1400

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# 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 Reissne 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 Cor-
rection

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 en-
large 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.

The usual grounds for a reissue are that the
claims are too narrow or too broad, or that the
disclosure has inaccuracies. A reissue was re-
fused in Ex parte Arkless, 1958 C.D. 19; 726
O.G. 635, where the only ground urged was
failure to make a claim under 35 U.S.C. 119
for priority within the time limit set by Rule
55. The correction of misjoinder of inventors
was held not to be a ground for reissue in
Ex parte Johnson, 1958 C.D. 22; 731 O.G. 6.

When a reissue application is filed within
two years from the date of the original pat-
ent, a rejection on the ground of lack of dili-
gence or delay in filing the reissue should not
be made.

## 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. (a) 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.

(b) 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.

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## 1401.03 Notice in Original File

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

The notice is entered on the file wrapper of
the original patent and pertinent data filled in
by the Application Branch. When the reissue
is granted or the prosecution of the reissue ap-
plication is terminated, it is important that the
Record Room be informed of that fact by writ-
ten memo and the information is applied by the
Record Room on the notice in the patented file.

## 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 pat-
ent, on abandonment of the reissue application,
it will be sent to him by the Mail and Corre-
spondence Branch and not by the examining
group.

### 1401.05 Use of Original Drawing

Applicant must submit a mounted copy of
the original drawing or "an order for same"
(Rule 174) if transfer of the original drawing
is contemplated.

Provided that no alteration whatsoever is to
be made in the drawings, including adding or
cancelling an entire sheet, the drawings of the
original patent may be used in lieu of new
drawings.

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,
the file with the mounted copy and the patented
file and drawing are forwarded to the Applica-
tion Branch for formal transfer of the original
drawing to the reissue case. No formal request
from applicant for such transfer is necessary.
See 608.02(k).

## 1401.06 Form of Specification and Claims

Rule 173. 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, 80
that the old and the new specifications and claims may
be readily compared. 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
separate sheet may be used in preparing the
specification and claims. It should be noted
that amendments to the reissue applications
should not be prepared in this way.

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 applica-
tion 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 omis-
sion 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. (a) 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 :

(1) That applicant verily believes the original pat-
ent to be wholly or partly inoperative or invalid, and
the reasons why.

(2) 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.

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(s) 1401.10

(8) When it is claimed that auch patent in 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.

(4) Particularly specifying the errors relied upon,
and how they srose er occurred.

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

(b) Corroborating afidavita of others may be filed
and the examiner may, in any case, require additional
information 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. (Basis: Order 2712.)

The reissue oath must point out very. spe-
cifically 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 (a) (2) 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 broad-
ened in one limitation is a broadened claim
though it may be narrower in other details.

Relative to paragraph (a) (4) of the rule, de-
liberate cancelation of a claim in the original
patent application is ordinarily regarded as
evidence that the failure to include claims to
the involved subject matter in the patent is
not due to error. Claims drawn to substan-
tially the same subject matter are not ordi-
narily successfully 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 applicant 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. Boamination of reissue. An original
claim, if re-presented in the reissue application, is
subject to reexamination, and the entire application
will be examined in the same manner as original
applications, subject to the rules relating thereto.
excepting that division will not be required. Appli-
cations for reissue will be acted on by the examiner in
advance of other applications.

Reissue cases are "special" and remain "spe-
cial", even though applicant does not respond
promptly.

Examination of a reissue application in-
volves 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 prose-
cution 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 cumula-
tive digests of the United States Patents Quar-
terly, 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 con-
veniently obtainable, the applicant may be re-
quested to supply or lend copies of papers and
records in suits, or the Office of the Solicitor
may be requested to obtain them from the court.
The information thus obtained should be care-
fully considered for its bearing on the proposed
claims of the reissue, particularly when the re-
issue application 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-

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## 1401.10(a)

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tion between them or take any other action
with respect to the question of plural inven-
tions. Restriction is entirely at the option, in
the first instance, of the applicant. If the
reissue application contains claims to an inde-
pendent and distinct invention which was not
claimed in the original patent, these claims
may be treated by a suitable rejection, such as:
lack of inoperativeness 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 applica-
tion contains claims to the same species, elec-
tion of species should not be required even
though there is no allowable generic claim. If
the reissue application presents claims to spe-
cies 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 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 restriction in re-
issue applications, and if the original patent
contains several independent and distinct in-
ventions they can only be granted in separate
reissues if the applicant demands it. The fol-
lowing 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 ispecification 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-
issued applications, they shall be referred to the Com-
missioner. Unless otherwise ordered by the Commis-
sioner, all the divisions of a reissue will issue simul-
taneously ; 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 178 (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 [ ] ap-
pears in the original patent but forms no part
of this reissue specification; matter printed in
italics indicates the additions made by reissue."

