By Stephen G. KuninOn March 2, 2010, the USPTO held a Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting at its Madison Auditorium. Among the various topics presented was a set of USPTO Slides by Jean Vollano, a Quality Assurance Specialist in TC 1600. Her presentation was informative and worth a detailed review. She covered reissue practice relating to (1) amendments to claims, description and drawings, (2) inclusion of certificates of correction in reissue applications, (3) oaths/declarations and (4) amendments to a reissue of a reissued patent.
| March 10, 2010
Her slides provide examples of how to properly amend claims in reissue applications emphasizing the need to amend original patent claims using brackets and underlining of original patent claim text. She reminded applicants that changes to the written description of a reissued patent must be made by submission of the entire text of an added or rewritten paragraph. Amendments to the drawings are done by way of replacement sheets with Figures identified as (Amended) or (Canceled).
Certificate of correction changes are considered as part of the patent as issued. The certificate of correction changes must be made to the patent in the description, abstract, or claims without underlining or bracketing. This procedure also applies to certificates of correction approved during the pendency of the reissue application. The changes are deemed retroactive to the date of the patent so the changes are not to be shown in italics or bracketing in the specification of the reissue application. Unless the patent examiner require a replacement specification in a reissue application, replacement specifications cannot be submitted without a petition under 37 CFR 1.183 for waiver of the requirements of 37 CFR 1.125(d) and 1.173(a)(1).
The USPTO recommends use of its inventor and assignee forms (PTO/SB/51 (05-08) and PTO/SB/52 (05-08)) for reissue applications. Ms. Vollano provides examples of how to properly specify at least one error in a reissue oath/declaration. Lack of specificity has been a common problem leading not only to treatment of the reissue oath/declaration as defective, but also rejection of all reissue applications under 35 U.S.C. § 251 based on the defective reissue oath/declaration. She reminded applicants regarding the need to file a supplemental oath/declaration for any error corrected, which is not covered by the original reissue oath/declaration.
For amendments in a reissue application for a reissued patent double underlining and double bracketing is used. Italics shown in the original patent should remain in such format when filing the reissue application.
It should be noted when reviewing slide 32 of her presentation, that the Ex Parte Tanaka precedential BPAI decision has now been appealed to the Federal Circuit.