Chapter   1400  Correction of Patents
---SECTION---1400 [No Text]

---SECTION---1400.01 Introduction

A patent may be corrected or amended in four ways, namely:

(A) by reissue,

(B) by the issuance of a certificate of correction which becomes a part
of the patent,

(C) by disclaimer, and

(D) by reexamination.   The first three ways are discussed in this
chapter while the fourth way (reexamination) is discussed in MPEP
Chapter 2200.

---SECTION---1401 Reissue

35 U.S.C. 251 Reissue of defective patents.

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 Commissioner 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.

The Commissioner may issue several reissued patents for distinct and
separate parts of the thing patented, upon demand of the applicant, and
upon payment of the required fee for a reissue for each of such reissued
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.

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. 

The provisions of  35 U.S.C. 251 permit the reissue of a patent to
correct an error in the patent made without any deceptive intention and
provide criteria for the reissue.  37 CFR 1.171 through 1.179 are rules
directed to reissue.

---SECTION---1402 Grounds for Filing

A reissue application is filed to correct an error in the patent which
was made without any deceptive intention, where, as a result of the
error, the patent is deemed wholly or partly inoperative or invalid. An
error in the patent arises out of an error in conduct which was made in
the preparation and/or prosecution of the application which became the
patent.

There must be at least one error in the patent to provide grounds for
reissue of the patent. If there is no error in the patent, the patent
will not be reissued. The present section provides a discussion of what
may be considered an error in the patent upon which to base a reissue
application.

In accordance with  35 U.S.C. 251, the error upon which a reissue is
based must be one which causes the patent to be "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." Thus, an error under  35 U.S.C. 251 has
not been presented where the correction to the patent is one of
spelling, or grammar, or a typographical, editorial or clerical error
which does not cause the patent to be deemed wholly or partly
inoperative or invalid for the reasons specified in  35 U.S.C. 251.
These corrections to a patent do not provide a basis for reissue
(although these corrections may also be included in a reissue
application, where a  35 U.S.C. 251 error is already present).

The most common bases for filing a reissue application are:

(A) the claims are too narrow or too broad;

(B) the disclosure contains inaccuracies;

(C) applicant failed to or incorrectly claimed foreign priority; and

(D) applicant failed to make reference to or incorrectly made reference
to prior copending applications.

An attorney's failure to appreciate the full scope of the invention was
held to be an error correctable through reissue in In re Wilder, 736
F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). The correction of misjoinder
of inventors in divisional reissues has been held to be a ground for
reissue. See Ex parte Scudder, 169 USPQ 814 (Bd. App. 1971).The Board of
Appeals held in Ex parte Scudder, 169 USPQ at 815, that  35 U.S.C. 251
authorizes reissue application to correct misjoinder of inventors where 
35 U.S.C. 256 is inadequate.

Reissue may no longer be necessary under the facts in Ex parte Scudder,
supra,  in view of  35 U.S.C. 116 which provides, inter alia, that:

"Inventors may apply for a patent jointly even though . . .  (3) each
did not make a contribution to the subject matter of every claim in the
patent."

See also  37 CFR 1.45(b)(3).

If the only change being made in the patent is correction of the
inventorship, this can be accomplished by filing a request for a
certificate of correction under the provisions of  35 U.S.C. 256 and  37
CFR 1.324. See MPEP Section  1412.04 and Section  1481. A Certificate of
Correction will be issued if all parties are in agreement and the
inventorship issue is not contested.

A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158
USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to
file a certified copy of the original foreign application to obtain the
right of foreign priority under  35 U.S.C. 119 before the patent was
granted.

Correction of failure to adequately claim priority in an earlier filed
copending U.S. Patent application was held a proper ground for reissue.
Sampson v. Comm'r Pat., 195 USPQ 136, 137 (D.D.C. 1976). Reissue
applicant's failure to timely file a divisional application is not
considered to be error causing a patent granted on elected claims to be
partially inoperative by reason of claiming less than the applicant had
a right to claim. Thus, such applicant's error is not correctable by
reissue of the original patent under  35 U.S.C. 251. In re Orita, 550
F.2d 1277, 1280,  193 USPQ 145, 148 (CCPA 1977). See also In re
Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Mead,
581 F.2d 257, 198 USPQ 412 (CCPA 1978).

---SECTION---1403 Diligence in Filing

When a reissue application is filed within 2 years from the date of the
original patent, a rejection on the grounds of lack of diligence or
delay in filing the reissue should not normally be made. Ex parte
Lafferty, 190 USPQ 202 (Bd. App. 1975); but see Rohm & Haas Co. v.
Roberts Chemical Inc., 142 F. Supp. 499, 110 USPQ 93 (S.W. Va. 1956),  
rev'd on other grounds, 245 F.2d 693, 113 USPQ 423 (4th Cir. 1957).

The fourth paragraph of  35 U.S.C. 251 states:

"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."

Where any broadening reissue application is filed within two years from
the date of the original patent,  35 U.S.C. 251 presumes diligence, and
the examiner should not inquire why applicant failed to file the reissue
application earlier within the two year period.

See MPEP Section  1412.03 for broadening reissue practice. See also In
re Graff, 111 F.3rd 874, 42 USPQ2d 1471 (Fed. Cir. 1997); In re Bennett,
766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985); In re Fotland,
779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985).

A reissue filed on the 2-year anniversary date is considered as filed
within 2 years.  See Switzer v.   Sockman, 333 F.2d 935, 142 USPQ 226
(CCPA 1964) (a similar rule in interferences).

A reissue application can be granted a filing date without an oath or
declaration, or without the filing fee being present. See  37 CFR
1.53(f). Applicant will be given a period of time to provide the missing
parts and to pay the surcharge under  37 CFR 1.16(e). See MPEP Section 
1410.01.

---SECTION---1404 Submission of Papers Where Reissue Patent Is in
Litigation

Applicants and protestors (see MPEP Section  1901.03) submitting papers
for entry in reissue applications of patents involved in litigation are
requested to mark the outside envelope and the top right-hand portion of
the papers with the words "REISSUE LITIGATION" and with the group art
unit or other area of the Patent and Trademark Office in which the
reissue application is located, e.g., Assistant Commissioner for
Patents, Board of Patent Appeals and Interferences, Examining Group,
Office of Patent Publication, etc. Protestor's participation, including
the submission of papers, is limited in accordance with  37 CFR
1.291(c). Any "Reissue Litigation" papers mailed to the Office should be
so marked and mailed to Box 7, Assistant Commissioner for Patents,
Washington, D.C. 20231. The markings preferably should be written in a
bright color with a felt point marker. Papers marked "REISSUE
LITIGATION" will be given special attention and expedited handling. See
MPEP Section  1442.01 through Section  1442.04 for examination of
litigation related reissue applications.

---SECTION---1410 Content of Reissue Application

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.

The specification (including the claims and any drawings) of the reissue
application is the copy of the patent for which reissue is requested
that is submitted by applicant as part of the initial application
papers. In addition, an applicant for reissue 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 patent is assigned, the
reissue applicant must also provide a consent of assignee to the reissue
and evidence of ownership. In addition, the reissue applicant should
file an offer to surrender the original patent; however, this is not a
requirement for filing of the reissue. It is only necessary that the
patent be surrendered before the application is allowed. Where
appropriate, the reissue applicant may provide a claim for priority
under  35 U.S.C. 119 or 120, and may also file an Information Disclosure
Statement. The initial contents of a reissue application are discussed
in detail in MPEP Section  1410.01 through Section  1418.

The oath or declaration, any matters ancillary thereto (such as the
consent of assignee), and the filing fee may be submitted after the
filing date pursuant to  37 CFR 1.53(f).

The requirement for the assignee to consent to filing a reissue no
longer includes a requirement for applicant to order a title report with
the filing of the reissue application. Rather, the assignee entity is
established by a statement on behalf of all the assignees under  37 CFR
1.172(a) and  37 CFR 3.73(b). See MPEP Section  1410.01.

Form PTO/SB/50, Reissue Patent Application Transmittal, may be used for
filing reissue applications.

Form PtO/SB/50. Reissue Patent Application Transmittal[GRAPHIC]

---SECTION---1410.01 Reissue Applicant, Oath or Declaration, and Consent
of All Assignees

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 Section
Section  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 Section  3.73(b) of this chapter.

(b)	A reissue will be granted to the original patentee, his legal
representative or assigns as the interest may appear.

37 CFR 3.73 Establishing right of assignee to take action.

                  +++    

(b)	When an assignee seeks to take action in a matter before the Office
with respect to a patent application, trademark application, patent,
registration, or reexamination proceeding, the assignee must establish
its ownership of the property to the satisfaction of the Commissioner. 
Ownership is established by submitting to the Office, in the Office file
related to the matter in which action is sought to be taken, documentary
evidence of a chain of title from the original owner to the assignee
(e.g., copy of an executed assignment submitted for recording) or by
specifying (e.g., reel and frame number) where such evidence is recorded
in the Office.  The submission establishing ownership must be signed by
a party authorized to act on behalf of the assignee.  Documents
submitted to establish ownership may be required to be recorded as a
condition to permitting the assignee to take action in a matter pending
before the Office.

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 
37 CFR 1.42, 1.43, and 1.47 (see MPEP Section  409). 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. Depending on
the circumstances, either Form PTO/SB/51 Reissue Application Declaration
by the Inventor, or Form PTO/SB/52 Reissue Application by the Assignee,
may be used to prepare a declaration in a reissue application.

  CONSENT TO THE REISSUE

Where no assignee exists, applicant should affirmatively state that
fact. If the file record is silent as to the existence of an assignee,
it will be presumed that an assignee does exist.  This presumption
should be set forth by the examiner in the first Office action alerting
applicant to the requirement. It should be noted that the mere filing of
a small entity statement in no way relieves applicant of the requirement
to affirmatively state that no assignee exists.

Where a small entity statement indicates that the application/patent is
assigned, and there is no consent by the assignee named in the small
entity statement, the examiner should make inquiry into the matter in an
Office action, even if the record otherwise indicates that the
application/patent is not assigned.

The reissue oath or declaration must be accompanied by the written
consent of all assignees.  35 U.S.C. 111(a) and  37 CFR 1.53(b) provide,
however, for according an application a filing date if filed with a
specification, including claim(s), and any required drawings. Thus,
where an application is filed without an oath or declaration, or without
the consent of all assignees, if the application otherwise complies with 
37 CFR 1.53(b) and the reissue rules, the Office of Initial Patent
Examination (OIPE) will accord a filing date and send out a notice of
missing parts setting a period of time for filing the missing part and
for payment of any surcharge required under  37 CFR 1.53(f) and 1.16(e). 
If the reissue oath or declaration is filed but the assignee consent is
lacking, the surcharge is required because, until the consent is filed,
the reissue oath or declaration is defective, since it is not apparent
that the signatures thereon are proper absent an indication the
assignees have consented to the filing.

The consent of assignee must be signed by a party authorized to act on
behalf of the assignee. See MPEP Section  324 for a discussion of
parties authorized to act on behalf of the assignee.  The consent to the
reissue application may use language such as:

The XYZ Corporation, assignee of U.S. Patent No. 9,999,999, consents to
the filing of reissue application No. 09/999,999 (or the present
application, if filed with the initial application papers) for the
reissue of U.S. Patent No. 9,999,999.

   _______________ 

   Lilly M. Schor

   Vice President,

   XYZ Corporation

Where the written consent of all the assignees to the filing of the
reissue application cannot be obtained, applicant may under appropriate
circumstances petition to the Office of Petitions (MPEP Section 
1002.02(b)) for a waiver under  37 CFR 1.183 of the requirement of  37
CFR 1.172, to permit the acceptance of the filing of the reissue
application.  The petition fee under  37 CFR 1.17(h) must be included
with the petition.

The reissue application can then be examined, but will not be allowed or
issued without the consent of all the assignees as required by  37 CFR
1.172.  See N. B. Fassett, 1877 C.D. 32, 11 O.G. 420 (Comm'r Pat. 1877);
James D. Wright, 1876 C.D. 217, 10 O.G. 587 (Comm'r Pat. 1876).

Form Paragraph 14.15 may be used to indicate that the consent of the
assignee is lacking.

14.15 Consent of Assignee to Reissue Lacking

This application is objected to under  37 CFR 1.172(a) as lacking the
written consent of all assignees owning an undivided interest in the
patent.  The consent of the assignee must be in compliance with 37 CFR
1.172.  See MPEP Section  1410.01.

A proper assent of the assignee in compliance with  37 CFR 1.172 and
3.73 is required in reply to this Office action.

Examiner Note:

1. This form paragraph may be used in an Office action which rejects any
of the claims on other grounds.

2. If otherwise ready for allowance, this form paragraph should be
followed by form paragraph 7.51 (insert the phrase --See above-- in
bracket 1 of form paragraph 7.51).

PROOF OF OWNERSHIP OF ASSIGNEE

The assignee that consents to the filing of the reissue application (as
discussed above) must also establish that it is the assignee, i.e., the
owner, of the patent. See  37 CFR 1.172. Accordingly, a  37 CFR 3.73(b)
paper establishing the ownership of the assignee should be submitted at
the time of filing the reissue application, in order to support the
consent of the assignee. The assignee must establish its ownership in
accordance with  37 CFR 3.73(b) by:

(A) filing in the reissue application documentary evidence of a chain of
title from the original owner to the assignee; or

(B) specifying in the record of the reissue application where such
evidence is recorded in the Office (e.g., reel and frame number, etc.). 
Documents that are submitted to establish ownership may be required to
be recorded.  Compliance with  37 CFR 3.73(b) may be provided as part of
the same paper in which the consent by assignee is provided.

Upon initial receipt of a reissue application, the examiner should
inspect the application to determine whether the submission under  37
CFR 1.172 and  37 CFR 3.73(b) establishing the ownership of the assignee
is present and sufficient.  If the submission is not present, form
paragraph 14.16 may be used to indicate that the assignee has not
provided evidence of ownership.

14.16 Failure of Assignee To Establish Ownership

This application is objected to under  37 CFR 1.172(a) as the assignee
has not established its ownership interest in the patent for which
reissue is being requested. An assignee must establish its ownership
interest in order to support the consent to a reissue application
required by  37 CFR 1.172(a). The assignee's ownership interest is
established by:

(a) filing in the reissue application evidence of a chain of title from
the original owner to the assignee, or

(b) specifying in the record of the reissue application where such
evidence is recorded in the Office (e.g., reel and frame number, etc.).

The submission with respect to (a) and (b) to establish ownership must
be signed by a party authorized to act on behalf of the assignee.  See
MPEP Section  1410.01.

An appropriate paper satisfying the requirements of  37 CFR 3.73 must be
submitted in reply to this Office action.

Examiner Note:

1. This form paragraph may be used in an Office action which rejects any
of the claims on other grounds.

2. If otherwise ready for allowance, this form paragraph should be
followed by form paragraph 7.51 (insert the phrase --See above-- in
bracket 1 of form paragraph 7.51).

Just as the consent of assignee must be signed by a party authorized to
act on behalf of the assignee, the submission with respect to  37 CFR
3.73(b) to establish ownership must be signed by a party authorized to
act on behalf of the assignee. The signature of an attorney or agent
registered to practice before the Office is not sufficient, unless that
attorney or agent is authorized to act on behalf of the assignee.

If the submission under  37 CFR 3.73(b) to establish ownership is not
signed by a party authorized to act on behalf of the assignee, the
appropriate paragraphs of Form Paragraphs 14.16.01 through 14.16.06 may
be used.

14.16.01 Establishment of Ownership Not Signed by Appropriate Party

This application is objected to under  37 CFR 1.172(a) as the assignee
has not established its ownership interest in the patent for which
reissue is being requested. An assignee must establish its ownership
interest in order to support the consent to a reissue application
required by  37 CFR 1.172(a).  The submission establishing the ownership
interest of the assignee is informal.  There is no indication of record
that the party who signed the submission is an appropriate party to sign
on behalf of the assignee.  37 CFR 3.73(b)

A proper submission establishing ownership interest in the patent,
pursuant to  37 CFR 1.172(a), is required in response to this action.

