Reissue Practice Robert W Reissue Practice Robert W. Bahr Acting Associate Commissioner for Patent Examination Policy

Discussion Points 1. Applicable Statute 2. Treatment of Reissue Applications 3. Grounds for Filing 4. Limitations 5. Filing Requirements 6. Oaths or Declarations 7. Consent 8. Amendments 9. Multiple Reissue Applications 10. Maintenance Fees 11. Information and Contacts

Applicable Statute 35 U.S.C. §§ 251 & 252 Reissue of an original patent - Permits errors made in the original patent to be corrected. Permits claims to be broadened, if the broadening reissue is filed within two years of issuance of the original patent. See the Manual of Patent Examining Procedure (MPEP) §§ 1401-1470

35 U.S.C. § 251 Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue. … No reissued 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.

Open to the Public Reissue applications are open to inspection by the general public and copies may be furnished upon payment of a fee. Image File Wrapper (IFW) reissue applications are open to inspection by the general public via the Public Patent Application Image Retrieval (PAIR) system on the USPTO web site. The filing of reissue applications is announced in the Official Gazette. See MPEP §§ 1430 and 1441. Announcement in the OG and waiting 2 months after OG publication to act on the reissue application gives interested members of the public an opportunity to file a protest. The Office will generally wait the 2 months, however, it should be noted that the Office may act on a continuation or divisional reissue before the expiration of the 2-month period, and a reissue applicant may petition the Office under 37 CFR 1.182 to act on the reissue application without delaying for 2 months (e.g., where the underlying patent for which reissue is sought is in litigation).

Special Status Reissue applications are taken up “special, ” meaning they are to be taken up for examination in advance of other applications, and remain “special” even if applicant does not respond promptly. All reissue applications, except those under suspension because of litigation, will be taken up for action ahead of other “special” applications, and reissue applications involved in litigation will be taken up for action in advance of other reissue applications. See 37 CFR § 1.176 and MPEP § 1442.

Notice of Concurrent Proceedings Reissue applicants must notify the Office of any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences, reissues, reexaminations, or litigations, and the results of such proceedings. This duty of notification is continuing, and exists from the time the reissue application is filed until the reissue application is abandoned or issues as a reissue patent. See 37 CFR § 1.178 and MPEP § 1418.

Grounds for Filing Defective Specification or Drawing Patentee claiming less than or more than he had a right to claim in the patent Correction of inventorship (though this can also be accomplished by filing a request for Certificate of Correction under 35 U.S.C. § 256 and 37 CFR § 1.324) Failure to claim or incorrectly claiming foreign priority Failure to make reference or incorrect reference to prior copending U.S. applications 8

Defective Specification or Drawing A reissue application is an appropriate vehicle to correct defects in the specification or drawing(s). The error must render the patent wholly or partly inoperative or invalid. The correction must be substantive in nature. A non-substantive drawing change, such as a reference numeral correction or addition, the addition of shading, or even the addition of an additional figure merely to “clarify” the disclosure, is not sufficient. A spelling, grammar, typographical, editorial or clerical error that does not cause the patent to be wholly or partly inoperative or invalid is also not sufficient. 9

Defective Claim(s) A reissue application is an appropriate vehicle to correct a defective claim. The correction must be substantive in nature and render the patent wholly or partly inoperative or invalid. Where the patentee claimed more than he/she had a right to claim, the identified claims must be narrowed by amendment or canceled. Where the patentee claimed less than he/she had a right to claim, the claims may be broadened, provided: The broadened claims are presented within two years from the grant of the original patent; and The broadened claims are directed to the same disclosed invention. See MPEP §§ 1402, 1412.01 and 1412.03 10

Correction of Inventorship A reissue application is an appropriate vehicle to correct inventorship. Since correction of inventorship does not enlarge the scope of the claims, the reissue oath or declaration could be made or sworn to by the assignee of the entire interest. See 37 CFR § 1.172. An assignee of the entire interest could add or delete the name of an inventor by reissue without the original inventor’s consent, and even though an inventor might disagree. See MPEP § 1412.04. 11

