1600

OCR transcription for search; preserved printed pages are authoritative

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10-1.
Roissue

-1-1.

Reg-131503
By Whom Filed .und To Whom Grantod

-1-2.
-1-3.
Notice in Original File

=1-4.
Uffor to Jurronder Original Patent and
When Such Patent Is Returnod

-1-5.
Court Decision on Original Patent

-1-6.

Use of Original Drawing

-1-7.
Form of 3pocification and C: tims

-1-2.
New Mattor

-1-9.
The Roissue Oath

\- 1-10.
Divisional Rois no Application

-1-11.
Bxirilnation of Rolo.mo

ax 1-12.
Election of pocies

4 1-13.
Allofinto md Issue

-1-14.
Reissue Fil: A While Itont fa in Interference

-1-15.
Jecrocy Hot Preserved

2\.
Corlift ate of Correction

Coquloitas

-2-1.
~2-2.
Indian:

13\.
St story Disclaimer

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# CORRECTION OF PATHIT

Mistakes in a patent may be corrected in three ways.
If the mistake is due to accident or inadvertance and re-
quires re-writing a portion of the specification or claims,
the patent m.y be roissued. If the mistake is of a cleri-
Cul naturo on the part of the Office or printer, a certi-
ficate of correction may be issued to form a part of the
patont. If the mistake is due to accident or inadvertonce
and consista meroly in the patenteo claiming moro than he
hnd a right to claim, he nay file a statutory disclaimer
to go with the patent.

16-1.
Reisque

Soc. 4916, R.S. ..... "Whenever any patent is wholly
or partly inoperativo or invalid, by roason of a defective
or insufficiont specification, or by reason of the patentee
claiming as his own invention or discovery more than he
han a right to claim as new, if the orror has arisen by
inaidvortence, accident, or mistako, and without any fraudu-
lent or deceptive intention, the Commissioner shall, on
the surrender of such patent and the waynont of the duty
required by law, cause a patent for the same invention,
and in accordance with the corrected specification, to
bo reissued to the patentee or to his assigna or lomal
representatives, for the unexpired part of the term of
the original patont."

Tho usual grounds for a reissuo are that the claims
re too narrow or too broad, or that the disclosure has
inoccur icies.

16-1-1.

## Requisites

Rule 22.1 Application for Reissue. An
application for reissue must contain the Bane
arts required for an application for an oric-
inail patont, complying with all the rules ro-
latin: thereto except as otherwise provided,
and in addition, must comply with the roquiro-
ments of the rulos relating to roismuo appli-
cations. The application must be accompanied
by a certified copy of an abstract of titlo
or an order for a title roport, to be placed
In the rito, and by an offer to surrender the
of1Final intont.

10-1-2.
By Whom Filed and To Whom Granted

Rule 27.2 Amalicante, Masionons, Reissue

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applications must be signed and sworn
to by the inventors if they be living, und
must be accompanied . the written assent
of all assigneos, if any, owning an undi-
vided interest in the patent. If the inven-
tor is dead, a roissue application may be
made by the assignee of the entire interest.

A reissue will be printed to the orig-
inal patentee, his logal representative or
assigns na the interest miny appear.

Tho examiner must inspect the abstr ct of title
to determine whothor Kule 22.2 has boen complied with.

A reissue cannot be granted to a solo applicant for
a patent originally issued to joint applicants.

16-1-3.
Notice In Original File

Rule 22.9 Notice of Reissue Application.
When an application for a reissue is filed,
there will be placed in the file of the orig-
inal patent a notice stuting that an applica-
. tion for reissue has been filed, giving its
serial number and filing date. When tho re-
issue is granted or the reissue application
is otherwise terminated, the fact will be
added to the notice in the file of tho orig-
inal patent.

The Examinor should see that the clork of the
division enters the paper containing the notice on tho
file wrapper of the patent and in the Examiner's register
and fills in pertinent data.

16-1-4.
Offer To Surrender Original
Patent and When Such Patent Is Returned.