Examiner Note:

1. This form paragraph should be followed: (a) by one of form paragraphs
14.16.02 through 14.16.04, (b) then by form paragraph 14.16.05, (c) then
optionally by form paragraph 14.16.06.

2. See MPEP Section  1410.01.

14.16.02 Failure To State Capacity To Sign

The person who signed the submission establishing ownership interest has
failed to state his/her capacity to sign for the corporation or other
business entity, and he/she has not been established as being authorized
to act on behalf of the assignee.  See MPEP Section  324.

Examiner Note:

1. This form paragraph is to be used when the person signing the
submission establishing ownership interest does not state his/her
capacity (e.g., as a recognized officer) to sign for the assignee, and
is not established as being authorized to act on behalf of the assignee.

2. Use form paragraph 14.16.06 to explain how an official, other than a
recognized officer, may properly execute a submission establishing
ownership interest. 

14.16.03 Lack of Capacity To Sign

The person who signed the submission establishing ownership interest is
not recognized as an officer of the assignee, and he/she has not been
established as being authorized to act on behalf of the assignee.  See
MPEP Section  324.

14.16.04 Attorney/Agent of Record Signs

The submission establishing ownership interest was signed by applicant's
[1]. An attorney or agent of record is not authorized to sign a
submission establishing ownership interest, unless he/she has been
established as being authorized to act on behalf of the assignee. See
MPEP Section  324.

Examiner Note:

1. This form paragraph is to be used when the person signing the
submission establishing ownership interest is an attorney or agent of
record who is not an authorized officer as defined in MPEP Section  324
and has not been established as being authorized to act on behalf of the
assignee.

2. Use form paragraph 14.16.06 to explain how an official, other than a
recognized officer, may properly execute a submission establishing
ownership interest. 

3. In bracket 1, insert either --attorney-- or --agent--.

14.16.06 Criteria To Accept When Signed by a Non-Recognized Officer

It would be acceptable for a person, other than a recognized officer, to
execute a submission establishing ownership interest, provided the
record for the application includes a statement that the person is
empowered to sign a submission establishing ownership interest and/or
act on behalf of the organization.

Accordingly, a new submission establishing ownership interest which
includes such a statement above, will be considered to be executed by an
appropriate official of the assignee.  A separately filed paper
referencing the previously filed submission establishing ownership
interest and containing a proper empowerment statement would also be
acceptable.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.16.02,
14.16.03 or 14.16.04.

2. When one of form paragraphs 14.16.02, 14.16.03 or 14.16.04 is used to
indicate that a submission establishing ownership interest is not proper
because it was not signed by a recognized officer, this form paragraph
should be used to point out one way to correct the problem.

3. While an indication of the person's title is desirable, its inclusion
is not mandatory when this option is employed.

Where the submission establishes the assignee's ownership as to the
patent, ownership as to the reissue application will be presumed.
Accordingly, a submission as to the ownership of the patent will be
construed to satisfy the  37 CFR 1.172 (and  37 CFR 3.73(b))
requirements for establishing ownership of the application. Thus, a
terminal disclaimer can be filed in a reissue application where
ownership of the patent has been established without the need for a
separate submission under  37 CFR 3.73(b) showing ownership of the
reissue application.

Even if the submission states that it is establishing ownership of the
reissue application (rather than the patent), the submission should be
accepted by the examiner as also establishing ownership in the patent.
The documentation in the submission establishing ownership of the
reissue application must of necessity include chain of title as to the
patent.

COMPARISON OF ASSIGNEE THAT CONSENTS TO ASSIGNEE SET FORTH IN SUBMISSION
ESTABLISHING OWNERSHIP INTEREST

The examiner must inspect both the consent and documentary evidence of
ownership to determine whether the requirements of  37 CFR 1.172 have
been met. The assignee indicated by the documentary evidence must be the
same assignee which signed the consent. Also, the person who signs the
consent for the assignee and the person who signs the submission of
evidence of ownership for the assignee must both be persons having
authority to do so. See also MPEP Section  324.

The reissue patent will be granted to the original patentee, his or her
legal representatives or assigns as the interest may appear.

---SECTION---1411 Form of Specification

37 CFR 1.173 Specification.

The specification of the reissue application must include the entire
specification and claims of the patent, with the matter to be omitted by
reissue enclosed in square brackets; and any additions made by the
reissue must be underlined, so that the old and the new specifications
and claims may be readily compared. Claims should not be renumbered and
the numbering of claims added by reissue should follow the number of the
highest numbered patent claim.  No new matter shall be introduced into
the specification.

The file wrappers of all reissue applications are stamped "REISSUE"
above the application number on the front of the file. "Reissue" also
appears below the application number on the printed label on the file
wrapper of application with 08/ and earliest series.

Cut-up soft copies of the original patent, with only a single column of
the printed patent securely mounted on a separate sheet of paper, should
be used in preparing the reissue specification and claims to be filed.
It should be noted, however, that amendments to the reissue application
should not be prepared in this way. After filing, the specification and
claims in the reissue application must be amended in the manner set
forth by  37 CFR 1.121(b) and MPEP Section  1453.  However, insertions
or deletions to the patent specification or claims filed as part of the
original reissue specification and claims should be underlined or
bracketed, respectively, as indicated in  37 CFR 1.173. The presentation
of the insertions or deletions as part of the original reissue
specification or claims is not an amendment under  37 CFR 1.121.

Examples of the form for a twice-reissued patent are found in Re. 23,558
and Re. 28,488. Double underlining and double bracketing are used in the
second reissue application, while bold faced type and double bracketing
appear in the printed patent (second reissue patent) to indicate further
insertions and deletions, respectively, in the second reissue patent.

Entire words or chemical formulas must be shown as being changed. Change
in only a part of a word or formula is not permitted. Deletion of a
chemical formula should be shown by brackets which are substantially
larger and darker than any in the formula.

Where a chart, table, or chemical formula spans two columns of the
patent, it should not be split. Rather, the chart, table, or formula
should be provided in its entirety as part of the column of the patent
to which it pertains, in order to provide a continuity of the
description. When doing so, the chart, table, or chemical formula will
extend beyond the width of the column.

---SECTION---1411.01 Certificate of Correction or Disclaimer in Original
Patent

The applicant should include any changes, additions, or deletions that
were made by a Certificate of Correction to the original patent grant in
the reissue application without underlining or bracketing. The examiner
should also make certain that all Certificate of Correction changes in
the patent have been properly incorporated into the reissue application.

Certificate of Correction changes and disclaimer of claim(s) under  37
CFR 1.321(a) should be made without using underlining or brackets. Since
these are part of the original patent and were made before the reissue
was filed, they should show up in the printed reissue document as part
of the original patent, i.e., not in italics or bracketed. If the
changes are extensive and/or applicant has submitted them improperly
with underlining and brackets, a clean copy of the specification with
the Certificate of Correction changes in it may be requested by the
examiner.

---SECTION---1411.02 New Matter

New matter, that is, matter not present in the patent sought to be
reissued, is excluded from a reissue application in accordance with  35
U.S.C. 251.

The claims in the reissue application must be for subject matter which
the applicant had the right to claim in the original patent. Any change
in the patent made via the reissue application should be checked to
ensure that it does not introduce new matter. Note that new matter may
exist by virtue of the omission of a feature or of a step in a method.
See United States Industrial Chemicals, Inc. v. Carbide & Carbon
Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942).

Form paragraph 14.22.01 may be used where new matter has been added
anywhere in "the application for reissue" as prohibited by  35 U.S.C.
251.

14.22.01 Rejection, 35 U.S.C. 251, New Matter

Claim   [1] rejected under  35 U.S.C. 251 as being based upon new matter
added to the patent for which reissue is sought.  The added material
which is not supported by the prior patent is as follows:   [2]

Examiner Note:

1. In bracket 2, fill in the applicable page and line numbers and
provide an explanation of your position, as appropriate.

2. A rejection under  35 U.S.C. 112, first paragraph, should also be
made if the new matter is added to the claims or is added to the
specification and affects the claims. If new matter is added to the
specification and does not affect the claims, an objection should be
made based upon  35 U.S.C. 132 using form paragraph 7.28.

---SECTION---1412 Content of Claims

The content of claims in a reissue application is somewhat limited as
indicated in MPEP Section  1412.01 through MPEP Section  1412.03.

---SECTION---1412.01 Reissue Claims Must Be for Same General Invention

The reissue claims must be for the same invention as that disclosed as
being the invention in the original patent, as required by  35 U.S.C.
251. This does not mean that the invention claimed in the reissue must
have been claimed in the original patent, although this is evidence that
applicants considered it their invention. The entire disclosure, not
just the claim(s), is considered in determining what the patentee
objectively intended as his or her invention. The proper test as to
whether reissue claims are for the same invention as that disclosed as
being the invention in the original patent is "an essentially factual
inquiry confined to the objective intent manifested by the original
patent." In re Amos, 953 F.2d 613, 618, 21 USPQ2d 1271, 1274 (Fed. Cir.
1991) (quoting In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 (CCPA
1975)) (emphasis added). See also In re Mead, 581 F.2d 257, 198 USPQ 412
(CCPA 1978). The "original patent" requirement of  35 U.S.C. 251 must be
understood in light of In re Amos, supra, where the Court of Appeals for
the Federal Circuit stated:

We conclude that, under both Mead and Rowand, a claim submitted in
reissue may be rejected under the "original patent" clause if the
original specification demonstrates, to one skilled in the art, an
absence of disclosure sufficient to indicate that a patentee could have
claimed the subject matter. Merely finding that the subject matter was
"not originally claimed, not an object of the original patent, and not
depicted in the drawing," does not answer the essential inquiry under
the "original patent" clause of Section  251, which is whether one
skilled in the art, reading the specification, would identify the
subject matter of the new claims as invented and disclosed by the
patentees. In short, the absence of an "intent," even if objectively
evident from the earlier claims, the drawings, or the original objects
of the invention is simply not enough to establish that the new claims
are not drawn to the invention disclosed in the original patent. 953
F.2d at 618-19, 21 USPQ2d at 1275. Claims presented in a reissue
application are considered to satisfy the requirement of  35 U.S.C. 251
that the claims be "for the invention disclosed in the original patent"
where:

(A) the claims presented in the reissue application are described in the
original patent specification and enabled by the original patent
specification such that  35 U.S.C. 112 first paragraph is satisfied; and

(B) nothing in the original patent specification indicates an intent not
to claim the subject matter of the claims presented in the reissue
application.

Some disclosure (description and enablement) in the original patent
should evidence that applicant intended to claim or that applicant
considered the material now claimed to be his or her invention.

The original patent specification would indicate an intent not to claim
the subject matter of the claims presented in the reissue application in
a situation analogous to the following:

The original patent specification discloses that composition X is not
suitable (or not satisfactory) for molding an item because composition X
fails to provide quick drying. After the patent issues, it is found that
composition X would be desirable for the molding in spite of the failure
to provide quick drying, because of some other newly recognized benefit
from composition X. A claim to composition X or a method of use thereof
would not be permitted in a reissue application, because the original
patent specification contained an explicit statement of intent not to
claim composition X or a method of use thereof.

In most instances, however, the mere failure to claim a disclosed
embodiment in the original patent (absent an explicit statement in the
original patent specification of unsuitability of the embodiment) would
not be grounds for prohibiting a claim to that embodiment in the
reissue.

---SECTION---1412.02 Recapture of Canceled Subject Matter

A reissue will not be granted to "recapture" claimed subject matter
deliberately canceled in an application to obtain a patent. In re
Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v.
United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1989);
In re Wadlinger, 496 F.2d 1200, 181 USPQ 826 (CCPA 1974); In re Richman,
409 F.2d 269, 276, 161 USPQ 359, 363-64 (CCPA 1969); In re Willingham,
282 F.2d 353, 127 USPQ 211 (CCPA 1960).  The Federal Circuit stated the
following principles in Clement:

(1) if the reissue claim is as broad as or broader than the canceled or
amended claim in all aspects, the recapture rule bars the claim; (2) if
it is narrower in all aspects, the recapture rule does not apply, but
other rejections are possible; (3) if the reissue claim is broader in
some aspects, but narrower in others, then: (a) if the reissue claim is
as broad as or broader in an aspect germane to a prior art rejection,
but narrower in another aspect completely unrelated to the rejection,
the recapture rule bars the claim; (b) if the reissue claim is narrower
in an aspect germane to a prior art rejection, and broader in an aspect
unrelated to the rejection, the recapture rule does not bar the claim,
but other rejections are possible. 131 F.3d at 1469-70, 45 USPQ2d at
1165. See MPEP Section  1412.03 as to broadening claims.

Impermissible recapture occurs in a reissue where the claims in the
reissue are of the same scope as, or are broader in scope than, claims
deliberately canceled in an application to obtain a patent. Where such
claims also include some narrowing limitation not present in the claims
deliberately canceled in the application, the examiner must determine
whether that narrowing limitation has a material aspect to it. If the
narrowing limitation has a material aspect to it, then there is no
recapture. However, if the narrowing limitation is incidental, mere
verbiage, or would be inherent even if not recited (in view of the
specification), then the claims should be rejected under  35 U.S.C. 251
using form paragraph 14.17. 

14.17 Rejection, 35 U.S.C. 251, Recapture

Claim   [1] rejected under  35 U.S.C. 251 as being an improper recapture
of claimed subject matter deliberately canceled in the application for
the patent upon which the present reissue is based. As stated in Ball
Corp. v.   United States, 221 USPQ 289, 295 (Fed. Cir. 1984):

"The recapture rule bars the patentee from acquiring, through reissue,
claims that are of the same or broader scope than those claims that were
canceled from the original application."

[2]

Examiner Note:

In bracket 2, the examiner should explain the specifics of why recapture
exists.  See MPEP Section  1412.02

A patentee may file a reissue application to permit consideration of
process claims which qualify for  35 U.S.C. 103(b) treatment if a patent
is granted on an application entitled to the benefit of  35 U.S.C.
103(b), without an election having been made as a result of error
without deceptive intent. See MPEP Section  706.02(n). This is not to be
considered a recapture. The addition of process claims, however, will
generally be considered to be a broadening of the invention (Ex Parte
Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such
addition must be applied for within two years of the grant of the
original patent. See also MPEP Section  1412.03 as to broadened claims.

A patentee may file a reissue application to permit consideration of
article of manufacture claims which are functional descriptive material
stored on a computer-readable medium, where these article claims
correspond to the process or machine claims which have been patented.
The error in not presenting claims to this statutory category of
invention (the "article" claims) or in canceling claims directed to this
statutory category of invention must have been made as a result of error
without deceptive intent. The addition of these "article" claims will
generally be considered to be a broadening of the invention (Ex Parte
Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such
addition must be applied for within two years of the grant of the
original patent. See also MPEP Section  1412.03 as to broadened claims.

---SECTION---1412.03 Broadening Reissue Claims

35 U.S.C. 251 prescribes a 2-year limit for filing applications for
broadening reissues:

No reissue patent shall be granted enlarging the scope of the original
patent unless applied for within two years from the grant of the
original patent.

MEANING OF "BROADENED REISSUE CLAIM"

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 patent. A claim of a reissue application enlarges
the scope of the claims of the patent if it is broader in at least one
respect, even though it may be narrower in other respects.

A claim in the reissue which includes subject matter not covered by the
patent claims enlarges the scope of the patent claims. For example, if
any amended or newly added claim in the reissue contains within its
scope any conceivable apparatus or process which would not have
infringed the patent, then that reissue claim would be broader than the
patent claims. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2,
4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730,
126 USPQ 155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603, 120 USPQ
185, 186 (CCPA 1958). A claim which reads on something which the
original claims do not is a broadened claim. A claim would be considered
a broadening claim if the patent owner would be able to sue any party
for direct infringement who previously could not have been sued for
direct infringement.

