Chapter 1400

Question 1

Title of Chapter

Answer 1

Correction of Patents

Question 2

Reissue (USC)

Answer 2

• 35 USC 251
• patent can be amended in 7 ways
  reissue,
  the issuance of a certificate of correction which becomes a part of the patent,
  disclaimer,
  reexamination,
  inter partes review,
  post grant review, and
  covered business method review.

Question 3

Grounds for Reissue

Answer 3

• at least 1 error
• error of:
• > claim scope
• > inventorship error
• > priority to foreign app
• > benefit claim to domestic app
• > drawing

Question 4

when to file reissue

Answer 4

w/in 2 years of grant of original app
CANNOT enlarge claim scope, only narrow
get filing date w/o oath, filing fee, search fee or examination fee

Question 5

patent term

Answer 5

shortened through terminal disclaimer, never lengthened

Question 6

reissue filed on/after 9.16.12

Answer 6

• reissue applicant original patentee or current patent owner
• inventors sign oath
• continuation/divisional reissue apps, copy of oath my be used
• need consent of ALL assignees

Question 7

reissue filed before 9.16.12

Answer 7

• must be made by inventor/person in place of inventor or made by assignee if reissue doesn’t enlarge scope
• oath signed by all inventors
• need consent of ALL assignees

Question 8

recapture of canceled subject matter

Answer 8

3 step test

1. determine if reissue claims broader in scope than original
2. determine if broader aspects of reissue claims relate to subject matter suspended in original prosecution
3. determine if reissue claims materially narrowed in other respects, claims not enlarged, and avoid recapture rule

Question 9

broadening reissue claims

Answer 9

• 35 USC 251
• enlarges scope of EVERY claim of original app
• w/in 2 years of grant of original app
• adding limitation is not broadening
• oath
  
  • on/after 9.16.12, filed by all inventors, supplemental not needed
  • before - applied for by all inventors

Question 10

claiming priority

Answer 10

• claim under 35 USC 119 (A) - (d) must be made even if made in original

Question 11

delay in examination

Answer 11

2 months to allow public to review

Question 12

interference / derivation

Answer 12

• interference only pre AIA 102(g)

- derivation only post AIA 102

Question 13

amendments to drawings

Answer 13

not allowed

Question 14

a ___ is necessary in order to ensure common ownership of reissue patents throughout remainder of unexpired term of original patent

Answer 14

terminal disclaimer