Perfecting a Benefit Claim A reissue application is a proper vehicle for perfecting foreign priority under 35 U.S.C. § 119(a)-(d). See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975). Where a reissue applicant (1) submits for the first time both (a) a claim for foreign priority (35 U.S.C. § 119(a)-(d)) and (b) the certified copy of the priority document in the reissue application, and (2) the patent to be reissued resulted from an application filed on or after 11/29/00, a petition to accept an unintentionally delayed priority claim under § 1.55(c) is required together with the petition fee. Where the patent to be reissued resulted from an application filed before 11/29/00, no petition is required. 12

Perfecting a Benefit Claim A reissue application is a also proper vehicle for claiming benefit to an earlier filed copending U.S. patent application under 35 U.S.C. § 120. See Sampson v. Comm’r Pat., 195 USPQ 136, 137 (D.D.C. 1976). Where domestic (35 U.S.C. §120) benefit is being claimed for the first time and the patent to be reissued resulted from an application filed on or after 11/29/00, a petition to accept an unintentionally delayed benefit claim under § 1.78(a)(3) is required together with the petition fee. No petition is required where the patent to be reissued resulted from an application filed before 11/29/00. Reissue can be filed where the patentee failed to claim benefit under 120 altogether or where they failed to adequately claim benefit (e.g., did not properly state a relationship, needed 1.78(a)(3) petition but failed to file it, etc.) 13

Perfecting a Benefit Claim A reissue application may be filed to add or correct a benefit claim to a provisional application under 35 U.S.C. § 119(e). Where a domestic (35 U.S.C. § 119(e)) benefit claim is being added and the patent to be reissued was filed on or after 11/29/00, a petition for unintentionally delayed claim is NOT required. The courts have not addressed the question of correction of the failure to adequately claim benefit under 35 U.S.C. 119(e) in the application (which became the patent to be reissued) via reissue. If the application which became the patent to be reissued was filed before November 29, 2000, correction as to benefit under 35 U.S.C. 119(e) would be permitted in a manner somewhat analogous to that of the priority correction. Where the application, which became the patent to be reissued, was filed on or after November 29, 2000, reissue may be employed to correct an applicant’s mistake by adding or correcting a benefit claim under 35 U.S.C. 119(e). A petition under 37 CFR 1.78(a)(6) for an unintentionally delayed claim under 35 U.S.C. 119(e) would not be required in addition to filing a reissue application. Section 4503 of the American Inventors Protection Act of 1999 (AIPA) amended 35 U.S.C. 119(e)(1) to state that: No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section during the pendency of the application. (Emphasis added.) 14

Limitations on Reissue (1 of 7): In General No reissue application, unless “error” in the patent within the meaning of 35 U.S.C. § 251. No reissue for correction of spelling, grammar, typographical, editorial or clerical errors. Certificate of Correction is a proper vehicle for these errors. See MPEP § 1481. No reissue solely to review a patent based on new prior art. Reexamination is a proper vehicle for such review. See MPEP §§ 2200 & 2600. 37 CFR § 1.177 Issuance of multiple reissue patents. … (c) ... No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself.

Limitations on Reissue (2 of 7): In General No reissue solely to present narrower claims where all of the original patent claims are retained. This is not an “error” that is correctable by reissue. See MPEP § 1402 and Ex parte Tanaka, 93 USPQ2d 1291 (Bd. Pat. App. & Int. 2009). See www.uspto.gov/web/offices/pac/dapp/opla/ documents/reissue_narrower_claims_11152007.pdf Reissue statute not a cure for all patent prosecution problems, nor a grant of second chance to prosecute de novo original application. Must be to correct "inadvertence, accident, or mistake." In re Weiler, 229 USPQ 673 (Fed. Cir. 1986). 37 CFR § 1.177 Issuance of multiple reissue patents. … (c) ... No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself.