The addition of process claims as a new category of invention to be
claimed in the patent (i.e., where there were no method claims present
in the original patent) is generally considered as being a broadening of
the invention. See Ex Parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. &
Inter. 1989).

WHEN A BROADENED CLAIM CAN BE PRESENTED

A broadened claim can be presented within two years from the grant of
the original patent in a reissue application. In addition, a broadened
claim can be presented after two years from the grant in a broadening
reissue which was filed within two years from the grant. Where any
intent to broaden is indicated in the reissue application within the two
years, a broadened claim can be presented in the reissue after two
years. Finally, if intent to broaden is indicated in a parent reissue
application within the two years, a broadened claim can be presented in
a continuing reissue application after two years. In any other
situation, a broadened claim cannot be presented, and the examiner
should check carefully for the improper presentation of broadened
claims.

A reissue application filed on the 2-year anniversary date is considered
to be filed within 2 years of the patent grant. See Switzer v. Sockman,
333 F.2d 935, 142 USPQ 226 (CCPA 1964) for a similar rule in
interferences.

See also the following cases which pertain to broadened reissues:

In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997)
(Broadened claims in a continuing reissue application were properly
rejected under  35 U.S.C. 251 because the proposal for broadened claims
was not made (in the parent reissue application) within two years from
the grant of the original patent and the public was not notified that
broadened claims were being sought until after the two-year period
elapsed.);

In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985), cert. denied,
476 U.S. 1183 (1986) (The failure by an applicant to include an oath or
declaration indicating a desire to seek broadened claims within two
years of the patent grant will bar a subsequent attempt to broaden the
claims after the two year limit. Under the former version of  37 CFR
1.175 (the former  37 CFR 1.175(a)(4)), applicant timely sought a
"no-defect" reissue, but the Court did not permit an attempt made beyond
the two year limit to convert the reissue into a broadening reissue. In
this case, applicant did not indicate any intent to broaden within the
two years.);

In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985) (en
banc) (A reissue application with broadened claims was filed within two
years of the patent grant; however, the declaration was executed by the
assignee rather than the inventor.  The Federal Circuit permitted
correction of the improperly executed declaration to be made more than
two years after the patent grant.);

In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970) (If the
reissue application is timely filed within two years of the original
patent grant and the applicant indicates in the oath or declaration that
the claims will be broadened, then applicant may subsequently broaden
the claims in the pending reissue prosecution even if the additional
broadening occurs beyond the two year limit.).

Form paragraphs 14.12 and 14.13 may be used in rejections based on
improper broadened reissue claims.

14.12 Rejection, 35 U.S.C. 251, Broadened Claims After Two Years

Claim   [1] rejected under  35 U.S.C. 251 as being broadened in a
reissue application filed outside the two year statutory period. [2]

Examiner Note:

The claim limitations that broaden the scope should be identified and
explained in bracket 2.  See MPEP Section Section  706.03(x) and 
1412.03.

14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed by Assignee

Claim   [1] rejected under  35 U.S.C. 251 as being improperly broadened
in a reissue application made and sworn to by the assignee and not the
patentee. [2]

Examiner Note:

The claim limitations that broaden the scope should be identified and
explained in bracket 2.  See MPEP Section Section  706.03(x) and 
1412.03.

---SECTION---1413 Drawings

37 CFR 1.174 Drawings.

(a) The drawings upon which the original patent was issued may be used
in reissue applications if no changes whatsoever are to be made in the
drawings. In such cases, when the reissue application is filed, the
applicant must submit a temporary drawing which may consist of a copy of
the printed drawings of the patent or a photoprint of the original
drawings of the size required for original drawing.

(b) Amendments which can be made in a reissue drawing, that is, changes
from the drawing of the patent, are restricted.

If transfer of the patent drawings to the reissue application is
desired, a letter requesting transfer of the drawings from the patent
file should be filed along with the reissue application. The Reissue
Patent Application Transmittal Form, PTO/SB/50, includes a provision to
request a transfer of the drawings from the original patent file to the
reissue application.  The box to be checked for this request was added
to relieve applicants of having to file a separate paper requesting
transfer of the drawings; however, it does not excuse applicants from
having to include a copy of the drawings with the filing of the reissue
application in order to provide a complete application and to obtain a
filing date, as required by  37 CFR 1.53 and 1.81.  See also MPEP
Section  601.01.

The drawings of the original patent may be used in lieu of new drawings,
provided that no alteration whatsoever is made in the original patent
drawings. A sheet of original drawings cannot be amended and should not
be transferred from the original patent to the reissue when drawing
amendments are expected.

If an amendment is to be made to drawings in a reissue application, a
sketch in permanent ink showing proposed changes in red, to become part
of the record, must be filed for approval by the examiner and should be
in a separate paper. See  37 CFR 1.121(b)(3). After approval by the
examiner, a new sheet of formal drawings must be submitted for every
sheet to be amended.  A reissue applicant may direct cancellation of an
entire sheet of the original patent drawings and provide a substitute
sheet with changes desired by the applicant.  37 CFR 1.121(b)(3)
specifies that amendments to the patent drawing sheets are not
permitted. Any change to any of the patent drawings must be in the form
of a new sheet of drawings with any amended figure(s) identified as
"amended" and any added figure(s) identified as "new" for each sheet
that has changed and for each added sheet.

When the reissue application is ready for allowance, the examining group
makes the formal transfer of the original drawing to the reissue
application, notation thereof being entered on the file wrapper of the
patented file. This transfer should not be carried out prior to
allowance, because the reissue application might become abandoned, and
as such, the original drawings must remain in place.

---SECTION---1414 Content of Reissue Oath/Declaration

37 CFR 1.175 Reissue oath or declaration.

(a) The reissue oath or declaration in addition to complying with the
requirements of Section  1.63, must also state that:

(1) 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 the patentee claiming more or less than the
patentee had the right to claim in the patent, stating at least one
error being relied upon as the basis for reissue; and

(2) All errors being corrected in the reissue application up to the time
of filing of the oath or declaration under this paragraph arose without
any deceptive intention on the part of the applicant.

(b)(1) For any error corrected, which is not covered by the oath or
declaration submitted under paragraph (a) of this section, applicant
must submit a supplemental oath or declaration stating that every such
error arose without any deceptive intention on the part of the
applicant. Any supplemental oath or declaration required by this
paragraph must be submitted before allowance and may be submitted:

(i) With any amendment prior to allowance; or

(ii) In order to overcome a rejection under  35 U.S.C. 251 made by the
examiner where it is indicated that the submission of a supplemental
oath or declaration as required by this paragraph will overcome the
rejection.

(2) For any error sought to be corrected after allowance, a supplemental
oath or declaration must accompany the requested correction stating that
the error(s) to be corrected arose without any deceptive intention on
the part of the applicant.

(c) Having once stated an error upon which the reissue is based, as set
forth in paragraph (a)(1), unless all errors previously stated in the
oath or declaration are no longer being corrected, a subsequent oath or
declaration under paragraph (b) of this section need not specifically
identify any other error or errors being corrected.

(d) The oath or declaration required by paragraph (a) of this section
may be submitted under the provisions of Section  1.53(f).

The reissue oath/declaration is an essential part of a reissue
application and must be filed with the application, or within the time
period set under  37 CFR 1.53(f) along with the required surcharge as
set forth in  37 CFR 1.16(e) in order to avoid abandonment.

The question of the sufficiency of the reissue oath/declaration filed
under  37 CFR 1.175 must in each case be reviewed and decided personally
by the primary examiner.

Reissue oaths or declarations must contain the following:

(A) A statement that the applicant believes the original patent to be
wholly or partly inoperative or invalid-

(1) by reason of a defective specification or drawing, or

(2) by reason of the patentee claiming more or less than patentee had
the right to claim in the patent;

(B) A statement of at least one error which is relied upon to support
the reissue application, i.e., as the basis for the reissue;

(C) A statement that all errors which are being corrected in the reissue
application up to the time of filing of the oath/declaration arose
without any deceptive intention on the part of the applicant; and

(D) The information required by  37 CFR 1.63.

These elements will now be discussed:

I. 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 THE PATENTEE CLAIMING MORE OR
LESS THAN PATENTEE HAD THE RIGHT TO CLAIM IN THE PATENT.

In order to satisfy this requirement, a declaration can state:

"Applicant believes the original patent to be partly inoperative or
invalid by reason of a defective specification or drawing."

Alternatively, a declaration can state:

"Applicant believes the original patent to be partly inoperative or
invalid by reason of the patentee claiming more or less than patentee
had the right to claim in the patent."

Where the specification or drawing is defective and patentee claimed
more or less than patentee had the right to claim in the patent, then
both statements should be included in the reissue oath/declaration.  See
MPEP Section  1412.04 for an exemplary declaration statement when the
error being corrected is an error in inventorship.

The above examples will be sufficient to satisfy this requirement
without any further statement.

Form paragraph 14.01 may be used where the reissue oath/declaration does
not provide the required statement as to applicant's belief that the
original patent is wholly or partly inoperative or invalid.

14.01 Defective Reissue Oath/Declaration, 37 CFR 1.175(a)(1) - No
Statement of Defect in the Patent

The reissue oath/declaration filed with this application is defective
because it fails to contain the statement required under  37 CFR
1.175(a)(1) as to applicant's belief that the original patent is wholly
or partly inoperative or invalid. See  37 CFR 1.175(a)(1) and see MPEP
Section  1414.  [1]

Examiner Note:

1. Use this form paragraph when applicant: (a) fails to allege that the
original patent is inoperative or invalid and/or (b) fails to state the
reason of a defective specification or drawing, or of patentee claiming
more or less than patentee had the right to claim in the patent . In
bracket 1, point out the specific defect to applicant by using the
language of (a) and/or (b), as it is appropriate.

2. Form paragraph 14.14 must follow this form paragraph.

II. A STATEMENT OF AT LEAST ONE ERROR WHICH IS RELIED UPON TO SUPPORT
THE REISSUE APPLICATION (I.E., THE BASIS FOR THE REISSUE).

A reissue applicant must acknowledge the existence of an error in the
specification, drawings, or claims, which error causes the original
patent to be defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed.
Cir. 1984). A change or departure from the original specification or
claims represents an "error" in the original patent under  35 U.S.C.
251. See MPEP Section  1402 for a discussion of grounds for filing a
reissue that may constitute the "error" required by  35 U.S.C. 251. Not
all changes with respect to the patent constitute the "error" required
by  35 U.S.C. 251.

Applicant need only specify in the reissue oath/declaration one of the
errors upon which reissue is based. Where applicant specifies one such
error, this requirement of a reissue oath/declaration is satisfied.
Applicant may specify more than one error.

Where more than one error is specified in the oath/declaration and some
of the designated "errors" are found to not be "errors" under  35 U.S.C.
251, any remaining error which is an error under  35 U.S.C. 251 will
still support the reissue.

The "at least one error" which is relied upon to support the reissue
application must be set forth in the oath/declaration. It is not
necessary, however, to point out how (or when) the error arose or
occurred. Further, it is not necessary to point out how (or when) the
error was discovered. If an applicant chooses to point out these
matters, the statements directed to these matters will not be reviewed
by the examiner, and the applicant should be so informed in the next
Office action. All that is needed for the oath/declaration statement as
to error is the identification of  "at least one error" relied upon.

In identifying the error, it is sufficient that the reissue
oath/declaration identify a single word, phrase, or expression in the
specification or in an original claim, and how it renders the original
patent wholly or partly inoperative or invalid. The corresponding
corrective action which has been taken to correct the original patent
need not be identified in the oath/declaration. If the initial reissue
oath/declaration "states at least one error" in the original patent,
and, in addition, recites the specific corrective action taken in the
reissue application, the oath/declaration would be considered
acceptable, even though the corrective action statement is not required.

It is not sufficient for an oath/declaration to merely state "this
application is being filed to correct errors in the patent which may be
noted from the changes made in the disclosure." Rather, the
oath/declaration must specifically identify an error. In addition, it is
not sufficient to merely reproduce the claims with brackets and
underlining and state that such will identify the error. See In re
Constant, 827 F.2d 728, 729, 3 USPQ2d 1479 (Fed. Cir.), cert. denied,
484 U.S. 894 (1987).

Form paragraph 14.01.01 may be used where the reissue oath/declaration
does not identify an error.

14.01.01 Defective Reissue Oath/Declaration, 37 CFR 1.175(a)(1) - No
Statement of a Specific Error

The reissue oath/declaration filed with this application is defective
because it fails to identify at least one error which is relied upon to
support the reissue application.  See  37 CFR 1.175(a)(1) and MPEP
Section  1414.

Examiner Note:

1. Use this form paragraph when the reissue oath or declaration does not
contain any statement of an error which is relied upon to support the
reissue application.

2. This form paragraph can be used where the reissue oath or declaration
does not even mention error.  It can also can be used where the reissue
oath or declaration contains some discussion of the concept of error but
never in fact identifies a specific error to be relied upon.  For
example, it is not sufficient for an oath or declaration to merely state
"this application is being filed to correct errors in the patent which
may be noted from the changes made in the disclosure."

3. Form paragraph 14.14 must follow this form paragraph.

Where the reissue oath/declaration does identify an error or errors, the
oath/declaration must be checked carefully to ensure that at least one
of the errors identified is indeed an "error" which will support the
filing of a reissue, i.e., an "error" that will provide grounds for
reissue of the patent. See MPEP Section  1402.  If the error identified
in the oath/declaration is not an appropriate error upon which a reissue
can be based, then the oath/declaration must be indicated to be
defective in the examiner's Office action.

Form Paragraphs 14.01.02 and 14.01.03 may be used where the reissue
oath/declaration fails to provide at least one error upon which a
reissue can be based.

14.01.02 Defective Reissue Oath/Declaration, 37 CFR 1.175(a)(1)-The
Identified "Error" Is Not Appropriate Error

The reissue oath/declaration filed with this application is defective
because the error which is relied upon to support the reissue
application is not an error upon which a reissue can be based. See  37
CFR 1.175(a)(1) and MPEP Section  1414.

Examiner Note:

1. Use this form paragraph when the reissue oath/declaration identifies
only one error which is relied upon to support the reissue application,
and that one error is not an appropriate error upon which a reissue can
be based.

2. Form paragraph 14.14 must follow this form paragraph.

14.01.03 Defective Reissue Oath/Declaration, 37 CFR 1.175(a)(1) -
Multiple Identified "Errors" Not Appropriate Errors

The reissue oath/declaration filed with this application is defective
because none of the errors which are relied upon to support the reissue
application are errors upon which a reissue can be based. See  37 CFR
1.175(a)(1) and MPEP Section  1414.

Examiner Note:

1. Use this form paragraph when the reissue oath/declaration identifies
more than one error relied upon to support the reissue application, and
none of the errors are appropriate errors upon which a reissue can be
based.

2. Note that if the reissue oath/declaration identifies more than one
error relied upon, and at least one of the errors is an error upon which
reissue can be based, this form paragraph should not be used, despite
the additional reliance by applicant on "errors" which do not support
the reissue.  Only one appropriate error is needed to support a reissue.

3. Form paragraph 14.14 must follow this form paragraph.

III. A STATEMENT THAT ALL ERRORS WHICH ARE BEING CORRECTED IN THE
REISSUE APPLICATION UP TO THE TIME OF FILING OF THE OATH/DECLARATION
AROSE WITHOUT ANY DECEPTIVE INTENTION ON THE PART OF THE APPLICANT.

In order to satisfy this requirement, the following statement may be
included in an oath or declaration:

"All errors which are being corrected in the present reissue application
up to the time of filing of this declaration arose without any deceptive
intention on the part of the applicant."  Nothing more is required. The
examiner will determine only whether the reissue oath/declaration
contains the required averment; the examiner will not make any comment
as to whether it appears that there was in fact deceptive intention (see
MPEP Section  2022.05). 

