This section describes divisional applications which cover instances when an inventor initially tries to patent an invention that is actually two or more separate inventions. In this instance, he or she will be required to cut out some of the claims from the original patent application. If he or she still wants to patent the invention(s) that were cut out, a separate application called a divisional application should be filed. The divisional application will have the same filing date as the original (now known as the parent) application.

• Review Ed9 10.2019: 201.06

This section discusses what information may be required in a requirement for information.

• Review Ed9 10.2019: 704.11

This section covers a few details on rejections based on reissues that enlarge the scope of the claims of the original patent. It briefly covers the filing of reissues by the assignee of the entire interest filed prior to and on or after September 16, 2012.

• Review Ed9 10.2019: 706.03(x)

This section covers the grounds for filing a reissue application. Essentially, they are filed to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. The following types of errors are briefly mentioned and explained in this section; errors based on the scope of claims, inventorship errors, errors related to priority of a foreign application, errors in the benefit claim to a domestic application, and errors in drawings.

• Review Ed9 10.2019: 1402

No reissued patent shall be granted enlarging the scope of the claims of the original patent unless it is applied for within two years from the grant of the original patent. Broader claims may be applied for in a reissue, if the reissue application is filed within two years of the issue date of the patent. A reissue filed on the 2-year anniversary date is considered as filed within 2 years.

A reissue application can be granted a filing date without an oath or declaration, or without the basic filing fee, search fee, or examination fee being present.

• Review Ed9 10.2019: 1403

This section covers the reissue applicant and the inventor's oath or declaration for reissue applications filed before or on or after September 16, 2012. 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.

• Review Ed9 10.2019: 1410.01

This section covers the form of the reissue specification. A full copy of the printed patent should be used to provide the abstract, drawings, specification and claims of the patent for the reissue application. Each page must be one-sided, two-sided copies are improper.

• Review Ed9 10.2019: 1411

In a reissue application, additions and deletions to the original patent should be made by underlining and bracketing respectively, except for changes made in prior Certificates of Correction and disclaimer(s) of claims under 37 C.F.R. 1.321(a).

Underlining and bracketing should not be used for changes made by a Certificate of Correction dated before the filing of the reissue application or dated during the pendency of the reissue application. If such changes are submitted improperly with underlining and brackets, the examiner will require correction by the applicant in the form of a replacement paragraph (or paragraphs) without such markings.

• Review Ed9 10.2019: 1411.01

New matter (anything not present in the original application) is excluded from a reissue application. A rejection for new matter in a reissue application must be made under 35 U.S.C. 251, not 35 U.S.C. 132.

• Review Ed9 10.2019: 1411.02

The reissue claims must be for the same invention as that disclosed as being the invention in the original patent. Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s), the non-elected invention(s) cannot be recovered by filing a reissue application.

• Review Ed9 10.2019: 1412.01

A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. This section covers the three-step test for recapture:

(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;

(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

• Review Ed9 10.2019: 1412.02

This section provides coverage on the meaning of a broadened reissue claim. Essentially, a broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent. It also covers when a broadened claim can be presented, the oath/declaration requirements, and when a claim will be considered a broadened reissue claim.

• Review Ed9 10.2019: 1412.03

This section covers the content of a reissue oath/declaration. A reissue oath or declaration must contain a statement that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of patentee claiming more or less than patentee had the right to claim in the patent. In addition, it must contain a statement of at least one error which is relied upon to support the reissue application, i.e. as the basis for the reissue.

• Review Ed9 10.2019: 1414

Surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required.

• Review Ed9 10.2019: 1416

A claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. No additional certified copy of the foreign application is necessary.

A patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”).

• Review Ed9 10.2019: 1417

This section covers restrictions and election of species in reissue applications. A restriction will be required in a reissue application if the claims newly added in a reissue application are directed to an invention that is separate and distinct from the invention defined in the original patent claims.

• Review Ed9 10.2019: 1450

This section covers making amendments to reissue applications. Essentially, no amendment in a reissue application may enlarge the scope of the claims, unless “applied for within two years from the grant of the original patent.”

• Review Ed9 10.2019: 1453