Limitations on Reissue (3 of 7): In General Expired patent is not eligible for reissue. Patent is reissued “for the unexpired part of the term of the original patent.” 35 U.S.C. § 251. Failure to pay maintenance fees may result in termination of the reissue. Term of patent cannot be extended by eliminating 35 U.S.C. § 120 benefit claims in a reissue; original term remains in effect. Subject matter surrendered to obtain the original patent cannot be recaptured by filing a reissue.

Limitations on Reissue (4 of 7): Recapture Patentee cannot recover subject matter surrendered in an effort to obtain allowance of the original patent claims over the art, even within 2 years of patent grant, via broadening in reissue. Rationale: deliberate withdrawal of claimed subject matter or amendment in order to obtain allowance of the patent over the art cannot be “error” as required by statute. MPEP § 1412.02 discusses one example of an “error” that is not correctible by reissue because it is not an error within the meaning of the statute: a broadening that attempts to “recapture claimed subject matter which was surrendered in an application to obtain the original patent.” “Surrendered subject matter” is one of two things: The claim scope of the application claims that were canceled/amended in order to thereby narrow the claims and obtain the allowance of the patent over the art; or The right to a claim that does not include all of a particular limitation that had been added/argued in the original application to overcome a prior art rejection.

Limitations on Reissue (5 of 7): Claim Broadening No broadening of patent claims outside of two years from Patent Grant. 35 USC § 251 - “No reissued 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.” Reissue application in which no intent to broaden is shown until after two years may not be later broadened during prosecution outside of two years. Intent to broaden must be established in the reissue application within two years – In re Graff, 42 USPQ2d 1471.

Limitations on Reissue (6 of 7): Claim Broadening Test for broadening of patent claims: Any amended/new claim in the reissue that contains within its scope any conceivable invention which would not have infringed the existing patent claims. Tillotson, Ltd. v. Walbro Corp., 4 USPQ2d 1450 (Fed. Cir. 1987). Could reissued patent be used to catch at least one new infringer? An amended/new claim in the reissue broadens the scope of the claims of the original patent if it is broader in at least one respect, even though it may be narrower in many other respects. See MPEP § 1412.03(I) – Broadening Reissue Claims

Limitations on Reissue (7 of 7): Failure to File a Divisional to Pursue Non-Elected Claims If a restriction was made in the application that became the patent and the non-elected claims in the application were not re-filed in a divisional, they cannot be recovered via reissue. Rationale: The failure to file a divisional application on the non-elected claims is not considered to be an “error” correctable under 35 U.S.C. § 251 by reissue of the original patent. In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990).

Filing Requirements 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 § 1.172 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. (b) A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.

Filing Requirements (Cont.) The following documents/items should be submitted: Filing fees; Additional fees for added claims. Form PTO/SB/56, Reissue Application Fee Transmittal Form, may be used for calculation of fees. Reissue “specification” – the printed patent. Reissue oath or declaration. Consent of assignee to filing & statement of ownership. --- Only needed if patent is assigned --- Form PTO/SB/50, Reissue Patent Application Transmittal; it contains a checklist of items to be submitted. * Use of the USPTO’s forms is not a requirement but is recommended.

Reissue Oath or Declaration A reissue applicant 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 claims are broadened, all inventors are required to sign the oath/decl., except for a 37 CFR §§ 1.42, 1.43 or 1.47 filing. If no broadening, assignee of entire interest may sign the oath/decl. (37 CFR § 1.172) as alternative to the inventors. Note: the Office will not accept “duty of disclosure” language that fails to comply with 37 CFR § 1.63(b)(3) in any reissue application filed on or after June 1, 2008. 37 CFR 1.63 (oath or declaration requirements) –”patentability” and “56” 37 CFR 1.42 (inventor is dead) 37 CFR 1.43 (inventor is insane or legally incapacitated) 37 CFR 1.47 (inventor refuses to sign or cannot be reached) 37 CFR 1.172 (Reissues; Applicants, assignees) See Duty of Disclosure Language Set Forth in Oaths or Declarations Filed in Nonprovisional Patent Applications, 1327 OG 112 (Feb. 12. 2008).