Rule 22.8 Original Patent. The appli-
cution for a reissuo must be accompanied by
an offer to surrender the original potent.
The u plication should also be nocompanied
by the original patent, or if the original
is lost or inaccessible, by an affidavit to
that offoot. The application may be accepted
for examination in the absence of the orig-
inal patent or the affidavit, but one or the
othor must be supplied before the case is
allowod. If a reissue be rofused, the orig-
inal patent will be returned to applicant
upon his request.

The examination of the reissue application on
the merits is made ovon though the original patent or

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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 aplication, it will be
Sunt to him by the Executive Officer.

# 16-1-5. Court Decision on Original latent

When an application for reissue of a patent is
made in view of the holding of the court in a suit on
the original patent, a copy of the court's decision
should be filed. If it noopenrs oither from the reissue
Oath or from the file of the original patent that there
has boon auch n suit and a copy of the decision is not
filed, the Examiner will require it to be filed before
final action on the au lication. The court'a opinion
should be carefully considered for its beiring on the
proposed claims of tho reinme.

16-1-6.
Use of original Drawing

The drawing of the original application may be
used in lieu of now drawings In the reissue application,
provided that no alteration whatsoovor be made in the
dr wings or in any shoot thereof. The complete sot of
original drawings must be preserved in the condition
existing at the tiho of Some of the originil p;tent .

When a reisauo caso is filed with a request for
transfor of the drawing from the original file, appli-
cint must submit a mounted copy of the original drawiar,
or an order for samo. (Rule 12.9).

The mo ated copy of the drawing will be marked
"Informal, A/8" (admitted for Examination) by the
Draftanin, but the Examiner should disregard this since
the informality will be corrected by formal transfer of
the drawing before final allowance.

whon the reisnuo case la ready for allow ince,
and no chine has been made in the drawing, the Clerk
of the Division Forwards the file to the application
Branch for Formal transfer of the original rain . to
the relasuo caso.

10-1-7.
form of Jagcific tion ant China

dude 22.3 Specification. The a scifi .
cation of the rola we application murs la-
ludo the ontiro anification ord clima
of the font, with the matter to be omtl'ad
by reissue enclosed in san to brackets of

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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
compared. Claims should not be renumbered
and the numbering of claims added by reissue
should follow the number of the highest
numbered patont cinim.

16-1-0.

## Now Matter

Rule 26.4 Now Mutter, amendment of Drawing.
Now mattor ohull not be introduced into the
rois uo ap lication, nor shall the drawing
bo amended, (that is, changed from the draw-
ing of the patent) except to make pormissible
corrections of orrors in the execution of tho
drawing.

New matter, that is, matter not prosent in tho patent,
is excluded from a roissue application with oven greator
strictneos than in an ordinary case. Tho claims in the
reissue case must be for the same invention intended to be
clainod in the original patent. New mattor may exist by
virtue of the omission of a feature or u stop in a method.
16-1-9.
The Reissue Uath

Rule 22.5 Heissue Oath. Applicants
for roisauo, in addition to complying with
the requirements of the first sentence of
Rule 9.1, must also file with their apli-
cations a statement under oath as follows:

(a) That applicant verily believes the
original intent to be wholly or partly in-
operative or invalid, and the ronsons why.

(b) When it is clafried that such , atent,
is po inoperativo or invalid "by reason of
n dofectivo or insufficient specification,"
particularly specifying auch defect: or
insufficioncios.

(c) When it is clainod that, auch putont
is inoperative or invalid "by roation of the
wx entee claiming as his own invention of
discovery more than he had a right to chal
na now," distinctly specifying the part of
parto so alleged to have boon improperly
clair od w new.

(d) Whon any roissuo claim is broader

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

16-1-10.
Divisional Reissue Applications.

