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
Restriction and Election of Species

1401.10 (a)
Divisional Reissue Application

1401.11
Allowance and Issue

1401.12
Reissue Filed While Patent Is in Interference

1402
Certificate of Correction-Office Mistake

1402.01
Applicant's Mistake

1402.02
Handling of Request for Certificate of
Correction

1403
Statutory Disclaimer

Errors in a patent may be corrected in three
ways, namely by reissue, by the issuance of a
certificate which becomes a part of the patent,
and by disclaimer.

## 1401 Reissue

35 U. S. C. 251. Reissue of defective patents. When-
ever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or draw-
ing, or by reason of the patentee claiming more or less
than he had a right to claim in the patent, the Com-
missioner shall, on the surrender of such patent and
the payment of the fee required by law, reissue the
patent for the invention disclosed in the original
patent, and in accordance with a new and amended
application, for the unexpired part of the term of the
original patent. No new matter shall be introduced
into the application for reissue.

The Commissioner may issue several reissued patents
for distinct and separate parts of the thing patented,
upon demand of the applicant, and upon payment of
the required fee for a reissue for each of such reissued
patents.

The provisions of this title relating to applications
for patent shall be applicable to applications for re-
issue of a patent, except that application for reissue
may be made and sworn to by the assignee of the

entire interest if the application does not seek to
enlarge the scope of the claims of the original patent.

No reissued 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. Only limitation su Rosa's Str. 19 June 58

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).

## 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
except as otherwise provided (see rules 42, 43, 47),
and must be accompanied by the written assent of all
assignees, if any, owning an undivided interest in the
patent, but a reissue application may be made and
sworn to by the assignee of the entire interest if the
application does not seek to enlarge the scope of the
claims of the original patent.

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

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

## 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.

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The notice is entered on the file wrapper of
the original patent and pertinent data filled in
by the Application Branch and the case is as-
signed to the appropriate examining division.
When the reissue is granted or the prosecution
of the reissue application is terminated, the
clerk of the division completes the data on the
notice. If the said card has been preserved in
the division, the number and date of the reissue
patent or the notation "Abandoned" is entered
thereon.

## 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.

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.

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
; 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.

Cut up soft copies of the original patent,
with each column securely mounted on a sepa-
rate sheet may be used in preparing the specifi-
cation and claims.

An example of the form for a twice-reissued
patent is found in Re. 23,558.

### 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 also
be for matter which the applicant had the right
to claim 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 pat-
ent 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 specifi-
cation or drawing," particularly specifying such de-
fects.

(c) When it is claimed that such patent is inop-
erative or invalid "by reason of the patentee claiming
more or less than he had a right to claim in the
patent," distinctly specifying the excess or insufficiency
in the claims.

C

(d). Particularly specifying the errors relied upon,
and how they arose or occurred.

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

Corroborating affidavits of others may be filed and
the examiner may, in any case, require additional in-

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formation or affidavits concerning the application for
reissue and its object.

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 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.

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 error. Claims drawn to substantially the
same subject matter are not ordinarily success-
fully urged in the reissue.) An error arising
from a lack of understanding 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 ap-
plicant or his attorney 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 subject to
reexamination, and the entire application will be ex-
amined in the same manner as original applications,
subject to the rules relating thereto, excepting that
division will not be required. Applications for reissue
will be acted on by the examiner in advance of other
applications.

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 effec-
tive 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 Restriction and Election of Species

The Examiner may not require restriction 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 independent and distinct, and the
reissue application also claims the same inven-
tions, the Examiner should not require restric-
tion between them or take any other action with
respect to the question of plural inventions.
Restriction is entirely at the option, in the first
instance, of the applicant. If the reissue appli-
cation contains claims to an independent and
distinct invention which was not claimed in the
original patent, these claims may be treated by
a suitable rejection, such as : lack of inoperative-
ness of, or defect in, the original patent; lack
of error; or not being for matter which might
have been claimed in the original patent.

When the original patent contains claims to
a plurality of species and the reissue application

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1
15

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 of, or defect in,
the original patent and lack of error in obtain-
ing 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 restriction in reissue
applications, and if the original patent contains
several independent and distinct inventions they
can only be granted in separate reissues if the
applicant demands it. The following rule sets
forth the only possibility of divisional reissue
applications.

Rule 177. Reissue in divisions. The Commissioner
may, in his discretion, cause several patents to be is-
sued 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 sepa-
rate 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 filing divisional re-
issue applications, they shall be referred to the Com-
missioner. Unless otherwise ordered by the Commis-
sioner, all the divisions of a reissue will issue
simultaneously ; if there be any controversy as to one
division, the others will be withheld from issue until
the controversy is ended, unless the Commissioner
shall otherwise order.

### 1401.11 Allowance and Issue

The specifications of reissue patents will be printed
in such a manner as to show the changes over the
original patent by printing material omitted by
reissue enclosed in heavy brackets [ ] and material
added by reissue in italics. Rule 173 (see 1401.06)
requires the specification of a reissue application to
be presented in a specified form, specifically de-
signed to facilitate this different manner of printing,
as well as for other reasons.