Form Paragraph 14.01.04 may be used where the reissue oath/declaration
does not provide the required statement as to "without any deceptive
intention on the part of the applicant."

14.01.04 Defective Reissue Oath/Declaration, 37 CFR 1.175- Lack of
Statement of "Without Any Deceptive Intention"

The reissue oath/declaration filed with this application is defective
because it fails to contain a statement that all errors which are being
corrected in the reissue application up to the time of filing of the
oath/declaration arose without any deceptive intention on the part of
the applicant. See  37 CFR 1.175 and MPEP Section  1414.

Examiner Note:

1. Use this form paragraph when the reissue oath/declaration does not
contain the statement required by  37 CFR 1.175 that all errors being
corrected in the reissue application arose without any deceptive
intention on the part of the applicant.

2. This form paragraph is appropriate to use for a failure by applicant
to comply with the requirement, as to any of  37 CFR 1.175(a)(2),  37
CFR 1.175(b)(1), or  37 CFR 1.175(b)(2). 

3. Paragraph 14.14 must follow.

IV. THE REISSUE OATH/DECLARATION MUST COMPLY WITH 37 CFR 1.63.

The reissue oath/declaration must include the averments required by  37
CFR 1.63(b), i.e., that applicants for reissue

(A) have reviewed and understand the contents of the specification,
including the claims, as amended by any amendment specifically referred
to in the oath/declaration;

(B) believe the named inventor or inventors to be the original and the
first inventor or inventors of the subject matter which is claimed and
for which a patent is sought; and

(C) acknowledge the duty to disclose to the Office all information known
to the person to be material to patentability as defined in  37 CFR
1.56.  See also the discussion regarding the requirements of an
oath/declaration beginning at MPEP Section  602.

The examiner should check carefully to ensure that all the requirements
of  37 CFR 1.63 are met. Form paragraph 14.01.05 should be used in
conjunction with the content of form paragraphs 6.03 through 6.09 as
appropriate, where the reissue oath/declaration fails to comply with the
requirements of  37 CFR 1.63.

14.01.05 Defective Reissue Oath/Declaration, 37 CFR 1.175 - General

The reissue oath/declaration filed with this application is defective
(see  37 CFR 1.175 and MPEP Section  1414) because of the following:

Examiner Note:

1. Use this form paragraph when the reissue oath/declaration does not
comply with  37 CFR 1.175, and none of form paragraphs 14.01 - 14.01.04
or 14.05.02 apply.

2. This form paragraph must be followed by an explanation of why the
reissue oath/declaration is defective. 

3. Form paragraph 14.14 must follow the explanation of the defect.

See MPEP Section  1414.01 for a discussion of the requirements for a
supplemental reissue oath/declaration.

---SECTION---1414.01 Supplemental Reissue Oath/ Declaration

If additional defects or errors are corrected in the reissue after the
filing of the application, a supplemental reissue oath/declaration must
be filed, unless all errors corrected are spelling, grammar,
typographical, editorial or clerical errors which are not errors under 
35 U.S.C. 251 (see MPEP Section  1402). In other words, a supplemental
oath/declaration is required where any "error" under  35 U.S.C. 251 has
been corrected and the error was not identified in the original reissue
oath/declaration.

The supplemental reissue oath/declaration must state that every error
which was corrected in the reissue application not covered by the prior
oath(s)/declaration(s) submitted in the application arose without any
deceptive intention on the part of the applicant.

An example of acceptable language is as follows:

"Every error in the patent which was corrected in the present reissue
application, and is not covered by the prior declaration submitted in
this application, arose without any deceptive intention on the part of
the applicant."

WHEN AN ERROR MUST BE STATED IN THE SUPPLEMENTAL OATH/DECLARATION

In the supplemental reissue oath/declaration, there is no need to state
an error which is relied upon to support the reissue application if:

(A) an error to support a reissue has been previously and properly
stated in a reissue oath/declaration in the application; and

(B) that error is still being corrected in the reissue application.

If applicant chooses to state any further error at this point (even
though such is not needed), the examiner should not review the statement
of the further error.

The supplemental reissue oath/declaration must state an error which is
relied upon to support the reissue application only where one of the
following is true:

(A) the prior reissue oath/declaration failed to state an error;

(B) the prior reissue oath/declaration attempted to state an error but
did not do so properly; or

(C) all errors under  35 U.S.C. 251 stated in the prior reissue
oath(s)/declaration(s) are no longer being corrected in the reissue
application.

WHEN A SUPPLEMENTAL OATH/DECLARATION MUST BE SUBMITTED

The supplemental oath/declaration in accordance with  37 CFR 1.175(b)(1)
must be submitted before allowance. See MPEP Section  1444 for a
discussion of the action to be taken by the examiner to obtain the
supplemental oath/declaration in accordance with  37 CFR 1.175(b)(1),
where such is needed.

Where applicant seeks to correct an error after allowance of the reissue
application, a supplemental reissue oath/declaration must accompany the
requested correction stating that the error(s) to be corrected arose
without any deceptive intention on the part of the applicant. The
supplemental reissue oath/declaration submitted after allowance will be
directed to the error applicant seeks to correct after allowance. This
supplemental oath/declaration need not cover any earlier errors, since
all earlier errors should have been covered by a reissue
oath/declaration submitted prior to allowance.

---SECTION---1415 Reissue Filing and Issue Fees

The reissue applicant is permitted to present every claim that was
issued in the original patent for the basic filing fee. In addition to
the basic filing fee, the filing or later presentation of each
independent claim which is in excess of the number of independent claims
in the original patent requires a fee.  In addition, the filing or later
presentation of each claim (whether independent or dependent) in excess
of 20, and also in excess of the number of claims in the original
patent, requires a fee. The Office has prepared Form PTO/SB/56, Reissue
Application Fee Transmittal Form, which is designed to assist in the
correct calculation of reissue filing fees.

Form PTO/SB/56. Reissue Application Fee Transmittal Form[GRAPHIC]

---SECTION---1415.01 Maintenance Fees on the Original Patent

The filing of a reissue application does not alter the schedule of
payments of maintenance fees on the original patent. If maintenance fees
have not been paid on the original patent as required by  35 U.S.C.
41(b) and  37 CFR 1.20, and the patent has expired, no reissue patent
can be granted.  35 U.S.C. 251, first paragraph, only authorizes the
granting of a reissue patent for the unexpired term of the original
patent. Once a patent has expired, the Commissioner no longer has the
authority under  35 U.S.C. 251 to reissue the patent.  See   In re
Morgan, 990 F.2d 1230, 26 USPQ2d 1392 (Fed. Cir. 1993).

The examiner should determine whether all required maintenance fees have
been paid prior to conducting an examination of a reissue application.
In addition, during the process of preparing the reissue application for
issue, the examiner should again determine whether all required
maintenance fees have been paid up to date.

PALM may be used to determine the history of maintenance fees by
entering 2970 and then the patent number. This PALM screen shows when
any maintenance fees have been paid and when the next maintenance fee is
due to be paid.

If the window for the maintenance fee due has closed (maintenance fees
are due by the day of the 4th, 8th and 12th year anniversary of the
grant of the patent), but the maintenance fee has not been paid, then
the reissue should be rejected under  35 U.S.C. 251 as having expired
and may not be passed to issue. However, if time remains for applicant
to pay the maintenance fee, then the application should not be rejected
under  35 U.S.C. 251 and it may be passed to issue when it is in
condition for allowance, because the patent has not expired.

See MPEP Chapter 2500 for additional information pertaining to
maintenance fees.

---SECTION---1416 Offer to Surrender and Return Original Patent

37 CFR 1.178 Original patent.

The application for a reissue must be accompanied by an offer to
surrender the original patent. The application should also be
accompanied by the original patent, or if the original is lost or
inaccessible, by an affidavit or declaration to that effect. The
application may be accepted for examination in the absence of the
original patent or the affidavit or declaration, but one or the other
must be supplied before the case is allowed. If a reissue be refused,
the original patent will be returned to applicant upon his request.

An examination on the merits of the reissue application is made even
though the offer to surrender the original patent, the actual surrender,
or an affidavit or declaration to the effect that the original is lost
or inaccessible, has not been received. However, in such case, the
examiner should require the surrender or the affidavit or declaration in
the first Office action. Either the original patent, or an affidavit or
declaration as to loss or inaccessibility of the original patent, must
be received before the examiner can allow the reissue application.

Form paragraph 14.05 may be used to require an offer to surrender the
original patent.

14.05 No Offer To Surrender Original Patent

This reissue application was filed without the required offer to
surrender the original patent or, if the original is lost or
inaccessible, an affidavit or declaration to that effect.  The original
patent, or an affidavit or declaration as to loss or inaccessibility of
the original patent, must be received before this reissue application
can be allowed.  See  37 CFR 1.178.

Examiner Note:

An examination on the merits of the reissue application is made even
though this requirement has not been met. This requirement should be
made in the first Office action.

Form paragraph 14.05.01 may be used to notify applicant that the
original patent or an affidavit or declaration as to loss is required
before allowance.

14.05.01 Original Patent Required Prior to Allowance

The original patent, or an affidavit or declaration as to loss or
inaccessibility of the original patent, must be received before this
reissue application can be allowed.  See  37 CFR 1.178.

Examiner Note:

1. This form paragraph may be used in an Office action to remind
applicant of the requirement for submission of the original patent
before allowance.

2. It may also be used in an   Ex parte Quayle action to require such
submission.

3. Do not use this form paragraph in an examiner's amendment.  The
original patent or declaration of loss   must be filed prior to mailing
of the "Notice of Allowability".

If applicant requests the return of the surrendered original patent upon
abandonment of the reissue application, the original patent will be sent
to the applicant by the Examining Group.

An applicant may request that a surrendered original patent be
transferred from an abandoned reissue application to a continuation or
divisional reissue application. The clerk making the transfer should
note the transfer on the "Contents" of the abandoned application. The
application number and filing date of the reissue application to which
it is transferred must be included in the notation. Where the original
patent grant is not submitted with the reissue application as filed,
patentee should include a copy of the printed original patent. Presence
of a copy of the original patent is useful for the calculation of the
reissue filing fee and for the verification of other identifying data.

Depending on the circumstances, PTO/SB/53 (Reissue Application By The
Inventor, Offer To Surrender Patent), PTO/SB/54 (Reissue Application By
The Assignee, Offer To Surrender Patent), or PTO/SB/55 (Declaration As
To Loss Of Letters Patent) may be used for filing an offer to surrender
the original patent or a declaration to the effect that the original
patent is lost.

PTO/SB/53. Reissue Application by the Inventor, Offer to Surrender
Patent[GRAPHIC]

Form PTO/SB/54. Reissue Application by the Assignee, Offer to Surrender
Patent[GRAPHIC]

Form PTO/SB/55. Declaration as to Loss of Letters Patent[GRAPHIC]

---SECTION---1417 Claim for Benefit Under 35 U.S.C. 119(a)-(d)

A "claim" for the benefit of 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 on which the
original patent was granted. However, no additional certified copy of
the foreign application is necessary. The procedure is similar to that
for "Continuing Applications" in MPEP Section  201.14(b).

In addition,  37 CFR 1.63 requires that in any application in which a
claim for foreign priority is made pursuant to  37 CFR 1.55, the oath or
declaration must identify the foreign application for patent or
inventors' certificate on which priority is claimed, and any foreign
applications having a filing date before that of the application on
which priority is claimed, by specifying:

(A) the application number of the foreign application;

(B) the foreign country; and

(C) the day, month, and year of the filing of the foreign application.

The examiner should note that the heading on printed copies of the
patent will not be carried forward to the reissue from the original
patent. Therefore, it is important that the file wrapper be endorsed by
the examiner under "FOREIGN APPLICATIONS."

---SECTION---1418 Information Disclosure Statement and Other Information

A reissue application is subject to the same duty of disclosure
requirements as is any other nonprovisional application. The provisions
of  37 CFR 1.63 require acknowledgment in the reissue oath or
declaration of the "duty to disclose to the Office all information known
to the [applicants] to be material to patentability as defined in
Section  1.56." Form paragraph 14.11.01 may be used to remind applicant
of the duty to disclose any litigation information which is material to
patentability.

14.11.01 Duty Of Disclosure Reminder

Applicant is reminded of the continuing obligation under  37 CFR 1.56,
to timely apprise the Office of any litigation information, or other
prior or concurrent proceeding, involving Patent No. [1] , which is
material to patentability of the claims under consideration in this
reissue application.  This obligation rests with each individual
associated with the filing and prosecution of this application for
reissue.  See MPEP Section Section  1404,  1442.01 and  1442.04.

Examiner Note:

This form paragraph is to be used in the first action in a reissue
application.

Reissue applicants may utilize  37 CFR 1.97 and 1.98 to comply with the
duty of disclosure required by  37 CFR 1.56.  This does not, however,
relieve applicant of the duties under  37 CFR 1.175 of, for example,
stating "at least one error being relied upon."

While  37 CFR 1.97(b) provides for filing an information disclosure
statement within 3 months of the filing of an application or before the
mailing date of a first Office action, reissue applicants are encouraged
to file information disclosure statements at the time of filing so that
such statements will be available to the public during the 2-month
period provided by  37 CFR 1.176.

---SECTION---1430 Reissue Files Open to the Public and, Notice of Filing
Reissue Announced in, Official Gazette

37 CFR 1.11 Files open to the public.

                  +++    

(b)	All reissue applications, all applications in which the Office has
accepted a request to open the complete application to inspection by the
public, and related papers in the application file, are open to
inspection by the public, and copies may be furnished upon paying the
fee therefor. The filing of reissue applications, other than continued
prosecution applications under Section  1.53(d) of reissue applications,
will be announced in the Official Gazette. The announcement shall
include at least the filing date, reissue application and original
patent numbers, title, class and subclass, name of the inventor, name of
the owner of record, name of the attorney or agent of record, and
examining group to which the reissue application is assigned.

                  +++    

37 CFR 1.176 Examination of reissue.

An original claim, if re-presented in the reissue application, is
subject to reexamination, and the entire application will be examined in
the same manner as original applications, subject to the rules relating
thereto, excepting that division will not be required. Applications for
reissue will be acted on by the examiner in advance of other
applications, but not sooner than two months after announcement of the
filing of the reissue application has appeared in the Official Gazette.

37 CFR 1.11(b) provides that all reissue applications filed after March
1, 1977 are open to inspection by the general public, and copies may be
furnished upon paying the fee therefor. The filing of reissue
applications (except for continued prosecution applications (CPA's)
filed under  37 CFR 1.53(d)) will be announced in the   Official
Gazette. The announcement gives interested members of the public an
opportunity to submit to the examiner information pertinent to the
patentability of the reissue application. The announcement includes the
filing date, reissue application and original patent numbers, title,
class and subclass, name of the inventor, name of the owner of record,
name of the attorney or agent of record, and the Examining Group to
which the reissue application is initially assigned. A Group Director or
other appropriate Office official may, under appropriate circumstances,
postpone access to or the making of copies of a reissue application,
such as, for example, to avoid interruption of the examination or other
review of the application by an examiner. Those reissue applications
already on file prior to March 1, 1977 are not automatically open to
inspection, but a liberal policy is followed by the Office of the
Assistant Commissioner for Patents in granting petitions for access to
such applications.

The publication of a notice of a reissue application in the Official
Gazette should be done prior to any examination of the application. If
an inadvertent failure to publish notice of the filing of the reissue
application in the Official Gazette is recognized later in the
examination, action should be taken to have the notice published as
quickly as possible, and action on the application may be delayed until
two months after the publication, allowing for any protests to be filed.

The filing of a continued prosecution application (CPA) under  37 CFR
1.53(d) of a reissue application will not be announced in the Official
Gazette. Although the filing of a CPA of a reissue application
constitutes the filing of a reissue application, the announcement of the
filing of such CPA would be redundant in view of the announcement of the
filing of the prior reissue application in the Official Gazette and the
fact that the same application number and file will continue to be used
for the CPA.

