Reissue Applicant and Inventor's Oath or Declaration

I.

REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012

[Editor Note: See subsection II, below, for reissue applications filed

before September 16, 2012.]

35 U.S.C. 251

Reissue of defective patents.

*****

(c) APPLICABILITY OF THIS TITLE.— The provisions

of this title relating to applications for patent shall be applicable to

applications for reissue of a patent, except that application for reissue

may be made and sworn to by the assignee of the entire interest if the

application does not seek to enlarge the scope of the claims of the original

patent or the application for the original patent was filed by the assignee

of the entire interest.

*****

37 CFR 1.172  Reissue Applicant.

(a) The reissue applicant is the original patentee, or the

current patent owner if there has been an assignment. A reissue application

must be accompanied by the written consent of all assignees, if any,

currently owning an undivided interest in the patent. All assignees

consenting to the reissue must establish their ownership in the patent by

filing in the reissue application a submission in accordance with the

provisions of

§ 3.73(c)

of this

chapter.

(b) A reissue will be granted to the original patentee, his

legal representatives or assigns as the interest may appear.

37 CFR 1.175 Inventor's oath or declaration for a reissue application.

*****

(c) The inventor, or each individual who is a joint inventor

of a claimed invention, in a reissue application must execute an oath or

declaration for the reissue application, except as provided for in

§

1.64

, and except that the inventor's oath or

declaration for a reissue application may be signed by the assignee of the

entire interest if:

(1) The application does not seek to

enlarge the scope of the claims of the original patent; or

o is a joint inventor

of a claimed invention, in a reissue application must execute an oath or

declaration for the reissue application, except as provided for in

§

1.64

, and except that the inventor's oath or

declaration for a reissue application may be signed by the assignee of the

entire interest if:

(1) The application does not seek to

enlarge the scope of the claims of the original patent; or

(2) The application for the original patent was filed

under

§ 1.46

by the

assignee of the entire interest.

*****

For reissue applications filed on or after September

16, 2012, the reissue applicant is the original patentee, or the current patent

owner, if there has been an assignment. However the inventor, or each individual

inventor who is a joint inventor of a claimed invention, must execute an oath or

declaration for the reissue application, except as otherwise provided in

37 CFR

1.175(c)

. A reissue applicant may file a substitute statement

in lieu of the inventor’s oath or declaration as provided for in

37 CFR 1.64

(see

MPEP §

604

). In addition, the inventor’s oath or declaration may

be signed by the assignee of the entire interest if (a) the reissue application does

not seek to enlarge the scope of the claims of the original patent (

37 CFR

1.175(c)(1)

), or (b) the application for the original patent

was filed under

37 CFR 1.46

by the assignee of the entire interest

(

37

CFR 1.175(c)(2)

). When used in this context, “filed under

37 CFR

1.46

by the assignee of the entire interest” means that the

assignee of the entire interest was named as the applicant in the applicant section

of the application data sheet at the time of filing the underlying application that

became the patent for which reissue is now being sought. In this situation, the

reissue oath or declaration must be signed by a party authorized to act on behalf of

the assignee of the entire interest and may not be signed by the patent practitioner

of record

rest was named as the applicant in the applicant section

of the application data sheet at the time of filing the underlying application that

became the patent for which reissue is now being sought. In this situation, the

reissue oath or declaration must be signed by a party authorized to act on behalf of

the assignee of the entire interest and may not be signed by the patent practitioner

of record. See

MPEP § 325

, subsection V, items (A),

(B), and (D) for examples of a party authorized to act on behalf of the assignee of

the entire interest in signing a reissue oath or declaration.

For continuation or divisional reissue applications, a

copy of the inventor’s oath or declaration from the earlier-filed reissue application

may be used, provided that: (1) the inventor, or each joint inventor of a claimed

invention, in the reissue application executed an inventor’s oath or declaration for

the earlier-filed reissue application, except as provided in

37 CFR

1.64

; (2) the continuing reissue application does not seek to

enlarge the scope of the claims of the original patent; or (3) the application for

the original patent was filed under

37 CFR 1.46

by the assignee of

the entire interest. See

37 CFR 1.175(f)(1)

. Depending on

the circumstances, either Form PTO/AIA/05, Reissue Application Declaration by the

Inventor, or Form PTO/AIA/06, Reissue Application Declaration by the Assignee, may be

used to prepare a declaration in a reissue application. These forms are reproduced in

MPEP §

1414

, which includes additional information on the content

of reissue oaths or declarations, such as when the statement of at least one error in

a copy of the inventor’s oath or declaration from the earlier-filed reissue

application will be accepted by the Office.

