Content of Reissue Application

37 CFR 1.171  Application for reissue.

An application for reissue must contain the same parts required for an

application for an original patent, complying with all the rules relating thereto except

as otherwise provided, and in addition, must comply with the requirements of the rules

relating to reissue applications.

37 CFR 1.173  Reissue specification, drawings, and amendments.

(a)

Contents of a reissue application

. An application for reissue

must contain the entire specification, including the claims, and the drawings of

the patent. No new matter shall be introduced into the application. No reissue

patent shall be granted enlarging the scope of the claims of the original patent

unless applied for within two years from the grant of the original patent,

pursuant to

35

U.S.C. 251.

(1)

Specification, including claims.

The entire

specification, including the claims, of the patent for which reissue is

requested must be furnished in the form of a copy of the printed patent, in

double column format, each page on only one side of a single sheet of paper.

If an amendment of the reissue application is to be included, it must be

made pursuant to paragraph (b) of this section. The formal requirements for

papers making up the reissue application other than those set forth in this

section are set out in

§ 1.52

. Additionally, a

copy of any disclaimer (

§ 1.321

), certificate of

correction (

§§ 1.322

through

1.324

), or reexamination certificate

(

§

1.570

) issued in the patent must be included. (See

also

§

1.178

).

t must be

made pursuant to paragraph (b) of this section. The formal requirements for

papers making up the reissue application other than those set forth in this

section are set out in

§ 1.52

. Additionally, a

copy of any disclaimer (

§ 1.321

), certificate of

correction (

§§ 1.322

through

1.324

), or reexamination certificate

(

§

1.570

) issued in the patent must be included. (See

also

§

1.178

).

(2)

Drawings.

Applicant must submit a clean copy of each

drawing sheet of the printed patent at the time the reissue application is

filed. If such copy complies with

§ 1.84

, no further

drawings will be required. Where a drawing of the reissue application is to

include any changes relative to the patent being reissued, the changes to

the drawing must be made in accordance with paragraph (b)(3) of this

section. The Office will not transfer the drawings from the patent file to

the reissue application.

*****

The specification (including the claims and any drawings) of the reissue

application is the copy of the printed patent for which reissue is requested that is

submitted by applicant as part of the initial application papers. The copy of the printed

patent must be submitted in double column format, each page of double column format being

on only one side of the piece of paper. It should be noted that a re-typed specification is

not acceptable in a reissue application; the full copy of the printed patent must be used.

In addition, an applicant for reissue is required to file a reissue oath or declaration

which, in addition to complying with

37 CFR 1.63

, must comply with

37 CFR

1.175

. Where the patent has been assigned, the reissue applicant must

also provide a consent of assignee to the reissue and evidence of ownership. Where the

patent has not been assigned, the reissue applicant should affirmatively state that the

patent is not assigned.

An amendment may be submitted at the time of filing of a reissue

application

complying with

37 CFR 1.63

, must comply with

37 CFR

1.175

. Where the patent has been assigned, the reissue applicant must

also provide a consent of assignee to the reissue and evidence of ownership. Where the

patent has not been assigned, the reissue applicant should affirmatively state that the

patent is not assigned.

An amendment may be submitted at the time of filing of a reissue

application. The amendment may be made either by:

(A) physically incorporating the changes within the specification by

cutting the column of the printed patent and inserting the added material and

rejoining the remainder of the column and then joining the resulting modified column

to the other column of the printed patent. Markings pursuant to

37 CFR 1.173(d)

must be used to show the changes. The columnar structure of the printed patent must

be preserved, and the physically modified page must comply with

37 CFR

1.52(a)(1)

. As to compliance with

37 CFR

1.52(a)(1)(iv)

, the

"written either by a typewriter or machine printer in permanent dark ink or its

equivalent"

requirement is deemed to be satisfied where a

caret and line are drawn from a position within the text to a newly added phrase,

clause, sentence, etc. typed legibly in the margin; or

(B) providing a separate amendment paper with the reissue

application.

The presentation of the insertions or deletions as part of the original

reissue specification is an amendment under

37 CFR 1.173(b)

. An amendment of the

reissue application made at the time of filing of the reissue application must be made in

accordance with

37 CFR

1.173(b)-(e) and (g)

; see

MPEP § 1453

. Note that the provisions of

37 CFR

1.53(b)

, effective December 18, 2013, stating that an application may

be accorded a filing date “with or without” claims, does not apply in reissue applications,

as

37 CFR

1.173(a)(1)

requires the filing of the entire specification,

including the claims of the original patent

ication must be made in

accordance with

37 CFR

1.173(b)-(e) and (g)

; see

MPEP § 1453

. Note that the provisions of

37 CFR

1.53(b)

, effective December 18, 2013, stating that an application may

be accorded a filing date “with or without” claims, does not apply in reissue applications,

as

37 CFR

1.173(a)(1)

requires the filing of the entire specification,

including the claims of the original patent. A preliminary amendment cancelling all

original claims without presenting any new claims would be inappropriate under

37 CFR

1.115(b)(1)

. If an application is filed without claims, but otherwise

complies with

37 CFR

1.53(b)

and the reissue rules, the Office of Patent Application

Processing (OPAP) will accord a filing date and send out a notice of missing parts setting

a period of time for filing the missing part and for payment of any surcharge required

under

37 CFR

1.53(f)

and

37 CFR 1.16(f)

.