Reissue Oath or Declaration Rules – 37 CFR §§ 1.175 and 1.172 Must point out an error being corrected. Only one error need be given. The error must be specifically identified, and why it renders the patent wholly or partly inoperative or invalid. An error in the claims must be identified by reference to specific claim language that addresses the error. Verbatim recitation of entire claim(s) in oath/declaration does not properly identify the error. Must state that all errors being corrected arose without deceptive intent. See MPEP § 1414. NOTE: Verbatim recitation of entire claim(s) in oath/declaration does not properly identify the error. See MPEP 1414 Examples of specific identification of the error: If the error is in the drawings, it is insufficient to state "there's error in Figure 1," or "there's a missing reference numeral in Figure 19."  The error must be specified, (stated in specific language), for example, "in Figure 1, the reference number 15 is in error and should be 23."    The reissuable error relied upon (error that renders the patent wholly or partly inoperative or invalid),- ranging from claim language, inventorship errors, failure to claim 120 benefit - must be specifically identified.  The error relied on must be referenced by specific language - "the error is failure to claim 120 benefit" is not sufficient; “the error is failure to claim 120 benefit to application number XYZ" is sufficient; the error "failure to specify the correct inventorship” is not sufficient because it doesn't specify the precise error, but the “error is failing to name John Q. Inventor as a joint inventor” is specific language that identifies the precise error.

Reissue Oath or Declaration: Error Statement A specific error statement is required in the oath or declaration. Statements such as “claim 1 is too narrow to encompass applicant’s invention” or “claim 15 is indefinite” do not suffice. (MPEP § 1414(II)(C).) A statement of " … failure to include a claim directed to …" and then presenting a newly added claim, would not be considered a sufficient " error" statement because applicant has not pointed out what the other claims lack that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that "this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10." In both cases, the error has not been identified. 26

Reissue Oath or Declaration: Error Statement (Cont.) Likewise, a statement of the error as " … the inclusion of claims 3-5 which were unduly broad …" and then canceling claims 3-5, would not be considered a sufficient error statement because applicant has not pointed out what the canceled claims lacked that the remaining claims contain. The statement of what the remaining claims contain need not identify specific limitations, but rather may provide a general identification, such as " Claims 3-5 did not provide for any of the tracking mechanisms of claims 6-12, nor did they provide an attachment mechanism such as those in claims 1-2 and 9-16."

Reissue Oath or Declaration: Error Statement (Cont.) Example of Non-Specific Error: “The patent claims more than applicant had a right to claim in view of U.S. Patent No. x,xxx,xxx.” Example of Specific Error: In second oath submission –”The patent claims more than applicant had a right to claim in view of U.S. Patent No. x,xxx,xxx which describes a plant having integrated into its genome a DNA construct containing a delta-five desaturase, wherein the plant reportedly produces dodecaenoic acid See, U.S. Patent x,xxx,xxx, Example 12. Claim 1 of the patent is amended in this reissue application to exclude that subject matter of the ‘xxx patent.”

Supplemental Reissue Declarations Applicant must file a supplemental declaration where any “error” has been corrected that was not covered by the original oath or declaration. It is immaterial that the same “identified” error is being corrected; the issue is whether additional changes to the patent are being made subsequent to the last filed declaration. Any necessary supplemental oath or declaration must be submitted before allowance. (MPEP § 1414.01(II)) A new supplemental oath or declaration is not required when an amendment is resubmitted to comply with § 1.173 (e.g., to reflect changes shown relative to the patent, and the changes themselves are identical to those presented in the previous amendment). In Medrad, Inc. v. Tyco Healthcare Group LP, 466 F.3d 1047, 80 USPQ2d 1526 (Fed. Cir. 2006), the court rejected an argument that section 251 was limited to defects in the specification, drawings, and claims.  Instead, the court explained that the correctable error could be "any error that causes a patentee to claim more or less than he had a right to claim."  Id. at 1052.  In Medrad, the specific error was the failure to submit a supplemental reissue declaration in an earlier reissue. 29

