MPEP § 1414.01 provides concise guidance regarding when a supplemental reissue oath or declaration is required and what it must contain. A supplemental oath/declaration is required in a reissue application where any “error” under 35 U.S.C. 251 has been corrected and the error was not identified in the original reissue oath/declaration. The supplemental reissue oath/declaration must state that every error which was corrected in the reissue application not covered by the prior oath(s)/declaration(s) submitted in the application arose without any deceptive intention on the part of the applicant.
A supplemental reissue oath/declaration will not be effective for any errors which are corrected by a filing made after the execution of the supplemental reissue oath/declaration, unless it is clear from the record that the parties executing the document were aware of the nature of the correction when they executed the document. Further, a supplemental reissue oath/declaration with an early date of execution cannot be filed after a correction made later in time, to cover the correction made after the execution date. This is so, even if the supplemental reissue oath/declaration states that all errors up to the filing of the supplemental reissue oath/declaration oath or declaration arose without any deceptive intention on the part of the applicant.
Form PTO/SB/51S, “Supplemental Declaration For Reissue Patent Application To Correct ‘Errors’ Statement (37 CFR 1.175),” may be used to prepare a supplemental reissue declaration. Form PTO/SB/51S serves to indicate that every error in the patent that was corrected in the reissue application, but was not covered by a prior reissue oath/declaration submitted in the reissue application, arose without any deceptive intention on the part of the applicant.
In the event that the applicant for a reissue applicant is required to file a supplemental reissue oath/declaration that also includes a specific statement of the error being corrected by reissue in accordance with 37 CFR 1.175(c), as discussed in subsection I. below, applicant must also include in the supplemental declaration language equivalent to the “Every error .” language in the example of acceptable language set forth above. Therefore, if either form PTO/SB/51, “Reissue Application Declaration By The Inventor,” or form PTO/SB/52, “Declaration By The Assignee” (see MPEP § 1414) is used for the purpose of filing such supplemental reissue oath/declaration, the form must be completed so that it is clear that the supplemental reissue oath/declaration addresses all errors corrected subsequent to the date upon which the last previously reissue oath/declaration (whether original or supplemental) was filed. For example, the form could be completed by specifying the date upon which the reissue application was originally filed, the reissue application number, and the date(s) of every amendment filed subsequent to the date upon which the last reissue oath/declaration (whether original or supplemental) was filed. Any manner of completing the form so that affiant/declarant unambiguously states that every error corrected subsequent to the filing of the last filed reissue oath/declaration (whether original or supplemental) arose without deceptive intent will be acceptable. It will not be acceptable for the new (”catch-up”) oath/declaration to simply refer to the reissue application as filed, even though the new oath/declaration may be submitted after an amendment.
I. WHEN AN ERROR MUST BE STATED IN THE SUPPLEMENTAL OATH/DECLARATION
In the supplemental reissue oath/declaration, there is no need to state an error which is relied upon to support the reissue application if:
(A) an error to support a reissue has been previously and properly stated in a reissue oath/declaration in the application; and
(B) that error is still being corrected in the reissue application.
If applicant chooses to state any further error at this point (even though such is not needed), the examiner should not review the statement of the further error.
The supplemental reissue oath/declaration must state an error which is relied upon to support the reissue application only where one of the following is true:
(A) the prior reissue oath/declaration failed to state an error;
(B) the prior reissue oath/declaration attempted to state an error but did not do so properly; or
(C) all errors under 35 U.S.C. 251 stated in the prior reissue oath(s)/declaration(s) are no longer being corrected in the reissue application.
II. WHEN A SUPPLEMENTAL OATH/DECLARATION MUST BE SUBMITTED
The supplemental oath/declaration in accordance with 37 CFR 1.175(b)(1) must be submitted before allowance. Where applicant seeks to correct an error after allowance of the reissue application, a supplemental reissue oath/declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant. The supplemental reissue oath/declaration submitted after allowance will be directed to the error applicant seeks to correct after allowance. This supplemental oath/declaration need not cover any earlier errors, because all earlier errors should have been covered by a reissue oath/declaration submitted before allowance.
III. SUPPLEMENTAL OATH/DECLARATION IN BROADENING REISSUE
A broadening reissue application must be applied for by all of the inventors (patentees), that is, the original reissue oath/declaration must be signed by all of the inventors. See MPEP § 1414. If a supplemental oath/declaration in a broadening reissue application is subsequently needed in the application in order to fulfill the requirements of 37 CFR 1.175, the supplemental reissue oath/declaration must be signed by all of the inventors. In re Hayes, 53 USPQ2d 1222, 1224 (Comm’r Pat. 1999) (”37 CFR 1.175(b)(1), taken in conjunction with Section 1.172, requires a supplemental declaration be signed by all of the inventors. This is because all oaths or declarations necessary to fulfill the rule requirements in a reissue application are taken together collectively as a single oath or declaration. Thus, each oath and declaration must bear the appropriate signatures of all the inventors.”).
If a joint inventor refuses or cannot be found or reached to sign a supplemental oath/declaration, a supplemental oath/declaration listing all the inventors, and signed by all the available inventors may be filed provided it is accompanied by a petition under 37 CFR 1.183 along with the petition fee, requesting waiver of the signature requirement of the non-signing inventor.