For those reissue applications filed on or after March 1, 1977, the
following procedure will be observed:

(A) The filing of all reissue applications, except for CPAs filed under 
37 CFR 1.53(d), will be announced in the Official Gazette and will
include certain identifying data as specified in  37 CFR 1.11(b). Any
member of the general public may request access to a particular reissue
application filed after March 1, 1977. Since no record of such request
is intended to be kept, an oral request will suffice.

(B) The reissue application files will be maintained in the Examining
Groups and inspection thereof will be supervised by Group personnel.
Although no general limit is placed on the amount of time spent
reviewing the files, the Office may impose limitations, if necessary,
e.g., where the application is actively being processed.

(C) Where the reissue application has left the Examining Group for
administrative processing, requests for access should be directed to the
appropriate supervisory personnel where the application is currently
located.

(D) Requests for copies of papers in the reissue application file must
be in writing and addressed to the Commissioner of Patents and
Trademarks, Box 10, Washington, D.C. 20231 and may be either mailed or
delivered to the Office Customer Service Window (See MPEP Section  502). 
The price for copies made by the Office is set forth in  37 CFR 1.19.

---SECTION---1431 Notice in Patent File

37 CFR 1.179 Notice of reissue application.

When an application for a reissue is filed, there will be placed in the
file of the original patent a notice stating that an application for
reissue has been filed. When the reissue is granted or the reissue
application is otherwise terminated, the fact will be added to the
notice in the file of the original patent.

Whenever a reissue application is filed, a Form PTO-445 notice is placed
in the patented file identifying the reissue application by application
number and its filing date. The pertinent data is filled in by the
Office of Initial Patent Examination. When divisional or continuation
reissue applications are filed, a separate form for each reissue
application is placed in the original patent file. When the reissue is
issued, it is important that the File Information Unit (Record Room) be
informed by the Examining Group technical support staff of that fact by
written memo. File Information Unit (Record Room) personnel will update
the Form PTO-445 in the patented file.

---SECTION---1440 Examination of Reissue Application

37 CFR 1.176 Examination of reissue.

An original claim, if re-presented in the reissue application, is
subject to reexamination, and the entire application will be examined in
the same manner as original applications, subject to the rules relating
thereto, excepting that division will not be required. Applications for
reissue will be acted on by the examiner in advance of other
applications, but not sooner than two months after announcement of the
filing of the reissue application has appeared in the Official Gazette.

37 CFR 1.176 provides that an original claim, if re-presented in a
reissue application, will be subject to reexamination. Along with the
entire application, the re-presented claim will be fully examined in the
same manner subject to the same rules relating thereto, as if being
presented for the first time in an original application, except that
division will not be required by the examiner. See MPEP Section  1450
and Section  1451. Reissue applications are normally examined by the
same examiner who issued the patent for which reissue is requested. In
addition, the application will be examined with respect to compliance
with  37 CFR 1.171-1.179 relating specifically to reissue applications,
for example, the reissue oath or declaration will be carefully reviewed
for compliance with  37 CFR 1.175.  See MPEP Section  1444 for handling
applications in which the oath or declaration lacks compliance with  37
CFR 1.175. Reissue applications with related litigation will be acted on
by the examiner before any other special applications, and will be acted
on immediately by the examiner, subject only to the 2-month delay after
publication for examining reissue applications.

The original patent file wrapper should always be ordered and reviewed
when examining a reissue application thereof.

---SECTION---1441 Two-Month Delay Period; Protest in Reissue
Applications

37 CFR 1.176 provides that reissue applications will be acted on by the
examiner in advance of other applications, i.e., "special," but not
sooner than 2 months after announcement of the filing of the reissue has
appeared in the Official Gazette. The 2-month delay is provided in order
that members of the public may have time to review the reissue
application and submit pertinent information to the Office before the
examiner's action. The pertinent information is submitted in the form of
a protest under  37 CFR 1.291(a).  As set forth in MPEP Section 
1901.04, the public should be aware that such submissions should be made
as early as possible, since under certain circumstances the 2-month
delay period of  37 CFR 1.176 may be waived. The Office will entertain
petitions under  37 CFR 1.183 which are accompanied by the required
petition fee (37 CFR 1.17(h)) to waive the delay period of  37 CFR
1.176. Accordingly, protestors to reissue applications cannot
automatically assume that the full 2-month delay period of  37 CFR 1.176
will always be available. Appropriate reasons for requesting a waiver of
the 2-month delay period of  37 CFR 1.176 might be, for example, that
litigation has been stayed to permit the filing of the reissue
application.  Such petitions are decided by the Office of the Deputy
Assistant Commissioner for Patent Policy and Projects.

If the protest of a reissue application cannot be filed within the
2-month period provided by  37 CFR 1.176, the protest can be submitted
at a later time.  Where the protest is submitted after the 2-month
period, no petition under  37 CFR 1.182 or 1.183 is needed with respect
to the protest being submitted after the 2 months provided for in  37
CFR 1.176 unless a final rejection has been issued or prosecution on the
merits has been closed for the reissue application.

Where the protest is submitted after the 2-month period, the protest
might be received after the first Office action by the examiner, since
reissue applications are taken up "special."  Once the first Office
action is mailed (after the 2-month period), a member of the public may
still submit pertinent information in the form of a protest under  37
CFR 1.291(a), and the examiner will consider the information submitted
in the next Office action, to the extent that such consideration is
appropriate.  See MPEP Section  1901.04 and Section  1901.06 for the
timeliness and content criteria as to when a protest is considered.

The Examining Group to which the reissue application is assigned is
listed in the Official Gazette notice of filing of the reissue
application.  Accordingly, the indicated Examining Group should retain
the reissue application file for 2 months after the date of the Official
Gazette notice before transferring the reissue application under the
procedure set forth in MPEP Section  903.08(d).

The publication of a notice of a reissue application in the Official
Gazette should be done prior to any examination of the reissue
application.  If an inadvertent failure to publish notice of the filing
of the reissue application in the Official Gazette is recognized later
in the examination, action should be taken to have the notice published
as quickly as possible, and action on the reissue application may be
delayed until 2 months after the publication, allowing for any protests
to be filed.

See MPEP Section  1901.06 for general procedures on examiner treatment
of protests in reissue applications.

---SECTION---1442 Special Status

All reissue applications are taken up "special," and remain "special"
even though 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; this means that all issues not deferred will be treated
and responded to immediately. Furthermore, reissue applications involved
in "litigation" will be taken up for action in advance of other reissue
applications.

---SECTION---1442.01 Litigation Related Reissues

During initial review, the examiner should determine whether the patent
for which the reissue has been filed is involved in litigation, and if
so, the status of that litigation. If the examiner becomes aware of
litigation involving the patent sought to be reissued during examination
of the reissue application, and applicant has not made the details
regarding that litigation of record in the reissue application, the
examiner, in the next Office action, will inquire regarding the specific
details of the litigation.

Form paragraph 14.06 may be used for such an inquiry.

14.06 Litigation Related Reissue

The patent sought to be reissued by this application [1] involved in
litigation. Any documents and/or materials which would be material to
patentability of this reissue application are required to be made of
record in response to this action.

Due to the related litigation status of this application, EXTENSIONS OF
TIME UNDER THE PROVISIONS OF  37 CFR 1.136(a) WILL NOT BE PERMITTED
DURING THE PROSECUTION OF THIS APPLICATION.

Examiner Note:

In bracket 1, insert either -is- or -has been-.

If the additional details of the litigation appear to be material to
examination of the reissue application, the examiner may make such
additional inquiries as necessary and appropriate.

Where there is litigation, and it has not already been done, the
examiner should place a prominent notation on the application file to
indicate the litigation (1) at the bottom of the face of the file in the
box just to the right of the box for the retention label, and (2) on the
pink Reissue Notice Card form.

Applicants will normally be given 1 month to reply to Office actions in
all reissue applications which are being examined during litigation, or
after litigation had been stayed, dismissed, etc., to allow for
consideration of the reissue by the Office. This 1-month period may be
extended only upon a showing of clear justification pursuant to  37 CFR
1.136(b). The Office action will inform applicant that the provisions of 
37 CFR 1.136(a) are not available. Of course, up to 3 months may be set
for reply if the examiner determines such a period is clearly justified.

---SECTION---1442.02 Concurrent Litigation

In order to avoid duplication of effort, action in reissue applications
in which there is an indication of concurrent litigation will be
suspended automatically unless and until it is evident to the examiner,
or the applicant indicates, that any one of the following applies:

(A) a stay of the litigation is in effect;

(B) the litigation has been terminated;

(C) there are no significant overlapping issues between the application
and the litigation; or

(D) it is applicant's desire that the application be examined at that
time.

Where any of (A) - (D) above apply, form paragraphs 14.08-14.10 may be
used to deny a suspension of action in the reissue, i.e., to deny a stay
of the reissue proceeding.

14.08 Action in Reissue Not Stayed - Related Litigation Terminated

Since the litigation related to this reissue application is terminated
and final, action in this reissue application will NOT be stayed. Due to
the related litigation status of this reissue application, EXTENSIONS OF
TIME UNDER THE PROVISIONS OF  37 CFR 1.136(a) WILL NOT BE PERMITTED.

14.09 Action in Reissue Not Stayed - Related Litigation Not Overlapping

While there is concurrent litigation related to this reissue
application, action in this reissue application will NOT be stayed
because there are no significant overlapping issues between the
application and that litigation. Due to the related litigation status of
this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF  37
CFR 1.136(a) WILL NOT BE PERMITTED.

14.10 Action in Reissue Not Stayed - Applicant's Request

While there is concurrent litigation related to this reissue
application, action in this reissue application will NOT be stayed
because of applicant's request that the application be examined at this
time. Due to the related litigation status of this reissue application,
EXTENSIONS OF TIME UNDER THE PROVISIONS OF  37 CFR 1.136(a) WILL NOT BE
PERMITTED.

Where none of (A) through (D) above apply, action in the reissue
application in which there is an indication of concurrent litigation
will be suspended by the examiner. The examiner should consult with the
Group Special Program Examiner prior to suspending action in the
reissue. Form paragraph 14.11 may be used to suspend action, i.e., stay
action, in a reissue application with concurrent litigation.

14.11 Action in Reissue Stayed - Related Litigation

In view of concurrent litigation, and in order to avoid duplication of
effort between the two proceedings, action in this reissue application
is STAYED until such time as it is evident to the examiner that (1) a
stay of the litigation is in effect, (2) the litigation has been
terminated, (3) there are no significant overlapping issues between the
application and the litigation, or (4) applicant requests that the
application be examined.

If the reissue application has been merged with a reexamination
proceeding, the merged proceeding generally will not be stayed where
there is litigation. In a merged reexamination/reissue proceeding, the
reexamination will control because of the statutory (35 U.S.C. 305)
requirement that reexamination proceedings be conducted with special
dispatch. See MPEP Section  2285 and Section  2286.

---SECTION---1442.03 Litigation Stayed

All reissue applications, except those under suspension because of
litigation, will be taken up for action ahead of other "special"
applications; this means that all issues not deferred will be treated
and responded to immediately. Furthermore, reissue applications involved
in "stayed litigation" will be taken up for action in advance of other
reissue applications. Great emphasis is placed on the expedited
processing of such reissue applications. The courts are especially
interested in expedited processing in the Office where litigation is
stayed.

In reissue applications with "stayed litigation," the Office will
entertain petitions under  37 CFR 1.183, which are accompanied by the
fee under  37 CFR 1.17(h), to waive the 2-month delay period under  37
CFR 1.176.  Such petitions are decided by the Office of the Deputy
Assistant Commissioner for Patent Policy and Projects.

Time-monitoring systems have been put into effect which will closely
monitor the time used by applicants, protestors, and examiners in
processing reissue applications of patents involved in litigation in
which the court has stayed further action. Monthly reports on the status
of reissue applications with related litigation are required from each
Examining Group. Delays in reissue processing are to be followed up. 
The Group Special Program Examiner is responsible for oversight of
reissue applications with related litigation.

The purpose of these procedures and those deferring consideration of
certain issues, until all other issues are resolved or the application
is otherwise ready for consideration by the Board of Patent Appeals and
Interferences (note MPEP Section  1448), is to reduce the time between
filing of the reissue application and final action thereon, while still
giving all parties sufficient time to be heard.

Requests for stays or suspension of action in reissues where litigation
has been stayed may be answered with Form Paragraph 14.07.

14.07 Action in Reissue Not Stayed - Related Litigation Stayed

While there is concurrent litigation related to this reissue
application, action in this reissue application will NOT be stayed
because a stay of that litigation is in effect for the purpose of
awaiting the outcome of these reissue proceedings. Due to the related
litigation status of this reissue application, EXTENSIONS OF TIME UNDER
THE PROVISIONS OF  37 CFR 1.136(a) WILL NOT BE PERMITTED.

---SECTION---1442.04 Litigation Involving Patent

Where the patent for which reissue is being sought is, or has been,
involved in litigation which raised a question material to patentability
of the reissue application, such as the validity of the patent, the
existence of such litigation must be brought to the attention of the
Office by the applicant.  This should be done at the time of, or shortly
after, filing the application, either in the reissue oath or
declaration, or in a separate paper, preferably accompanying the
application as filed. Litigation begun after filing of the reissue
application also should be promptly brought to the attention of the
Office. The details and documents from the litigation, insofar as they
are "material to patentability" of the reissue application as defined in 
37 CFR 1.56(b), should accompany the application as filed, or be
submitted as promptly thereafter as possible. For example, the defenses
raised against validity of the patent would normally be "material to
patentability" of the reissue application. It would, in most situations,
be appropriate to bring such defenses to the attention of the Office by
filing in the reissue application a copy of the Court papers raising
such defenses. As a minimum, the applicant should call the attention of
the Office to the litigation, the existence and nature of any
allegations having a bearing on the validity of the original patent, and
the nature of litigation materials relating to these issues. Enough
information should be submitted to clearly inform the Office of the
nature of these issues so that the Office can intelligently evaluate the
need for asking for further materials in the litigation. Thus, the
existence of supporting materials which may substantiate allegations of
invalidity should, at least, be fully described, or submitted. The
Office is not interested in receiving voluminous litigation materials
which are not relevant to the Office's consideration of the reissue
application. The status of the litigation should be updated in the
reissue application as soon as significant events happen in the
litigation.

When a reissue application is filed, the examiner should determine
whether the original patent has been adjudicated by a court. The
decision of the court, and also other papers in the suit, may provide
information essential to the examination of the reissue. The patented
file will contain notices of the filing and termination of infringement
suits on the patent. Such notices are required by law to be filed by the
clerks of the Federal District Courts. These notices do not indicate if
there was an opinion by the court, nor whether a decision was published.
Shepard's Federal Citations and the cumulative digests of the United
States Patents Quarterly, both of which are in the Lutrelle F. Parker,
Sr., Memorial Law Library (located in Crystal Park 1-520), contain
tables of patent numbers giving the citation of published decisions
concerning the patent. A litigation computer search by the Scientific
and Technical Information Center (STIC) should be requested by the
examiner to determine whether the patent has been, or is, involved in
litigation. The "Search Notes" box on the application file wrapper can
then be completed to indicate that the review was conducted. A copy of
the STIC search should be hole-punched and placed in the reissue file.
Additional information or guidance as to making a litigation search may
be obtained from the library of the Office of the Solicitor.

Where papers are not otherwise conveniently obtainable, the applicant
may be requested to supply copies of papers and records in suits, or the
Office of the Solicitor may be requested to obtain them from the court.
The information thus obtained should be carefully considered for its
bearing on the proposed claims of the reissue, particularly when the
reissue application was filed in view of the holding of a court.