### Rule 22.7 Reissue in Divisions.

The Commissioner may, in his discretion,
cause several patents to be issued for dis-
tinct and pep rate parts of the thing; patented,
upon demand of the applicant, and upon pay-
ment of the required fee for each division
of such reissued Letters latent. Each division
of a reissue constitutes the subject of a
separate specification description of the part
or parts of the invention claimed in such di-
vision; and the drawing my represent only
such part of parts, subject to the provisions
of Rules 12.3 nd 12.4. On filing a roissuo
in divisions, the applications shall be ro
ferred to the Commissioner. Unless otherwise
ordered by the Com issioner, all the divi-
sions of a reissue will issuo simultaneously;
if there be any controversy ar to one division,
the others will be withheld from issuo until
the controversy is ended, unless the Commissioner
shall otherwise order.

The Examiner may not require division. (Rule 22.6) .
For election of species, see 16-1-12.

16-1-11.
Examination of Reissue

Rule 22.6 Examination of Reissue. An
original claim, if re-prosonted in the roissue
ap lication, is subject to re-examination, and
the entire ap lication will be examined in
the same manner as original ap lications, sub-
ject to the rules rolating thereto, excepting
that division will not be required. Applications
for reissue are noted on by the Examiner in
advance of other applications.

Thus, reissue cases are "special".
While an original claim is subject to re-oxanina-
tion, the rejection of such a claim constitutes tho
rejection of a proviously allowed claim and must be por-
sonally considered by the Primary Examiner with great caro.
To bo effective, a reference must be prior to tho effective
filing date of the original patent.

16-1-12.
Election of Species

When both the original patent and the roissuo

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in any respect than the ratent claims,
applicant shall e lain when and under
what circumstances he became aware of the
lack of breadth: in the patent clains, and
shall further explain any delay thereafter
up to the filing of such reissue application.

(e) Particularly specifying the errors
which it lo claimed constitute tho inad-
vortonce, accident, or mistake rolled
upon, and how they aroso or occurred.

(r) That said errors arose "without
any fraudulont or docoptive Intention"
on the part of the applicant.

Corroborating af 'Idavits of others
may be filod and the Examinor mmy. in
any case, rotutro diticaal information
or affidavits concernin, tho rois uo and
ito object.

The question of the sufficiency of the roisnuo
oath filed under Rule 22.5 must in each case bo reviewod
and decided personally by the primary examiner, (Order 2712) .

The reissue onth must point out very apoc' fically
what tho defects aire and how the crrers rose. The stato-
tonts of the oath must ba of fets at no! conclusions.

an allocation that the specification is insufficiont,
neroly because the clains are too narrow wallantily satis-
fin paragraph (b) of the rule.

a broadened roissue claim, for the purposes of
paragraph (d) of the rulo, is ons which brings within
its scope any subject matter no' embraced by sh patent
claims. Whore a broadoned clair is assortod moro thin ono
year after the loanance of the patent, a clearly conclu-
sive showing must be made in justification of the delay.

Relative to paragraph (e) of the rule, deliberate
cancellation of , claim in the original patent application
is not ordinarily regarded as un inadvertance, accident or
mistake, and claims drawn to substantially the a me subject
mattor are not ordinarily succes:r lly urged in the rologuo.
an error arising from a lack of understanding of knowledge
of ty Jicanta attorney as to the real Invention may be
m acce table reason for relque. auf der based on a
eh ngo In the factual affoation existing at, tho timo the
patent was taken out, is an insufficient basis for roissue.

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ap licution contain clai s to a plurality of species,
election of species should not be romtired even though
there is no allowable generic clai . If the original
patent contains only generic claims and the reisstto in
dition to the generic claims asserts clai is to ner: thon
throo s, coles, restriction to three ciclos may be required
just as in an original application.

10-1-13.
Allowance and Issue

Bofore a reissuo caso is aspx' to iamo, the file
is fosterded to the adslscient Branch in order that the
abstr et of title may be brought down to the latest date.
after the case comes back from the assignment Branch,
the Examiner ust ins oct their report to see that the
aplicanit has complied with Rulo 22.2 (Jection 16-1-2) .

The notice of allowance in not mailed from the
oxniinin: division. Tho filo with the notice is sent to
the Issue and Cututto Branch, where the notice is stamped
und mailed.