II.

REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012

[Editor Note: See subsection I, above, for reissue applications filed on or

after September 16, 2012.]

35 U.S.C. 251

(pre-AIA) Reissue of defective patents

r declarations, such as when the statement of at least one error in

a copy of the inventor’s oath or declaration from the earlier-filed reissue

application will be accepted by the Office.

II.

REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012

[Editor Note: See subsection I, above, for reissue applications filed on or

after September 16, 2012.]

35 U.S.C. 251

(pre-AIA) Reissue of defective patents.

*****

The provisions of this title relating to

applications for patent shall be applicable to applications for reissue of a

patent, except that application for reissue may be made and sworn to by the

assignee of the entire interest if the application does not seek to enlarge the

scope of the claims of the original patent.

*****

Pre-AIA 37 CFR 1.172 Applicants, assignees.

(a) A reissue oath must be signed and sworn to or

declaration made by the inventor or inventors except as otherwise provided

(see

§§

1.42

,

1.43

,

1.47

),

and must be accompanied by the written consent of all assignees, if any,

owning an undivided interest in the patent, but a reissue oath may be made

and sworn to or declaration made by the assignee of the entire interest if

the application does not seek to enlarge the scope of the claims of the

original patent. All assignees consenting to the reissue must establish

their ownership interest in the patent by filing in the reissue application

a submission in accordance with the provisions of

§

3.73(b)

of this chapter.

t a reissue oath may be made

and sworn to or declaration made by the assignee of the entire interest if

the application does not seek to enlarge the scope of the claims of the

original patent. All assignees consenting to the reissue must establish

their ownership interest in the patent by filing in the reissue application

a submission in accordance with the provisions of

§

3.73(b)

of this chapter.

(b) A reissue will be granted to the original

patentee, his legal representatives or assigns as the interest may

appear.

For reissue applications filed before September 16,

2012, the reissue application must be made by the inventor or the person(s) applying

for a patent in place of the inventor as provided in

pre-AIA 37 CFR

1.42

,

1.43

, and

1.47

(see

MPEP §

409.01(b)

and

§ 409.03

et seq.

), except that the application for reissue may be made by

the assignee of the entire interest if the application does not seek to enlarge the

scope of the claims of the original patent. See

pre-AIA 35 U.S.C. 251

, third

paragraph.

The reissue oath must be signed and sworn to by all the inventors,

or declaration made by all the inventors, except as otherwise provided in

pre-AIA 37

CFR 1.42

,

1.43

, and

1.47

.

Alternatively, pursuant to

pre-AIA 37 CFR 1.172

, where the

reissue application does

not

seek to enlarge the scope of any of

the claims of the original patent, the reissue oath may be made and sworn to, or

declaration made, by the assignee of the entire interest. In this situation, a

reissue oath or declaration must be signed by a party authorized to act on behalf of

the assignee of the entire interest. See

MPEP § 324

, subsection V. Depending

on the circumstances, either Form PTO/SB/51, Reissue Application Declaration by the

Inventor, or Form PTO/SB/52, Reissue Application Declaration by the Assignee, may be

used to prepare a declaration in a reissue application. These forms are reproduced in

MPEP §

1414

, which includes additional information pertaining to

reissue oaths or declarations.

III

st. See

MPEP § 324

, subsection V. Depending

on the circumstances, either Form PTO/SB/51, Reissue Application Declaration by the

Inventor, or Form PTO/SB/52, Reissue Application Declaration by the Assignee, may be

used to prepare a declaration in a reissue application. These forms are reproduced in

MPEP §

1414

, which includes additional information pertaining to

reissue oaths or declarations.

III.

ADDING OR DELETING AN

INVENTOR

If an inventor is to be added in a reissue application, a proper

reissue oath or declaration including the signatures of all of the inventors is

required, except where the assignee of the entire interest can properly sign the

reissue oath or declaration. If one or more inventors are being deleted in a reissue

application, an oath or declaration must be supplied over the signatures of the

remaining inventors, except where the assignee of the entire interest can properly

sign the reissue oath or declaration. Note that although an inventor being deleted in

a reissue application need not sign the oath or declaration, if that inventor to be

deleted has any ownership interest in the patent (e.g., that inventor did not assign

away their rights to the patent), the signature of that inventor must be supplied in

a consent to the filing of the reissue application. See

MPEP §

1410.02

as to consent of assignee and

MPEP § 1412.04

as

to correction of inventorship via reissue.