If the examiner becomes aware of litigation involving the patent sought
to be reissued during examination of the reissue application, and
applicant has not made the details regarding that litigation of record
in the reissue application, the examiner, in the next Office action,
should inquire regarding the same. Form paragraph 14.06 may be used for
such an inquiry. See MPEP Section  1442.01.

If the additional details of the litigation appear to be material to
patentability of the reissue application, the examiner may make such
additional inquiries as necessary and appropriate.

---SECTION---1442.05 Cases in Which Stays Were Considered

Federal District Courts stay litigation in significant numbers of cases
to permit consideration of a reissue application by the Office. Several
exemplary cases are listed here for the convenience of the Office, the
courts and the public.

In most instances, the reissue-examination procedure is instituted by a
patent owner who voluntarily files a reissue application as a
consequence of related patent litigation. However, some District Courts
have required a patentee-litigant to file a reissue application, for
example:

Alpine Engineering Inc. v. Automated Building Components Inc., BNA/PTCJ
367: A-12 (S.D. Fla. 1978);

Lee-Boy Mfg. Co. v. Puckett, 202 USPQ 573 (D. Ga. 1978);

Choat v. Rome Industries Inc. 203 USPQ 549 (N.D. Ga. 1979).

Other courts have declined to so order, for example:

Bielomatik Leuze & Co., v. Southwest Tablet Mfg. Co., 204 USPQ 226 (N.D.
Texas 1979);

RCA Corp. v. Applied Digital Data Systems Inc., 201 USPQ 451 (D. Del.
1979);

Antonious v. Kamata-Ri & Co. Ltd., 204 USPQ 294 (D. Md. 1979).

Only a patentee or his assignee may file a reissue patent application. 
An order for a different party to file a reissue will not be binding on
the Office.

---SECTION---1442.05(a) Stays Granted

"Stays" of court or administrative proceedings in litigation were
ordered in the following sampling of published decisions.

PIC Inc. v. Prescon Corp., 195 USPQ 525 (D. Del. 1977).

Fisher Controls Co. Inc. v. Control Components, Inc., 196 USPQ 817 (S.D.
Iowa 1977) (Note also 203 USPQ 1059 denying discovery during the stay.).

Alpine Engineering Inc. v. Automated Building Components Inc., BNA/PTCJ
367: A-12 (S.D. Fla. 1978) (dismissed a Declaratory Judgment suit with
order for patentee to seek reissue in the Office).

AMI Industries, Inc. v. E. A. Industries, Inc., 204 USPQ 568 (W.D.
N.C.1978) (with dicta that if suit had not been dismissed, proceedings
would have been stayed for Office consideration).

Reynolds Metal Co. v. Aluminum Co. of America, 198 USPQ 529 (N.D. Ind.
1978).

Sauder Industries, Inc. v.   Carborundum Co., 201 USPQ 240 (N.D. Ohio
1978).

Rohm and Haas Co. v. Mobil Oil Corp., 201 USPQ 80 (D. Del. 1978) (with
provision for limited discovery on allegations of fraud for Office's
benefit).

Lee-Boy Mfg. Co. v. Puckett, 202 USPQ 573 (D. Ga. 1978) (reissue ordered
after discovery and during wait for trial).

Fas-Line Sales & Rentals, Inc. v. E-Z Lay Pipe Corp., 203 USPQ 497 (W.D.
Okla. 1979).

Choat v. Rome Industries Inc., 203 USPQ 549 (N.D. Ga. 1979) (directed
patentee to file reissue application).

In re Certain High-Voltage Circuit Interrupters and Components Thereof,
204 USPQ 50 (Int'l Trade Comm'n 1979).

---SECTION---1442.05(b) Stays Denied

"Stays" of court or administrative proceedings in litigation were denied
in the following sampling of published decisions.

General Tire and Rubber Co. v. Watson-Bowman Associates, Inc., 193 USPQ
479 (D. Del. 1977).

Perkin-Elmer Corp. v. Westinghouse Electric Corp., BNA/PTCJ 376: A-11
(E.D. N.Y. 1978).

In re Certain Ceramic Tile Setters, No. 337-TA-41, BNA/PTCJ 385: A-21
(Int'l Trade Comm'n 1978).

E.C.H. Will v. Freundlich-Gomez Machinery Corp., 201 USPQ 476 (S.D. N.Y.
1978).

RCA Corp. v. Applied Digital Data Systems Inc., 201 USPQ 451 (D. Del.
1979) (denied stay where a patentee had not filed a reissue).

Bielomatik Leuze & Co., v. Southwest Tablet Mfg. Co., 204 USPQ 226 (N.D.
Texas 1979) (refused to order reissue).

Antonious v. Kamata-Ri & Co. Ltd., 204 USPQ 294 (D. Md. 1979) (refused
to order reissue).

---SECTION---1443 Initial Examiner Review

On initial receipt of a reissue application, the examiner should inspect
the submission under  37 CFR 1.172 as to documentary evidence of a chain
of title from the original owner to the assignee to determine whether
the consent requirement of  37 CFR 1.172 has been met. The examiner will
compare the consent and documentary evidence of ownership; the assignee
indicated by the documentary evidence must be the same assignee which
signed the consent. Also, the person who signs the consent for the
assignee and the person who signs the submission of evidence of
ownership for the assignee must both be persons having authority to do
so. See also MPEP Section  324.

Where the application is assigned, and there is no submission under  37
CFR 1.172 as to documentary evidence in the application, the examiner
should require the submission using form paragraph 14.16. Once the
submission under  37 CFR 1.172 as to documentary evidence is received,
it must be compared with the consent to determine whether the assignee
indicated by the documentary evidence is the same assignee which signed
the consent. See MPEP Section  1410.01 for further discussion as to the
required consent and documentary evidence.

Where there is a statement of record that the application is not
assigned, there should be no submission under  37 CFR 1.172 as to
documentary evidence of ownership in the application, and none should be
required by the examiner.

The filing of all reissue applications, except for continued prosecution
applications (CPAs) filed under  37 CFR 1.53(d), must be announced in
the Official Gazette. Accordingly, for any reissue application other
than a CPA, the examiner should determine if the filing of the reissue
application has been announced in the Official Gazette as provided in 
37 CFR 1.11(b), especially where the reissue is a file wrapper
continuation under former  37 CFR 1.62. The date of the Official Gazette
notice can usually be found on the pink "REISSUE" tag which protrudes
from the top of the application file of 08 or earlier series. Where the
date is missing from the tag, or where the tag itself is missing, the
PALM screen (2952) should be checked for the presence of an "NRE" entry
in the contents. For 09 series reissue applications, the Official
Gazette publication date appears on the face of the file wrapper. If the
filing of the reissue application has not been announced in the Official
Gazette, the reissue application should be returned to the Office of
Initial Patent Examination (Special Processing) to handle the
announcement. The examiner should not further act on the reissue until 2
months after announcement of the filing of the reissue has appeared in
the Official Gazette. See MPEP Section  1440 and  37 CFR 1.176.

The examiner should determine if there is concurrent litigation, and if
so, the status thereof (MPEP Section  1442.01), and whether the reissue
file has been appropriately marked. Note MPEP Section  1404.

The examiner should determine if a protest has been filed, and if so, it
should be handled as set forth in MPEP Section  1901.06.

The examiner should determine whether the patent is involved in an
interference, and if so, should refer to MPEP Section  1449.01 before
taking any action on the reissue application.

The examiner should check that an offer to surrender the original
patent, or an affidavit or declaration to the effect that the original
is lost or inaccessible, has been received. An examination on the merits
is made even though the above has not been complied with, but the
examiner should require compliance in the first office action.  See MPEP
Section  1416.

The examiner should verify that all Certificate of Correction changes
have been properly incorporated into the reissue application.  See MPEP
Section  1411.01.

The examiner should verify that the patent on which the reissue
application is based has not expired, either because its term has run or
because required maintenance fees have not been paid.  Once a patent has
expired, the Commissioner no longer has the authority under  35 U.S.C.
251 to reissue the patent.  See In re Morgan, 990 F.2d 1230, 26 USPQ2d
1392 (Fed. Cir. 1992).  See also MPEP Section  1415.01.

---SECTION---1444 Review of Reissue Oath/Declaration

In accordance with  37 CFR 1.175, the following is required in the
reissue oath/declaration:

(A) A statement that the applicant believes the original patent to be
wholly or partly inoperative or invalid-

(1) by reason of a defective specification or drawing, or

(2) by reason of the patentee claiming more or less than patentee had
the right to claim in the patent;

(B) A statement of at least one error which is relied upon to support
the reissue application, i.e.,   which provides a basis for the reissue;

(C) A statement that all errors which are being corrected in the reissue
application up to the time of filing of the oath/declaration arose
without any deceptive intention on the part of the applicant; and

(D) The information required by  37 CFR 1.63.

MPEP Section  1414 contains a discussion of each of the above elements
(i.e., requirements of a reissue oath/declaration). The examiner should
carefully review the reissue oath/declaration in conjunction with that
discussion, in order to ensure that each element is provided in the
oath/declaration. If the examiner's review of the oath/declaration
reveals a lack of compliance with any of the requirements of  37 CFR
1.175, a rejection of all the claims under  35 U.S.C. 251 should be made
on the basis that the reissue oath/declaration is insufficient.

In preparing an Office action, the examiner should use form paragraphs
14.01 through 14.01.04 to state the objection(s) to the
oath/declaration, i.e., the defects in the oath/declaration. These form
paragraphs are reproduced in MPEP Section  1414. The examiner should
then use form paragraph 14.14 to reject the claims under  35 U.S.C. 251,
based upon the improper oath/declaration.

14.14 Rejection, Defective Reissue Oath or Declaration

Claim   [1] rejected as being based upon a defective reissue   [2] under 
35 U.S.C. 251 as set forth above.  See  37 CFR 1.175.

The nature of the defect(s) in the [3] is set forth in the discussion
above in this Office action. 

Examiner Note:

1. In bracket 1, list all claims in the reissue application.  See MPEP
Section  706.03(x).

2. This paragraph should be preceded by at least one of the paragraphs
14.01 to 14.01.04.

3. In brackets 2 and 3, insert either --oath-- or --declaration--.

A lack of signature on a reissue oath/declaration would be considered a
lack of compliance with  37 CFR 1.175(a) and result in a rejection,
including final rejection, of all the claims on the basis that the
reissue oath/declaration is insufficient. If the unsigned reissue
oath/declaration is submitted as part of a reply which is otherwise
properly signed and responsive to the outstanding Office action, the
reply should be accepted by the examiner as proper and responsive, and
the oath/declaration considered fully in the next Office action. The
reply should not be treated as an unsigned or improperly signed
amendment (see MPEP Section  714.01(a)), nor do the provisions of Ex
Parte Quayle apply in this situation. The lack of signature, along with
any other oath/declaration deficiencies, should be noted in the next
Office action rejecting the claims as being based upon an insufficient
reissue oath/declaration.

HANDLING OF THE REISSUE OATH/DECLARATION DURING THE REISSUE PROCEEDING

An initial reissue oath/declaration is submitted with the reissue
application. Where the reissue oath/declaration fails to comply with  37
CFR 1.175(a), the examiner will so notify the applicant in an Office
action, rejecting the claims under  35 U.S.C. 251 as discussed above. In
reply to the Office action, a supplemental reissue oath/declaration
should be submitted dealing with the noted defects in the reissue
oath/declaration.

Where the initial reissue oath/declaration (1) failed to provide any
error statement, or (2) attempted to provide an error statement, but
failed to identify any error under  35 U.S.C. 251 upon which reissue can
be based (see MPEP Section  1402), the examiner should reject all the
claims as being based upon a defective reissue oath/declaration under 
35 U.S.C. 251. To support the rejection, the examiner should point out
the failure of the initial oath/declaration to comply with  37 CFR 1.175
because an error under  35 U.S.C. 251 upon which reissue can be based
was not identified therein. In reply to the rejection under  35 U.S.C.
251, a supplemental reissue oath/declaration must be submitted stating
an error under  35 U.S.C. 251 which can be relied upon to support the
reissue application. Submission of this supplemental reissue
oath/declaration to obviate the rejection cannot be deferred by
applicant until the application is otherwise in condition for allowance.
In this instance, a proper statement of error was never provided in the
initial reissue oath/declaration, thus a supplemental oath/declaration
is required in reply to the Office action in order to properly establish
grounds for reissue.

A different situation may arise where the initial reissue
oath/declaration does properly identify one or more errors under  35
U.S.C. 251 as being the basis for reissue, however, because of changes
or amendments made during prosecution, none of the identified errors are
relied upon any more. A supplemental oath/declaration will be needed to
identify at least one error now being relied upon as the basis for
reissue, even though the prior oath/declaration was found proper by the
examiner. The supplemental oath/declaration need not also indicate that
the error(s) identified in the prior oath(s)/declaration(s) is/are no
longer being corrected. In this instance, applicant's submission of the
supplemental reissue oath/declaration to obviate the rejection under  35
U.S.C. 251   can, at applicant's option, be deferred until the
application is otherwise in condition for allowance. The submission can
be deferred because a proper statement of error was provided in the
initial reissue oath/declaration. Applicant need only request that
submission of the supplemental reissue oath/declaration be deferred
until allowance, and such a request will be considered a complete reply
to the rejection.

SUPPLEMENTAL REISSUE OATH/DECLARATION UNDER 37 CFR 1.175(b)(1):

Once the reissue oath/declaration is found to comply with  37 CFR
1.175(a), it is not required, nor is it suggested, that a new reissue
oath/declaration be submitted together with each new amendment and
correction of error in the patent. During the prosecution of a reissue
application, amendments are often made and additional errors in the
patent are corrected. A supplemental oath/declaration need not be
submitted with each amendment and additional correction. Rather, it is
suggested that the reissue applicant wait until the case is in condition
for allowance, and then submit a cumulative supplemental reissue
oath/declaration pursuant to  37 CFR 1.175(b)(1).

See MPEP Section  1414.01 for a discussion of the required content of a
supplemental reissue oath/declaration under  37 CFR 1.175(b)(1).

A supplemental oath/declaration under  37 CFR 1.175(b)(1) must be
submitted before allowance. It may be submitted with any reply prior to
allowance. It may be submitted to overcome a rejection under 35 U.S.C
251 made by the examiner, where it is indicated that the submission of
the supplemental oath/declaration will overcome the rejection.

A supplemental oath/declaration under  37 CFR 1.175(b)(1) will be
required where:

(A) the application is otherwise (other than the need for this
supplemental oath/declaration) in condition for allowance;

(B) amendments or other corrections of errors in the patent have been
made subsequent to the last oath/declaration filed in the application;
and

(C) at least one of the amendments or other corrections corrects an
error under  35 U.S.C. 251.

When a supplemental oath/declaration under  37 CFR 1.175(b)(1) directed
to the amendments or other corrections of error is required, the
examiner is encouraged to telephone the applicant and request the
submission of the supplemental oath/declaration by fax. If the
circumstances do not permit making a telephone call, or if applicant
declines or is unable to promptly submit the oath/declaration, the
examiner should issue a final Office action (final rejection) and use
form paragraph 14.05.02.

14.05.02 Supplemental Oath or Declaration Required Prior to Allowance

In accordance with  37 CFR 1.175(b)(1), a supplemental reissue
oath/declaration under  37 CFR 1.175(b)(1) must be received before this
reissue application can be allowed.

Claim   [1] rejected as being based upon a defective reissue   [2] under 
35 U.S.C. 251. See  37 CFR 1.175. The nature of the defect is set forth
above.

Receipt of an appropriate supplemental oath/declaration under  37 CFR
1.175(b)(1) will overcome this rejection under  35 U.S.C. 251. An
example of acceptable language to be used in the supplemental
oath/declaration is as follows:

"Every error in the patent which was corrected in the present reissue
application, and is not covered by a prior oath/declaration submitted in
this application, arose without any deceptive intention on the part of
the applicant."