# 16-1-14. Reisano Piled Whilo Patent Is In Interference

If an applica Ion for veis me of a patent is filed
while the patent is involved in interference, that appli-
cation must bo c Lied to the attention of the Commissionor
before any action by the Examiner Is taken thereon. (Order
No. 3193).

When an ap lication for reissue of a tent is filed
while the matont is involved in interference, a lotter
entitled in the interference is placed in the interf rence
file ind the reis te a lic timm file, and a copy thereof
went to each of he interfering parties, giving notice of
the Filin, of the reissue application. (Sco 13-6-8) .

16-1-15.
Secrecy Not Preserved

Nule 22.2 Notice of Reissue Application.
mexico of the filing of a roisamo application
will be published in the official Gazotto. Ro-
issue aplie tiens are not preserved in secrecy
in the Same manner. 3 original applications,
nd arcos will ordinarily be granted on ro-
quest, in writing.

Reis no applications are exceptions to the general
rule of secrecy. The public should be able to rely on an
issued ptont to de. ine ita scope.

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16-2.
Certificates of Correction

Rule 35.2 Certificate of Correction.
A certificate of correction undor the Act of
Murch 4,1925 (43 Stat. 1268, 35 U.B.C.,
seo. 83), may be issued at the request of the
patentee or his assignee and endorsed.on the
patent itself. Such certificato will not be
issued at the request or suggestion of anyone
not owning an interest in the patent, nor on
motion of the Office, withour first notifying
the patentee (including any assignee of record)
und affording him an opportunity to bo heard.

If the nature of the mistake on the part
of the Office is auch that a certificate of
correction is doomed inappropriate in form,
the Commissioner, with the consent of the
patentee ( or assicnoe of record, if any)
muy issue a reissued patont in lieu thereof
no a more appropriate form for certificate
of correction, without oxponse to the patenteo.
16-2-1.

## Requisitos

Rule 35.3 Other Mistakes Not Correctod.
Mistakes not incurred through the fault of
the Office, and not affordin: legal , rounds
for reissue, will not be corrected uft. r
the date of the patont.

Changes or corrections will not be made
in a patent after the date thereof except as
above provided.

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

16-2-2.
Handling

Requests for Certificates of Correction will be
forwarded by the Register, Correspondence and Mail Branch
to Issue and Gnzotte Branch, where they will be listod
in a perminont record book.

When the error is a printer's orror, or an orror
originating in Issuo and Gazotto Branch, the Chief of
Issue and Gazette Branch will state the facts and for-
ward tho file with the request for a cortificato of
correction to the Commissioner for action. If there is an
office error which did not originate in Issue and Gazotto
Branch, the Chief of Issue and Gazette Branch will obtain

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a report thereof from the D. vision respchaible for the
error und forward it with the file to the Commissioner
for action. do fras tos ible, ail po ort", if more than
one is necessary, will be n . siw/l: shoot of . pour.
After action by the Com Issiones, the Four and de Pile
will be returned to Iseuo ad Oidtutto Branch. If Cho
certificato of correction la ordered to 1800, it will
be prepared and forwarded to the wom takin the
request, by Issue and Onsotto 'irach.

The request, the Fort, and any of the letter
transmitting the cortifie to of corretta to Me person
paling the rou st will be I cod th chello ad en' ered
on the Index by Issue Ad Gratte Br ath, At which the
filo will be roturned to 'he mitente fllen.

If the certificate of correction la delse, the
request, the part, a ...: d con action to
the person who the NEWSLed the Me
and offered on the index b Inaute anu wasthe Branch,
after which the file will be returned to the patented
filos. (ordor No. 2737)

16-3.
Statutory Dlaelai : x

Rule 35.1 Statutory

Digelse . In Jatout.

A disclaimer under R.3.

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The examination as th formal matters of the dis-
clixor is performed by the Issue and Gazette Branch.

A disclaimer cannot be used to avoid _ rejection
on double patenting. Moreover, ono cannot publish a dis-
claimor or certain subject matter und thereafter file a
reissue including the matter disclaimed.