If the changes to be made to the patent are so extensive that reading and

understanding the specification is extremely difficult and error-prone, a clean, typed copy

of the specification may be submitted if accompanied by a grantable petition under

37 CFR

1.183

for waiver of

37 CFR 1.125(d)

and

37 CFR

1.173(a)(1)

.

Pursuant to

37 CFR 1.173(a)(1)

, applicant is

required to include a copy of any disclaimer (

37 CFR 1.321

), certificate of

correction (

37 CFR

1.322

–

1.324

), reexamination certificate

(

37 CFR

1.570

and

1.997

) or certificate from a trial

before the Patent Trial and Appeal Board (PTAB) (

37 CFR

42.80

) issued in the patent for which reissue is requested. If there

was a prior change to the patent (made via a certificate, reissue of the patent,

disclaimer, etc.), the first amendment of the subject reissue application must be made

relative to the patent as changed by the prior proceeding or other mechanism for changing

the patent

rial

before the Patent Trial and Appeal Board (PTAB) (

37 CFR

42.80

) issued in the patent for which reissue is requested. If there

was a prior change to the patent (made via a certificate, reissue of the patent,

disclaimer, etc.), the first amendment of the subject reissue application must be made

relative to the patent as changed by the prior proceeding or other mechanism for changing

the patent.

It should also be noted that

37 CFR 1.178(b)

requires reissue applicants to call to the attention of the Office any prior or concurrent

proceedings in which the patent (for which reissue is requested) is or was involved, such

as interferences, reissues, reexaminations, or litigation (litigation covers any papers

filed in the court or issued by the court, such as, for example, motions, pleadings, and

court decisions including court orders) and the results of such proceedings. This duty is a

continuing duty, and runs from the time the reissue application is filed until the reissue

application is abandoned or issues as a reissue patent.

It is no longer required that the reissue applicant physically surrender

the original patent, see

MPEP § 1416

.

When appropriate, the reissue applicant must provide a claim for

priority/benefit under

35

U.S.C. 119

or

120

in the reissue application. Benefit

and priority claims made in the patent for which reissue is sought do not carry over into

the reissue application. For any reissue filed on or after September 16, 2012, the

priority/benefit claim information must be in an application data sheet (ADS) under

37 CFR

1.76

and must be made within the time period set forth in

37 CFR

1.55

and

1.78

unless a petition for an

unintentionally delayed priority or benefit claim is filed. See

MPEP § 1402

, subsections

III and IV, for more information. An ADS is also required if an application under

35 U.S.C.

111(a)

is made by a person other than the inventor.

Where appropriate, the reissue applicant may also file an

Information Disclosure Statement

the time period set forth in

37 CFR

1.55

and

1.78

unless a petition for an

unintentionally delayed priority or benefit claim is filed. See

MPEP § 1402

, subsections

III and IV, for more information. An ADS is also required if an application under

35 U.S.C.

111(a)

is made by a person other than the inventor.

Where appropriate, the reissue applicant may also file an

Information Disclosure Statement.

A reissue application that discloses nucleotide and/or

amino acid sequences must comply with the sequence rules (

37 CFR

1.831

-

37 CFR 1.839

for reissue applications

filed on or after July 1, 2022 and

37 CFR 1.821

-

1.825

for reissue

applications filed before July 1, 2022). See

MPEP §

2412

et seq.

for detailed information pertaining to the submission of

“Sequence Listing XMLs” and

MPEP § 2422.03

et seq.

for detailed information pertaining to the submission of

"Sequence Listings".

The initial contents of a reissue application are discussed in detail in

MPEP §

1410.01

through

§ 1418

.

For expedited processing, new and continuing reissue application filings

under

37 CFR

1.53(b)

may be addressed to: Mail Stop REISSUE, Commissioner for

Patents, P.O. Box 1450, Alexandria, VA 22313-1450. Mail Stop REISSUE should only be used

for the initial filing of reissue applications, and should

not

be

used for any subsequently filed correspondence in reissue applications. Reissue

applications may be filed through the USPTO patent electronic filing system. See

MPEP §

502.05

. When filing a reissue application electronically, an

applicant should choose the “reissue” radio button. Regardless of the manner of filing, all

new reissue filings should include a copy of a completed Reissue Patent Application

Transmittal Form (PTO/AIA/50) to ensure that the filing of the new application will be

recognized as a reissue application.

The oath or declaration, any matters ancillary thereto (such as the

consent of assignee), and the basic filing fee, search fee, and examination fee may be

submitted after the filing date pursuant to

37 CFR 1.53(f)

ould include a copy of a completed Reissue Patent Application

Transmittal Form (PTO/AIA/50) to ensure that the filing of the new application will be

recognized as a reissue application.

The oath or declaration, any matters ancillary thereto (such as the

consent of assignee), and the basic filing fee, search fee, and examination fee may be

submitted after the filing date pursuant to

37 CFR 1.53(f)

.

The assignee entity is established by a statement on behalf of all the

assignees under

37 CFR

1.172(a)

and

37 CFR 3.73

. See

MPEP § 1410.01

.

A guide for filing reissue applications on or after

September 16, 2012 is available at

www.uspto.gov/sites/default/files/forms/

uspto_reissue_ads_guide_Sept2014.pdf

Form PTO/AIA/50, Reissue Patent Application Transmittal, which may be used

for filing reissue applications, is reproduced below.