Takeaway:
- When a patent owner needs to amend their previously issued reissue patent, counsel needs to adhere to rarely used formatting rules taking into account the changes identified in the previous reissue patent, certificate of corrections of the original and reissued patent, and disclaimers.
Over the past couple of years we have discussed the important role a broadening or narrowing reissue can play in proper portfolio development and resuscitation of a patent or patent family after invalidation in court or the Patent Trial and Appeal Board. But there is another avenue of reissue that is less often thought about or used—a reissue of a reissued patent to fix errors with the reissue patent or resuscitate the reissued patent.
This article will only address a few important rules that need to be followed for this rare reissue proceeding.
For example, according to MPEP § 1411, when a copy of a first reissue patent is presented as the specification of a second reissue application (filed as a reissue of a reissue), additions made by the first reissue will already be printed in italics, and should remain in such format. Amendments for the second reissue should be made using double underlining for additions. Deletions of amendments from the first reissue in the second reissue should be presented using double brackets. And then, during prosecution of the second reissue patent, triple underlining and brackets may be needed for certain additions and deletions of features.
Additionally, further complexity is added for reissue applications of reissued patents that have certificates of correction and statutory disclaimer. MPEP § 1411.01 discusses how the applicant and Examiner should ensure that all certificate of correction changes should be incorporated into the reissue application. This includes all certificates of correction issued before and during the pendency of the prior reissue application. Because certificates of corrections and disclaimers are considered to be retroactively applied to the original application and made before the prior and current reissue application, the changes made by the certificates should be represented as part of the original patent in the printed reissue. Therefore, the changes are not represented with any italics, underlining, or brackets.
However, for a reissue application where the patent already has a certificate of correction issued, if a claim is cancelled through the certificate, the deletion should be represented with a line through the claim rather than surrounded by brackets. Similarly, if a claim is cancelled through a statutory disclaimer, its deletion should be represented with a strikethrough rather than the double brackets.
If any of these changes are improperly made, the Office will require the applicant to correct the issue by filing replacement paragraph(s) without the improper markings. If the changes are extensive, the Office may require the applicant to file a clean copy of the specification along with a petition under 37 C.F.R. § 1.183 for waiver of 37 C.F.R. § 1.125(d) and 37 C.F.R. § 1.173(a)(1).
Finally, in addition to formatting, the patent practitioner needs to provide appropriate priority statements in both the first line of the patent and the application data sheet, ensuring the Office knows the correct priority chain leading the request for a reissue of a reissued patent.