Consent of Reissue Filing by Assignee If patent is not assigned, no formal consent is needed. Inventors’ signatures are consent of owners. Should inform USPTO at filing that patent is not assigned; if not USPTO presumes patent assigned. Can check Box 7 of Form PTO/SB/50 (if used). If patent is assigned, assignee must consent to filing of reissue. Consent must be signed by a party authorized to act on behalf of assignee. Consent must be supported by § 3.73(b) statement establishing ownership of assignee (see next slide). Without proper consent, oath/decl. is incomplete. Thus, § 1.16(e) surcharge required if consent missing for assigned reissue. For multiple reissue applications of the same patent (continuations), where the parent reissue is not to be abandoned, a fresh consent of assignee is required. For voluntary divisional reissues, a fresh consent is always needed. See MPEP §§ 1451(I) and 1410.01

Establishing Assignee Ownership of Patent Consent of assignee is a “taking of action” by the assignee pursuant to 37 CFR § 3.73(b). Thus, must be accompanied by proof of ownership, i.e., statement under 37 CFR § 3.73(b) (USPTO Form PTO/SB/96 or equivalent), which must: Identify the assignee. Identify reel/frame number where assignment recorded or attach copy of assignment document(s)*. Be signed by party authorized to act on behalf of assignee: Title signifying apparent authority, or Authorizing statement, or Assignee “resolution.” * With statement that the documents have been or are concurrently being submitted for recordation. Recordation of the assignment documents does not establish ownership or make the assignee of record in the application. The assignment records are not part of the official patent application file, and recordation of assignment documents by the Office is a ministerial act that is performed without legal determination being made. “Accompanied by proof of ownership” means either providing a copy of the assignment document(s) or identifying the reel/frame where the documents are already in the Office’s records. Where copies of the assignment documents are provided with the 3.73(b) statement, applicant must state that the documents have been, or are concurrently being submitted for recordation pursuant to § 3.11. The PTO/SB/96 has a box that can be checked to make this statement (at the bottom of the form).

Establishing Assignee Ownership of Patent (Cont.) Practitioners must have authority to sign a § 3.73(b) statement. A practitioner must be given authority to bind the assignee entity. This can be accomplished in a separate document signed by the assignee (client) that is retained in the practitioner’s files. (Such paper would not need to be filed with the USPTO.) Note: Being named in a power of attorney document is not a legal basis for being able to bind the assignee and sign a § 3.73(b) statement. See MPEP § 324 and USPTO Form PTO/SB/96. Recordation of assignment in assignment records of USPTO is not sufficient; a § 3.73(b) statement must be filed in the application.

Understanding Claim Amendments A copy of a claim set from a patented reissue

Amendments to the Claims When amending reissue claims, use markings in comparison with the existing patent claims each time there is an amendment. Do not use the markings from the previous amendment. The amendment must be made in accordance with 37 CFR § 1.173. Claims - An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.

Amendments to the Claims Examples Amendment to original patent claim: 1. (Original) A composition comprising acetylsalicylic acid, 95% ethanol and distilled water. 1. (Amended) A composition [comprising] consisting essentially of acetylsalicylic acid, 95% ethanol and distilled water. Amendment to an amended claim: 1. (Twice Amended) A composition [comprising] consisting essentially of acetylsalicylic acid, 95% ethanol and [distilled] water.

Amendments to the Claims Examples (cont.) Amendment to a new claim: 5. (New) A composition of claim 1 which also includes a pharmaceutical carrier . 5. (New) A composition of claim 1 which, besides including a pharmaceutical carrier, also includes an additional headache medicament besides acetylsalicylic acid. Status of the claims and support for the claim changes must be supplied with the amendment paper. 37 CFR 1.173(c).

