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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for the ‘Oath or Declaration’ Category

Patent Reissue Oath Practice Revised by USPTO

Posted On: Jan. 11, 2012   By: Scott A. McKeown
reissue oathTroublesome Oath Requirements Revised

As anyone that has ever filed a patent reissue can attest, the inconsistent application of oath requirements can be maddening. In fact, the vast majority of patent reissue applications are delayed due to such informalities —aggravating an already significant problem.

As the America Invents Act has required that the “deceptive intent” component of patent reissue oaths be stricken, the USPTO has taken the opportunity to fix a few other problems while they were under the hood. Last Friday, a Notice of Proposed Rule making entitled “Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act.” (here) Read the rest of this entry »

Defects in Patent Reissue Oaths Inefficiently Cured

Posted On: Oct. 20, 2011   By: Scott A. McKeown

patent reissue oathMost practitioners are well aware that disputes with the USPTO over formal oath requirements in patent reissue are the rule, not the exception.  I have written extensively in the past as to the significant delays caused by this seemingly straight forward formal requirement.

In most cases, the dispute relates to a lack of specificity in identifying the error to be corrected in the patent reissue application. While in many cases the correction necessary is relatively minor. However, in most cases the objection raised relative to the oath does not come from the examiner, but instead, a Quality Assurance Specialist (QAS) of the USPTO. Thus, it is not uncommon to contact the examiner to request a recommended change to an oath to finally settle the dispute only to have the examiner inform you “I think it’s fine, but the QAS has some issue that I don’t really understand.” This leaves the Patentee with no efficient means to address the problem in a timely manner. This type of roadblock is especially aggravating in broadening patent reissue applications.

Read the rest of this entry »

Defective Oaths Plague Patent Reissue Filings

Posted On: Nov. 24, 2010   By: Scott A. McKeown

Upward of 70% of Patent Reissue Filings Include a Defective Oath

oaths

(click to enlarge)

As most practitioners are well aware, defective oaths in patent reissue are the rule, not the exception. As the chart above demonstrates for patent reissues filed in 2005, such oath problems lead to longer patent reissue pendencies.

With narrowing patent reissue filings constituting the bulk of patent reissue applications at the USPTO, it is not surprising that the impact of defective oaths are more pronounced in this sub-category. For narrowing reissue applications filed in 2005, applications without any oath problems were completed 1.14 years faster (1.74 vs 2.88 years) than those with oath problems.

Surely, both the USPTO and stakeholders share the blame equally for these recurring problems. As demonstrated just yesterday, these issues are rarely resolved prior to appeal. Read the rest of this entry »

Patent Reissue Oaths Can Impact Claim Interpretation

Posted On: Oct. 8, 2010   By: Scott A. McKeown
loose-lips-sink-shipsComparing Claims in Reissue Oath Haunts Patent Holder

On Wednesday, the Federal Circuit reversed a decision of the ITC that excluded the imports of Lucky Litter, LLC. The case (here) related to cat litter boxes having an automated cleaning feature. In reversing the ITC, the CAFC found that the “predetermined event” recited in claim 33 of the patent at issue (RE 36,847), was not limited to a cat exiting the litter box.

Prior to seeking patent reissue, claim 1 of the patent recited a “cat exit sensor for sensing a cat exit” and a “delay means.” The Patentee filed a broadening patent reissue to remove these features. The reissue application oath explained that “[i]n particular, claim 1 of U.S. Patent 5,477,812 contains recitations regarding a cat exit sensor and delay means which are too limiting of the invention and unnecessary in view of the prior art. Claims 23 through 48 of the reissue application have limitations similar to those of claim 1, but define the invention with greater breadth.”

The CAFC performed a traditional Phillips analysis of the ITC claim construction and held that “predetermined event,” by plain meaning, could not be limited to “cat exit.”  Still, the statement in the oath was cited by the court as a guidepost of the broader meaning of the claims added in reissue. Hindsight always being 20/20, what could the Patentee have done to potentially avoid this result? Read the rest of this entry »

PEELING BACK THE LAYERS OF TANAKA: PATENT OWNER INITIATED REEXAMINATION AS AN ALTERNATIVE TO REISSUE

Shift_keyEx Parte Tanaka, decided last December by the Board of Patent Appeals and Interferences (BPAI), held that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent.  Although this decision is seemingly straight forward on its face, Tanaka may cause a significant shift in the workload internal to the USPTO.

With pendency of patent applications increasing and a growing inventory of applications awaiting appeal, a cynic would argue that Tanaka is a transparent attempt by the Board of Patent Appeals and Interferences (“BPAI”) to reduce the number of pending reissue applications awaiting examination, and/or to short circuit applicant efforts to use patent reissue as a substitute for failing to keep a continuation application pending.  Be that as it may be, an unintended consequence of Tanaka will likely be Read the rest of this entry »

Use of Assignee Consent and Oath/Declaration from Parent Reissue Application in a Continuation Reissue- Is there an Exception to MPEP § 1451?

Posted On: Jan. 4, 2010   By: Stephen G. Kunin

MPEP § 1451 cautions applicants against filing a copy of the oath/declaration and assignee consent from the parent reissue application when a continuation reissue is filed without abandonment of the parent reissue application. It indicates that in such circumstances OPIE should accord a filing date to the continuation reissue application and send out a notice of missing parts stating that there is no proper consent and setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 1.16(f).

This section then instructs examiners to reject the claims of the continuation reissue application under 35 U.S.C. § 251 for failure to identify an error being corrected by the continuation reissue application. It further advises examiners to require a new oath/declaration under 37 CFR 1.175(e).

However, I submit that there should be an exception to the aforementioned guidance in the following circumstances. Suppose applicant files a reissue application, in which, during examination, the broadest claims, including the claim in which the error identified in the reissue declaration as the basis for the reissue, are rejected. Other dependent claims are indicated to be allowable by the examiner, if rewritten in independent form. Applicant files an amendment rewriting the dependent objected to claims in independent form and further files a supplemental reissue declaration identifying a new error resulting from the claim amendments. Applicant wishing to promptly obtain the parent reissue patent, files a continuation reissue on the broadest claims, including the claim that was the basis for the error in the parent reissue application and allows the parent reissue application to issue on the narrower claims now written in independent form.

In these circumstances, although a terminal disclaimer may be necessary to overcome an obviousness-type double patenting rejection in the continuation reissue to ensure the common ownership of both the parent reissue and continuation reissue, it would appear that the continuation reissue could be properly filed with copies of the assignee consent and parent reissue declaration despite the admonition in MPEP § 1451. The assignee consent would be proper since no new correction has been added. The error specified in the parent reissue application would still be applicable to the continuation reissue.

Furthermore, even if the parent reissue patent was granted while the continuation reissue remained pending the effect of the surrender of the original patent should not act as a surrender of the then pending claims in the continuation reissue application. See the related December 14, 2009 posting regarding Ex parte Bayles on www.patentspostgrant.com. Applicant should be able to pursue the claims in the continuation reissue, albeit it may take an appeal to the BPAI or the filing of 37 CFR 1.132 declarations to prevail against the examiner’s rejection.

When is a Supplemental Reissue Oath/ Declaration Required?

Posted On: Dec. 30, 2009   By: Stephen G. Kunin

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.