Examiner Note:

1. In bracket 1, list all claims in the reissue application.

2. In bracket 2, insert either --oath-- or --declaration--.

3. This form paragraph is used in an Office action to: (a) remind
applicant of the requirement for submission of the supplemental reissue
oath/declaration under  37 CFR 1.175(b)(1) before allowance and (b) at
the same time, reject all the claims since the reissue application is
defective until the supplemental oath/declaration is submitted.

4. Do not use this form paragraph if no amendments (or other corrections
of the patent) have been made subsequent to the last oath/declaration
filed in the case; instead allow the case.

5. This form paragraph cannot be used in an Ex parte Quayle action to
require the supplemental oath/declaration, because the rejection under 
35 U.S.C. 251 is more than a matter of form.

6. Do not use this form paragraph in an examiner's amendment. The
supplemental oath/declaration must be filed prior to mailing of the
Notice of Allowability.

As noted above, the examiner will issue a final Office action where the
application is otherwise in condition for allowance, and amendments or
other corrections of error in the patent have been made subsequent to
the last oath/declaration filed in the application. The examiner will be
introducing (via form paragraph 14.05.02) a rejection into the case for
the first time in the prosecution, once the claims are determined to be
otherwise allowable. This introduction of a new ground of rejection
under  35 U.S.C. 251 will not prevent the action from being made final
on a second or subsequent action because of the following factors:

(A) The finding of the case in condition for allowance is the first
opportunity that the examiner has to make the rejection;

(B) The rejection is being made in reply to, i.e., was caused by, an
amendment of the application (to correct errors in the patent);

(C) All applicants are on notice that this rejection will be made upon
finding of the case otherwise in condition for allowance where errors
have been corrected subsequent to the last oath/declaration filed in the
case, therefore, the rejection should have been expected by applicant;
and

(D) The rejection will not prevent applicant from exercising any rights
as to curing the rejection, since applicant need only submit a
supplemental oath/declaration with the above-described language, and it
will be entered to cure the rejection.

Where the application is in condition for allowance and   no amendments
or other corrections of error in the patent have been made subsequent to
the last oath/declaration filed in the application, a supplemental
reissue oath/declaration under  37 CFR 1.175(b)(1) should not be
required by the examiner. Instead, the examiner should issue a Notice of
Allowability indicating allowance of the claims.

AFTER ALLOWANCE

Where applicant seeks to correct an error after allowance of the
application, any amendment of the patent correcting the error must be
submitted in accordance with  37 CFR 1.312. As set forth in  37 CFR
1.312, no amendment may be made as a matter of right in an application
after the mailing of the notice of allowance. An amendment filed before
the payment of the issue fee may be entered on the recommendation of the
primary examiner, approved by the supervisory patent examiner, without
withdrawing the case from issue. An amendment filed after the date the
issue fee is paid must be accompanied by a petition including the fee
set forth in  37 CFR 1.17(i) and a showing of good and sufficient
reasons why the amendment is necessary and was not earlier presented.
This petition is decided by the Group Director.

Because the amendment seeks to correct an error in the patent, the
amendment will affect the disclosure, the scope of a claim, or add a
claim. Thus, in accordance with MPEP Section  714.16, the remarks
accompanying the amendment must fully and clearly state:

(A) why the amendment is needed;

(B) why the proposed amended or new claims require no additional search
or examination;

(C) why the claims are patentable; and

(D) why they were not presented earlier.

A supplemental reissue oath/declaration must accompany the amendment.
The supplemental reissue oath/declaration must state that the error(s)
to be corrected arose without any deceptive intention on the part of the
applicant. The supplemental reissue oath/declaration submitted after
allowance must be directed to the error(s) applicant seeks to correct
after allowance. This oath/declaration need not cover any earlier
errors, since all earlier errors should have been covered by a reissue
oath/declaration submitted prior to allowance.

Occasionally an error to be corrected after allowance does not include
an amendment of the specification or claims of the patent. For example,
the correction of the error could be the filing of a certified copy of
the original foreign application to obtain the right of foreign priority
under  35 U.S.C. 119 (see Brenner v. State of Israel, 400 F.2d 789, 158
USPQ 584 (D.C. Cir. 1968)). In such a case, the requirements of  37 CFR
1.312 must still be met. This is so, because the correction of the
patent is an amendment of the patent, even though no amendment is
physically entered into the case. Thus, for a reissue oath/declaration
submitted after allowance to correct an additional error (or errors),
the reissue applicant must comply with  37 CFR 1.312 in the manner
discussed above.

---SECTION---1445 Reissue Application Examined in Same Manner as
Original Application

As stated in  37 CFR 1.176, a reissue application, including all the
claims therein, is subject to "be examined in the same manner as
original applications." Accordingly, the claims in a reissue application
are subject to any and all rejections which the examiner deems
appropriate.  It does not matter whether the claims are identical to
those of the patent or changed from those in the patent. It also does
not matter that a rejection was not made in the prosecution of the
patent, or could have been made, or was in fact made and dropped during
prosecution of the patent; the prior action in the prosecution of the
patent does not prevent that rejection from being made in the reissue
application. Claims in a reissue application enjoy no "presumption of
validity." In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA
1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ 385, 389 n.4 (Fed.
Cir. 1983).  Likewise, the fact that during prosecution of the patent
the examiner considered, may have considered, or should have considered
information such as, for example, a specific prior art document, does
not have any bearing on or prevent its use as prior art during
prosecution of the reissue application.

---SECTION---1448 Fraud, Inequitable Conduct, or Duty of Disclosure
Issues

The Office no longer investigates and rejects reissue applications under 
37 CFR 1.56. The Office will not comment upon duty of disclosure issues
which are brought to the attention of the Office in reissue applications
except to note in the application, in appropriate circumstances, that
such issues are no longer considered by the Office during its
examination of patent applications. Examination as to the lack of
deceptive intent requirement in reissue applications will continue but
without any investigation of fraud, inequitable conduct, or duty of
disclosure issues. Applicant's statement in the reissue oath or
declaration of lack of deceptive intent will be accepted as dispositive
except in special circumstances such as an admission or judicial
determination of fraud, inequitable conduct, or violation of the duty of
disclosure.

ADMISSION OR JUDICIAL DETERMINATION

An admission or judicial determination of fraud, inequitable conduct, or
violation of the duty of disclosure is a special circumstance, because
no investigation need be made.  Accordingly, after consulting with the
Group Special Program Examiner, a rejection should be made using the
appropriate one of form paragraphs 14.21.09 or 14.22 as reproduced
below.

Any admission of fraud, inequitable conduct or violation of the duty of
disclosure must be explicit, unequivocal, and not subject to other
interpretation. Where a rejection is made based upon such an admission
(see form paragraph 14.22 below) and applicant responds with any
reasonable interpretation of the facts that would not lead to a
conclusion of fraud, inequitable conduct or violation of the duty of
disclosure, the rejection should be withdrawn. Alternatively, if
applicant argues that the admission noted by the examiner was not in
fact an admission, the rejection should also be withdrawn.

Form Paragraph 14.21.09 should be used where the examiner becomes aware
of a judicial determination of fraud, inequitable conduct or violation
of the duty of disclosure on the part of the applicant independently of
the record of the case,   i.e.  , the examiner has external knowledge of
the judicial determination.

Form Paragraph 14.22 should be used where, in the application record,
there is (a) an explicit, unequivocal admission by applicant of fraud,
inequitable conduct or violation of the duty of disclosure which is not
subject to other interpretation, or (b) information as to a judicial
determination of fraud, inequitable conduct or violation of the duty of
disclosure on the part of the applicant. External information which the
examiner believes to be an admission by applicant should never be used
by the examiner, and such external information should never be made of
record in the application.

14.21.09 Rejection, 35 U.S.C. 251, No Error Without Deceptive Intention
- External Knowledge

Claims   [1] rejected under  35 U.S.C. 251 since error "without any
deceptive intention" has not been established.  In view of the judicial
determination in [2] of [3] on the part of applicant, a conclusion that
any error was "without deceptive intention" cannot be supported.   [4]

Examiner Note:

1. In bracket 1, list all claims in the reissue application.

2. In bracket 2, list the Court or administrative body which made the
judicial determination of fraud or inequitable conduct on the part of
applicant.

3. In bracket 3, insert --fraud--, --inequitable conduct-- and/or
--violation of duty of disclosure--.

4. In bracket 4, point out where in the opinion (or holding) of the
Court or administrative body the judicial determination of fraud,
inequitable conduct or violation of duty of disclosure is set forth. 
Page number, column number, and paragraph information should be given as
to the opinion (or holding) of the Court or administrative body.  The
examiner may add explanatory comments.

14.22 Rejection, 35 U.S.C. 251, No Error Without Deceptive
Intention-Evidence in the Application

Claims   [1] rejected under  35 U.S.C. 251 since error "without any
deceptive intention" has not been established. In view of Paper No.  
[2], filed [3], a conclusion that any error was "without deceptive
intention" cannot be supported.

[4]

Examiner Note:

1. In bracket 1, list all claims in the reissue application.

2. In bracket 2, insert the paper number providing an admission of
fraud, inequitable conduct or violation of duty of disclosure, or that
there was a judicial determination of same.

3. In bracket 3, insert the filing date of the paper.

4. In bracket 4, insert a statement that there has been an admission or
a judicial determination of fraud, inequitable conduct or violation of
duty of disclosure which provide circumstances why applicant's statement
in the oath or declaration of lack of deceptive intent should not be
taken as dispositive.  Any admission of fraud, inequitable conduct or
violation of duty of disclosure must be explicit, unequivocal, and not
subject to other interpretation.

See MPEP Section  2012 for additional discussion as to fraud,
inequitable conduct or violation of duty of disclosure in a reissue
application.

---SECTION---1449 Protest Filed in Reissue Where Patent Is in
Interference

If a protest is filed in a reissue application related to a patent
involved in a pending interference proceeding, the reissue application
should be referred to the Special Program Law Office (SPLO) before
considering the protest and acting on the application. 

The SPLO will check to see that:

(A) all parties to the interference are aware of the filing of the
reissue; and

(B) the Office does not allow claims in the reissue which are
unpatentable over the pending interference count(s), or found
unpatentable in the interference proceeding.

---SECTION---1449.01 Concurrent Office Proceedings

37 CFR 1.565(d) provides that if "a reissue application and a
reexamination proceeding on which an order pursuant to  37 CFR 1.525 has
been mailed are pending concurrently on a patent, a decision will
normally be made to merge the two proceedings or to stay one of the two
proceedings."  If an examiner becomes aware that a reissue application
and a reexamination proceeding are both pending for the same patent, he
or she should inform the Group Special Program Examiner immediately.

Where a reissue application and a reexamination proceeding are pending
concurrently on a patent, and an order granting reexamination has been
issued for the reexamination proceeding, the files for the reissue
application and the reexamination will be forwarded to the Office of the
Deputy Assistant Commissioner for Patent Policy and Projects for a
decision whether to merge the reissue and the reexamination, or stay one
of the two. See In re Onda, 229 USPQ 235 (Comm'r Pat. 1985). See also
MPEP Section  2285. 

If the original patent is involved in an interference, the examiner must
consult the administrative patent judge in charge of the interference
before taking any action on the reissue application. It is particularly
important that the reissue application not be granted without the
administrative patent judge's approval. See MPEP Section  2360.

---SECTION---1450 Restriction and Election of Species

The examiner may not require restriction in a reissue application (37
CFR 1.176 and MPEP Section  1440). Even where the original patent
contains claims to different inventions which the examiner considers
independent and distinct, and the reissue application claims the same
inventions, the examiner should not require restriction between them or
take any other action with respect to the question of plural inventions.
Restriction may only be requested by the applicant (37 CFR 1.177 and
MPEP Section  1451).  In situations where a reissue applicant presents
claims for the first time that are distinct and separate from the claims
of the patent, the examiner must follow the practice resulting from   In
re Amos, 953 F.2d 613, 618, 21 USPQ2d 1271, 1274 (Fed. Cir. 1991) as set
forth in MPEP Section  1412.01.

A reissue applicant's failure to timely file a divisional application is
not considered to be error causing a patent granted on elected claims to
be partially inoperative by reason of claiming less than the applicant
had a right to claim. Thus, such error is not correctable by reissue of
the original patent under  35 U.S.C. 251.  In re Watkinson, 900 F.2d
230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 550 F.2d 1277, 1280,
193 USPQ 145, 148 (CCPA 1977). See also In re Mead, 581 F. 2d 251, 198
USPQ 412 (CCPA 1978). Likewise, if the original patent specification
shows an intent not to claim the newly presented invention, that
invention cannot be added by reissue. In these situations, the reissue
claims should be rejected under  35 U.S.C. 251 for lack of defect in the
original patent and lack of error in obtaining the original patent. See
also MPEP Section  1412.01.

When the original patent contains claims to a plurality of species and
the reissue application contains claims to the same species, election of
species should not be required even though there is no allowable generic
claim. If the reissue application presents claims to species not claimed
in the original patent, election of species should not be required, but
the added claims may be rejected, where appropriate, for lack of defect
in the original patent and lack of error in obtaining the original
patent as discussed above.

---SECTION---1451 Divisional Reissue Applications; Continuation Reissue
Applications Where the Parent is Pending

35 U.S.C. 251 Reissue of defective patents.

                  +++    

The Commissioner may issue several reissued patents for distinct and
separate parts of the thing patented, upon demand of the applicant, and
upon payment of the required fee for a reissue for each of such reissued
patents.

                  +++    

37 CFR 1.177 Reissue in divisions.

The Commissioner may, in his or her discretion, cause several patents to
be issued for distinct and separate parts of the thing patented, upon
demand of the applicant, and upon payment of the required fee for each
division. Each division of a reissue constitutes the subject of a
separate specification descriptive of the part or parts of the invention
claimed in such division; and the drawing may represent only such part
or parts, subject to the provisions of Section Section  1.83 and 1.84.
On filing divisional reissue applications, they shall be referred to the
Commissioner. Unless otherwise ordered by the Commissioner upon petition
and payment of the fee set forth in Section  1.17(i), all the divisions
of a reissue will issue simultaneously; if there is any controversy as
to one division, the others will be withheld from issue until the
controversy is ended, unless the Commissioner orders otherwise.

Questions relating to the propriety of divisional reissue applications
and continuation reissue applications should be referred via the Group
Special Program Examiner to the Special Program Law Office.

DIVISIONAL REISSUE APPLICATIONS

As is pointed out in MPEP Section  1450, the examiner cannot require
restriction in a reissue application; only applicant can initiate a
division of the claims by demand in accordance with  37 CFR 1.177. Where
the original patent claims contain several independent and distinct
inventions, they can be divided into separate divisional reissues if the
applicant demands it.  37 CFR 1.177 sets forth a possibility for filing
divisional reissue applications.

When divisional reissue applications are filed, appropriate amendments
to the continuing data entries are to be made to the first sentence of
the specification, and to the file wrappers, for all such applications,
so that all "sibling" divisional reissue applications are specifically
identified and notice is provided of all the "siblings."

Situations yielding divisional reissues occur infrequently and usually
involve only two such files. It should be noted, however, that in rare
instances in the past, there have been more than two (and as many as
five) divisional reissues of a patent.

CONTINUATION REISSUE APPLICATIONS

A continuation of a reissue is by definition not "for distinct and
separate parts of the thing patented" as called for in the second
paragraph of  35 U.S.C. 251. The decision of In re Graff, 111 F.3d 874,
42 USPQ2d 1471 (Fed. Cir. 1997) interprets  35 U.S.C. 251 to permit
multiple reissue patents to issue even where the multiple reissue
patents are not for "distinct and separate parts of the thing patented."
The court stated:

Section 251[2] is plainly intended as enabling, not as limiting. 
Section 251[2] has the effect of assuring that a different burden is not
placed on divisional or continuation reissue applications, compared with
divisions and continuations of original applications, by codifying the
Supreme Court decision which recognized that more than one patent can
result from a reissue proceeding. Thus Section  251[2] places no greater
burden on Mr. Graff's continuation reissue application than upon a
continuation of an original application; Section  251[2] neither
overrides, enlarges, nor limits the statement in Section  251[3] that
the provisions of Title  5 apply to reissues. 111 F.3d at 877, 42 USPQ2d
at 1473.  Accordingly, a continuation of a reissue application will be
permitted to issue (despite the presence of the parent reissue) where
the continuation complies with the rules for reissue.

