delay
he may recover that part which is truly and
justly his own.

The examination as to formal matters of the
disclaimer is performed by the Issue and Gaz-
ette Branch.

A disclaimer cannot be used to avoid a re-
jection on double patenting. Moreover, one
cannot publish a disclaimer of certain subject
matter and thereafter file a reissue including
the matter disclaimed.