Amendments to the Specification Changes to the specification must be made by submission of the entire text of an added or rewritten paragraph, including markings shown relative to the patent, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. If the changes are so extensive that reading and understanding the specification is extremely difficult, a clean, typed copy of the specification may be submitted in 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).

Amendments to the Drawings Where a change to the drawings is desired, applicant must submit a replacement sheet for each sheet of drawings containing a Figure to be revised. Amended figures must be identified as “Amended, ” and any added figure must be identified as “New. ” Canceled figures must be surrounded by brackets and identified as “Canceled. ” All changes to the drawing(s) must be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.

Multiple Reissue Applications Multiple reissues may be filed for the same patent. A continuing (continuation or divisional, but not CIP) reissue application must identify itself as a continuation reissue application or a divisional reissue application, rather than a continuation or division of a reissue application. Otherwise, the continuing application could be treated as a 35 U.S.C. § 111(a) continuation of a reissue application. See In re Bauman, 683 F.2d 405, 214 USPQ 585 (CCPA 1982). Example of proper benefit claim for a continuation reissue application: “This application is a continuation of reissue application yy/yyy,yyy, and is a reissue of U.S. Pat. No. x,xxx,xxx, which claims benefit of U.S. provisional applicaton No. zz/zzz,zzz.” The consequence of filing a 111(a) continuation of a reissue instead of a continuation reissue application is that the 111(a) continuation’s effective filing date only goes back to the filing date of the original reissue application. Thus, if the original reissue application was filed more than one year after the grant of the original patent (for which reissue is sought), then the original patent would be applied as a 35 USC 102(b) bar against any claims in the continuation application.

Multiple Reissue Applications (Cont.) Multiple reissues for the same patent must identify each other. This differs from original applications that identify only earlier (parent) applications. See MPEP § 1451. Example of identification language for multiple divisional reissue applications: “Notice: More than one reissue application has been filed for the reissue of U.S. Patent No. x,xxx,xxx. The reissue applications are application numbers yy/yyy,yyy (the present application), zz/zzz,zzz, and aa/aaa,aaa, all of which are divisional reissue applications of Patent No. x,xxx,xxx.” The examiner should object to the specification and require appropriate amendment if applicant fails to include such a cross reference to the other reissue applications in the first sentence of the specification of each of the reissue applications. Where one of the divisional reissue applications of the family has issued without the appropriate cross reference, the Supervisory Patent Examiner will initiate a certificate of correction under 37 CFR 1.322 to include the appropriate cross reference.

Maintenance Fees The filing of a reissue application does not alter the schedule of patent maintenance fees on the original patent. Where the original patent that was reissued did require maintenance fees, the schedule of payments on the original patent will continue for the reissue patent. Once an original patent reissues, maintenance fees are no longer due in the original patent, but rather the maintenance fees are due in the reissue patent. Where multiple reissue patents issue on the same patent, the maintenance fee must be directed to the latest reissue patent that has been issued. Directing the maintenance fee to the “latest” reissue is a change from previous practice (we used to tell them to pay it in the first reissue).

Information and Contacts Specific questions about a pending reissue application may be directed to the Patent Examiner to whom the reissue is assigned or one of the Technology Quality Assurance Specialists (TQASs) in the Technology Center (TC) where the reissue application is being examined. TC 1600 – 571-272-1600 TC 2600 – 571-272-2600 TC 1700 – 571-272-1700 TC 2800 – 571-272-2800 TC 2100 – 571-272-2100 TC 2900 – 571-272-1200 TC 2400 – 571-272-2400 TC 3600 – 571-272-3600 TC 3700 – 571-272-3700 Questions related to the reissue rules of practice may be directed to the Office of Patent Legal Administration at 571-272-7703.

Thank you!