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

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.