The printed reissue specification will carry the
following heading which will be added by the Issue
Branch:

"Matter enclosed in heavy brackets [ I appears
in the original patent but forms no part of this
reissue specification; matter printed in italics indi-
cates the additions made by reissue."

The examiners should see that the specification
is in proper form for the new style of printing.
Matter appearing in the original patent which is
omitted by reissue should be enclosed in heavy
brackets, while matter added by reissue should be
underlined. All the claims of the patent should
appear in the specification, with omitted claims
enclosed in brackets. New claims should follow the
number of the highest numbered patent claims and
be underlined to indicate italics.

In the case of reissue applications which have not
been prepared in the indicated manner, the exam-
iner may request from the applicant a clean copy
of the reissue specification prepared in the indicated
form. However, if the deletions from the original
patent are small, the reissue application can be pre-
pared for issue by putting the bracketed inserts at
the appropriate places and suitably numbering the
claims.

Changes of title, assignee, or classification are not
affected by this notice.
1

The list of references to be printed at the end of
the reissue specification should include both the
references cited during the original prosecution as
well as the references cited during the prosecution
of the reissue application, and the heading on the
sheet on which the references are listed amended by
adding or the original patent. (Notice of October
12, 1949.)

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 up to date.
(Extract from Order 1838, Revised.)

After the case comes back from the Assign-
ment Branch, the Examiner must inspect the
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.)

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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 Certificates of Correction - Office Mistake

Rule 322. Certificate of correction of Office mistake.
A certificate of correction under 35 U. S. C. 254, 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 notifying the patentee (includ-
ing any assignee of record) and affording him an op-
portunity 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 may issue a
corrected patent in lieu thereof as a more appropriate
form for certificate of correction, without expense to
the patentee.

Mistakes incurred through the fault of the
Office are the subject of Certificates of Correc-
tion under Rule 322. If such mistakes are of
such a nature that the meaning intended is ob-
vious from the context, the Office may decline to
issue a certificate and merely place the corre-
spondence in the patented file, where it serves to
call attention to the matter in case any question
as to it arises.

Letters which merely call attention to errors
in patents, with a request that the letter be made
of record in the patented file, will not be ac-
knowledged. Unless notification to the con-
trary is received within thirty days, it may be
assumed that such letters have been made of
record as requested.

# 1402.01 Applicant's Mistake

Rule 323. Certificate of correction of applicant's mis-
take. Whenever a mistake of a clerical or typograph-
ical nature or of minor character which was not the
fault of the Office, appears in a patent and a showing
is made that such mistake occurred in good faith, the
Commissioner may, upon payment of the required fee,
issue a certificate of correction, which shall be endorsed
on the patent itself, if the correction does not involve
such changes in the patent as would constitute new
matter or would require reexamination,

Rule 323 relates to the issuance of Certificates
of Correction for the correction of errors which
were not the fault of the Office. Such errors
must be of a clerical or typographical nature or
of such a minor character that they do not
materially alter the scope of the patent or re-

quire a new search.

Rule 324. Correction of error in joining inventor.
Whenever a patent is issued and it appears that there
was a misjoinder or non-joinder of inventors and that
such misjoinder or omission occurred by error and
without deceptive intention, the Commissioner may, on
application of all the parties and the assignees and
satisfactory proof of the facts, or on order of a court
before which such matter is called in question, issue a
certificate deleting the misjoined inventor from the
patent or adding the non-joined inventor to the patent.
1402.02 Handling of Requests for Cer-
tificates of Correction

Requests for certificates of correction will be
forwarded by the Register, Correspondence and
Mail Branch, to the Solicitor's Office, where they
will be listed in a permanent record book.

Determination as to whether an error has
been made, the responsibility for the error, if
any, and whether the error is of such a nature
as to justify the issuance of a certificate of cor-
rection will be made by the Solicitor's Office.
If a report is necessary in making such deter-
mination, the case will be forwarded to the ap-
propriate division or branch with a request that
the report be furnished. If no certificate is to
issue, the party making the request is so notified
by the Solicitor's Office, and the request, report,
if any, and copy of the communication to the
person making the request are placed in the file
and entered thereon under "Contents" by the
Solicitor's Office. The case is then returned to
the patented files. If a certificate is to issue, it
will be prepared and forwarded to the person
making the request by the Issue and Gazette
Branch. In that case, the request, the report,
if any, and a copy of the letter transmitting the
certificate of correction to the person making the
request will be placed in the file and entered
thereon under "Contents".

## 1403 Statutory Disclaimer

321\. Statutory disclaimer in patent. A dis-
claimer under 35 U. S. C. 253 must identify the patent
and the claim or claims which are disclaimed, and be
signed by the person making the disclaimer, who shall
state therein the extent of his interest in the patent.
A disclaimer not a disclaimer of a complete claim or
claims may be refused recordation. A notice of the
disclaimer is published in the Official Gazette and
attached to the printed copies of the specification.

In like manner any patentee or applicant may dis-
claim or dedicate to the public the entire term, or any
terminal part of the term, of the patent granted or to
be granted.

See rule 21 for fee.

The examination as to formal matters is
done by the Issue and Gazette Branch.

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