The examiners should see that the specifica-
tion 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 spe-
cification, with omitted claims enclosed in
brackets. New claims should follow the num-
ber of the highest numbered patent claims
and be underlined to indicate italics. The pro-
visions of Rule 178 that claims should not be
renumbered applies to the reissue application
as filed. When the reissue is allowed, any
claims remaining which are additional to the
patent claims are renumbered in sequence
starting with the number next higher than the
number of claims in the original patent. There-
fore, the number of claims allowed will not
necessarily corespond to the number of the last
claim in the reissue application, as allowed.

In the case of reissue applications which
have not been prepared in the indicated man-
ner, the examiner may request from the appli-
cant 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 prepared
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.

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 dur-
ing 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. (Basis: Notice of Octo-
ber 12, 1949.)

Before a reissue case is passed to issue, the
file is forwarded to the Assignment Branch in

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order that the abstract of title may be brought
up to date.

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).

Norz .- Transfer of drawing, 1401.05.

There is no issue fee for reissue applications
in which the patent being reissued was granted
prior to October 25, 1965. For reissue applica-
tions in which the patent being reissued was
granted after October 25, 1965, the issue fee is
the same as for original applications. (35
U.S.C. 41(a)2).

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 interfer-
ence, that application must be called to the at-
tention of the Commissioner before any action
by the Examiner is taken thereon.

When an application for reissue of a patent
is filed while the patent is involved in inter-
ference, a letter entitled in the interference is
placed in the interference file and in the reissue
application 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-Of- fice Mistake

Rule 322. Certificate of correction of Office mistake.
(a) A certificate of correction under 35 U.S.C. 254,
may be issued at the request of the patentee or his as-
signee and endorsed on the patent itself. Such certifi-
cate 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
(including any assignee of record) and affording him
an opportunity to be heard.

(b) If the nature of the mistake on the part of the
Office is such that a certificate of correction is deemed
inappropriate 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 cor-
respondence 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
acknowledged. 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.

In order to expedite all proper requests for
Certificates of Correction the following sugges-
tions, if observed will materially reduce the bur-
den on the Patent Office:

(1) Request certificates only for errors of
consequence, utilizing the "make of record" let-
ters for all other errors.

(2) Return the patent with the request, there-
by relieving the Office of the need to write a
letter merely asking for the return of the patent.

(3) Identify the error by page and line in
the application file as well as by column and line
in the printed patent.

## 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 Certifi-
cates of Correction for the correction of errors
which were not the fault of the Office. A mis-
take is not of a minor character if the re-
quested change would materially affect the
scope or meaning of the patent.

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.

The "satisfactory proof of facts" required by
Rule 324 must be of the same type and character
as the proof required to justify converting an
application, as described in 201.03. An oath of
the type required by Rule 65 corresponding to
the newly asserted inventorship must be sub-
mitted, together with the original patent grant
for attachment of the certificate.

## 1402.02 Handling of Requests for Cer- tificates of Correction

Requests for certificates of correction will be
forwarded by the Correspondence and Mail

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14001.1

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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 group 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 re-
quest, report, if any, and copy of the commu-
nication 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 cer-
tificate is to issue, it will be prepared and for-
warded 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 correc-
tion to the person making the request will be
placed in the file and entered thereon under
"Contents".

## 1403 Statutory Disclaimer

Rule 321. Statutory disclaimer in patent. A dis-
claimer under 35 U.S.C. 258 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 at-
tached to the printed copies of the specification. In
like manner any patentee or applicant may disclaim
or dedicate to the public the entire term, or any termi-
nal 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.

Terminal disclaimers may affect the prosecu-
tion of other applications. They are brought
to the Examiner's attention by the Issue and
Gazette Branch which attaches a label to the
file wrapper and forwards the file containing
them to the Examining Group after having a
title search made, endorsing the paper on the
"Contents" and otherwise insuring that the pat-
ent, if issued, will be properly headed.

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