The parent and the continuation reissue applications should be examined
together if possible. An appropriate amendment to the continuing data
entries is to be made to the first sentence of the specification, and to
the file wrappers, for both the parent and the continuation reissue
applications, so that the parent-continuation relationship of the
reissue applications is specifically identified and notice is provided
of both reissue applications.

Where the parent reissue application issues prior to the examination of
the continuation, the claims of the continuation should be carefully
reviewed for double patenting over the claims of the parent. Where the
parent and the continuation reissue applications are examined together,
a provisional double patenting rejection should be made in both cases as
to any overlapping claims. See MPEP Section  804 -  Section  804.04 as
to double patenting rejections.

If the parent reissue application issues without any cross reference to
the continuation, amendment of the parent reissue patent to include a
cross-reference to the continuation should be required, which applicant
should do by requesting a Certificate of Correction.

---SECTION---1453 Amendments to Reissue Applications

37 CFR 1.121 Manner of making amendments.

                  +++    

(b)	  Amendments in reissue applications:  Amendments in reissue
applications are made by filing a paper, in compliance with Section 
1.52, directing that specified amendments be made.

(1)  	Specification other than the claims.  Amendments to the
specification, other than to the claims, may only be made as follows:

(i) Amendments must be made by submission of the entire text of a newly
added or rewritten paragraph(s) with markings pursuant to paragraph
(b)(1)(iii) of this section, except that an entire paragraph may be
deleted by a statement deleting the paragraph without presentation of
the text of the paragraph.

(ii) The precise point in the specification must be indicated where the
paragraph to be amended is located.

(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.

(2) Claims. Amendments to the claims may only be made as follows:

(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (b)(6) of this section and must include the
entire text of each claim which is being amended by the current
amendment and of each claim being added by the current amendment with
markings pursuant to paragraph (b)(2)(i)(C) of this section, except that
a patent claim or added claim should be cancelled by a statement
cancelling the patent claim or added claim without presentation of the
text of the patent claim or added claim.

(B) Patent claims must not be renumbered and the numbering of any claims
added to the patent must follow the number of the highest numbered
patent claim.

(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.  If a claim is amended pursuant
to paragraph (b)(2)(i)(A) of this section, a parenthetical expression
"amended," "twice amended," etc., should follow the original claim
number.

(ii) Each amendment submission must set forth the status (i.e., pending
or cancelled) as of the date of the amendment, of all patent claims and
of all added claims.

(iii) Each amendment when originally submitted must be accompanied by an
explanation of the support in the disclosure of the patent for the
amendment along with any additional comments on page(s) separate from
the page(s) containing the amendment.

(3) Drawings.

(i) Amendments to the original patent drawings are not permitted. Any
change to the patent drawings must be by way of a new sheet of drawings
with the amended figures identified as "amended" and with added figures
identified as "new" for each sheet changed submitted in compliance with
Section  1.84.

(ii) Where a change to the drawings is desired, a sketch in permanent
ink showing proposed changes in red, to become part of the record, must
be filed for approval by the examiner and should be in a separate paper.

(4) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.

(5) No reissue 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, pursuant to  35 U.S.C. 251.  No amendment
to the patent may introduce new matter or be made in an expired patent.

(6) All amendments must be made relative to the patent specification,
including the claims, and drawings, which is in effect as of the date of
filing of the reissue application.

                  +++    

The provisions of  37 CFR 1.121(b) apply to amendments in reissue
applications. The practice outlined in this section must be complied
with for any amendment submitted in a reissue application on or after
December 1, 1997.

Amendments submitted before December 1, 1997 (under the prior practice)
need not, and should not, be re-submitted under the current practice.
However, if an amendment   is in fact re-submitted, it will be entered,
unless non-entry is directed or approved by the SPE or SPRE.

THE SPECIFICATION

37 CFR 1.121(b)(1) relates to the manner of making amendments to the
specification other than the claims. It is not to be used for making
amendments to the claims or the drawings.

37 CFR 1.121 (b)(1)(i) requires that all amendments which include any
deletions or additions must be made by submission of a copy of each
rewritten paragraph with markings (brackets and underlining), with the
exception that an entire paragraph of specification text may be deleted
by a statement deleting the paragraph   without presentation of the text
of the paragraph.  37 CFR 1.121 (b)(1)(i) also requires that all
paragraphs which are added to the specification be submitted as
completely underlined. In  37 CFR 1.121(b)(1)(ii), it is required that
the precise point where each amendment is made must be indicated by
applicant.  37 CFR 1.121(b)(1)(iii) defines the markings set forth in
(b)(1)(ii) as being brackets for deletion and underlining for addition.

All bracketing and underlining is made in comparison to the original
patent, not in comparison to the prior amendment.

Where a change is made in one sentence, paragraph or page, and the
change increases or decreases the size of the sentence, paragraph or
page, this will have no effect on the body of the reissue specification.
This is because all insertions are made as blocked additions of
paragraphs, which are not physically inserted within the specification
papers. Rather, each blocked paragraph is assigned a letter and number,
and a caret written in the specification papers indicates where the
blocked paragraph is to be incorporated. In view of this, a reissue
applicant need not be concerned with page formatting considerations when
presenting amendments to the Office.

THE CLAIMS

37 CFR 1.121(b)(2) relates to the manner of making amendments to the
claims in reissue applications. It is not to be used for making
amendments to the remainder of the specification or to the drawings.

The provisions of  37 CFR 1.121(b)(2)(i)(A) require:

(A) For each claim that is being amended by the amendment being
submitted (the current amendment), the entire text of the claim must be
presented with markings;

(B) For each new claim added to the reissue   by the amendment being
submitted (the current amendment), the entire text of the added claim
must be presented;

(C) A patent claim should be canceled by a direction to cancel that
claim; there is no need to present the patent claim surrounded by
brackets; and

(D) A new claim (previously added in the reissue) should be canceled by
a direction to cancel that claim.

37 CFR 1.121(b)(2)(i)(B) states that original patent claims must not be
renumbered. A patent claim retains its number even if it is cancelled in
the reissue proceeding, and the numbering of any added claims must begin
after the last original patent claim.  37 CFR 1.121(b)(2)(i)(C)
identifies the type of marking required by reference to  37 CFR
1.121(b)(2)(i)(A), i.e.  , underlining for added material and single
brackets for material deleted.

In accordance with  37 CFR 1.121(b)(2)(ii), each amendment submitted
must set forth the status of all patent claims and all added claims as
of the date of the submission. The status to be set forth is whether the
claim is pending or canceled. The failure to submit the claim status
will generally result in a notification to applicant that the amendment
prior to final rejection is not completely responsive (see  37 CFR
1.135(c)). Such an amendment after final rejection will not be entered.

In accordance with  37 CFR 1.121(b)(2)(iii), each claim amendment must
be accompanied by an explanation of the support in the disclosure of the
patent for the amendment (i.e., support for the changes made in the
claim(s), including support for any insertions and deletions). The
failure to submit an explanation will generally result in a notification
to applicant that the amendment prior to final rejection is not
completely responsive (see  37 CFR 1.135(c)). Such an amendment after
final rejection will not be entered. Finally,  37 CFR 1.121(b)(5)
provides that:

(A) No reissue patent shall be granted enlarging the scope of the
claims, unless applied for within two years from the grant of the
original patent,

(B) no amendment may introduce new matter, and

(C) no amendment may be made in an expired patent.

See MPEP Section  1412.03 for further discussion as to the time
limitation on enlarging the scope of the patent claims in a reissue
application.

THE DRAWINGS

37 CFR 1.121(b)(3) relates to the manner of making amendments to the
drawings.

In  37 CFR 1.121(b)(3), it is clarified that amendments to the original
patent drawings are not permitted, and that any change must be by way of
a new sheet of drawings with the amended figures being identified as
"amended" and with added figures identified as "new" for each sheet that
has changed. See also MPEP Section  1413 for a further discussion as to
the drawings.

Form paragraph 14.20.01 may be used to advise applicant of the proper
manner of making amendments in a reissue application.

14.20.01 Amendments To Reissue-37 CFR 1.121(b)

Applicant is notified that any subsequent amendment to the specification
and/or claims must comply with  37 CFR 1.121(b).

Examiner Note:

This form paragraph may be used in the first Office action to advise
applicant of the proper manner of making amendments.

Form paragraph 14.21.01 may be used to notify applicant that proposed
amendments filed prior to final rejection in the reissue application do
not comply with  37 CFR 1.121(b).

14.21.01 Improper Amendment To Reissue - 37 CFR 1.121(b)

The amendment filed [1] proposes amendments to [2] that do not comply
with  37 CFR 1.121(b), which sets forth the manner of making amendments
in reissue applications. A supplemental paper correctly amending the
reissue application is required.

A shortened statutory period for reply to this letter is set to expire
ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of
this letter.

Examiner Note:

This paragraph may be used for any  37 CFR 1.121(b) informality as to an
amendment submitted in a reissue application prior to final rejection.
After final rejection, applicant should be informed that the amendment
will not be entered in an Advisory Office action.

Note that if an informal amendment is submitted after final rejection,
form paragraph 14.21.01 should not be used. Rather, an advisory Office
action should be issued using Form PTO-303 indicating that the amendment
was not entered because it does not comply with  37 CFR 1.121(b), which
sets forth the manner of making amendments in reissue applications.

ALL CHANGES ARE MADE VIS-A-VIS THE PATENT TO BE REISSUED

When a reissue patent is printed, all underlined matter is printed in
italics and all brackets are printed as inserted in the application, in
order to show exactly which additions and deletions have been made to
the patent being reissued. Therefore, all underlining and bracketing in
the reissue application should be made relative to the text of the
patent, as follows. In accordance with  37 CFR 1.121(b)(6), all
amendments in the reissue application must be made relative to (i.e.  ,
vis-a-vis) the patent specification in effect as of the date of the
filing of the reissue application. The patent specification includes the
claims and drawings. If there was a prior change to the patent (made via
a prior concluded reexamination certificate, reissue of the patent,
certificate of correction, etc.), the first amendment of the subject
reissue application must be made relative to the patent specification as
changed by the prior proceeding or other mechanism for changing the
patent. All amendments subsequent to the first amendment must also be
made relative to the patent specification in effect as of the date of
the filing of the reissue application, and not relative to the prior
amendment.

The Subject Patent Already Has Underlining or Bracketing

If the original (or previously changed) patent includes a formula or
equation already having underlining or bracketing therein as part of the
formula or equation, any amendment of such formula or equation should be
made by bracketing the entire formula and rewriting and totally
underlining the amended formula in the re-presented paragraph of the
specification or rewritten claim in which the changed formula or
equation appears.  Amendments of segments of a formula or equation
should not be made. If the original patent includes bracketing and
underlining from an earlier reexamination or reissue, double brackets
and double underlining should be used in the subject reissue application
to identify and distinguish the present changes being made.  The subject
reissue, when printed, would include double brackets (indicating
deletions made in the subject reissue) and boldface type (indicating
material added in the subject reissue).

EXAMPLES OF PROPER AMENDMENTS

A substantial number of problems arise in the Office because of improper
submission of amendments in reissue applications. The following examples
are provided to assist in preparation of proper amendments to reissue
applications.

Original Patent Description or Patent Claim Amended

Example (1)

If it is desired to change the specification at column 4 line 23, to
replace "is" with --are--, submit a copy of the entire paragraph of
specification of the patent being amended with underlining and
bracketing, and point out where the paragraph is located, e.g.,

Replace the paragraph beginning at column 4, line 23 with the following:

Scanning [is] are controlled by clocks which are, in turn, controlled
from the display tube line synchronization. The signals resulting from
scanning the scope of the character are delivered in parallel, then
converted into serial mode through a shift register wherein the shift
signal frequency is controlled by a clock that is, in turn, controlled
from the display tube line synchronization.

Example (2)

For changes to the claims, one must submit a copy of the entire patent
claim with the amendments shown by underlining and bracketing, e.g.,

Amend claim 6 as follows:

Claim 6 (Amended). The apparatus of claim [5] 1 wherein the [first]
second piezoelectric element is parallel to the [second] third
piezoelectric element. If the dependency of any original patent claim is
to be changed by amendment, it is proper to make that original patent
claim dependent upon a later filed higher numbered claim.

Cancellation of Claim(s)

Example (3)

To cancel an original patent claim, in writing, direct cancellation of
the patent claim, e.g.,

Cancel claim 6.

Example (4)

To cancel a new claim (previously added in the reissue), in writing,
direct cancellation of the new claim, e.g.,

Cancel claim 15.

Presentation of New Claims

Example (5)

Each new claim (i.e., a claim not found in the patent, that is newly
presented in the reissue application) should be presented with
underlining throughout the claim,   e.g.,

Add claim 7 as follows:

Claim 7. The apparatus of claim 5 further comprising electrodes
attaching to said opposite faces of the first and second piezoelectric
elements. Even though original claims may have been canceled, the
numbering of the original claims does not change. Accordingly, any added
claims are numbered beginning with the number next higher than the
number of claims in the original patent. If new claims have been added
to the reissue application which are later canceled prior to issuance of
the reissue patent, the examiner will renumber any remaining new claims
in numerical order to follow the number of claims in the original
patent.

Amendment of New Claims

An amendment of a "new claim" (i.e., a claim not found in the patent,
that was previously presented in the reissue application) must be done
by presenting the amended "new claim" containing the amendatory
material, and completely underlining the claim. The presentation cannot
contain any bracketing or other indication of what was in the previous
version of the claim. This is because all changes in the reissue are
made vis-a-vis the original patent, and not in comparison to the prior
amendment. Although the presentation of the amended claim does not
contain any indication of what is changed from the previous version of
the claim, applicant must point out what is changed, in the "Remarks"
portion of the amendment. Also, as per  37 CFR 1.121(b)(2)(C)(iii), each
change made in the claim must be accompanied by an explanation of the
support in the disclosure of the patent for the change.

Amendment of Original Patent Claims More Than Once

The following illustrates proper claim amendment of original patent
claims in reissue applications:

  A. Patent claim.

Claim 1. A cutting means having a handle portion and a blade portion.

  B. Proper first amendment format.

Claim 1 (Amended). A [cutting means] knife having a bone handle portion
and a notched blade portion.

  C. Proper second amendment format.

Claim 1 (Twice Amended). A [cutting means] knife having a handle portion
and a serrated blade portion. Note that the second amendment must
include the changes previously presented in the first amendment, i.e.,
[cutting means] knife, as well as the new changes presented in the
second amendment, i.e., serrated.

The word bone was presented in the first amendment and is now to be
deleted in the second amendment. The word "bone" is NOT to be shown in
brackets in the second amendment. Rather, the word "bone" is simply
omitted from the claim, since "bone" never appeared in the patent. An
explanation of the deletion should appear in the remarks.

The word notched which was presented in the first amendment is replaced
by the word serrated in the second amendment. The word notched is being
deleted in the second amendment and did not appear in the patent;
accordingly, "notched" is not shown in any form in the claim. The word
serrated is being added in the second amendment, and accordingly
"serrated" is added to the claim and is underlined.

In the second amendment, the deletions of "notched" and "bone" are not
changes from the original patent claim text and therefore are not shown
in brackets in the second amendment. In both the first and the second
amendments, the entire claim is presented only with the changes from the
original patent text.

---SECTION---1454 Appeal Brief

The requirements for an appeal brief are set forth in  37 CFR 1.192 and
MPEP Section  1206, and they apply to a reissue application in the same
manner that they apply to a non-reissue application. There is, however,
a difference in practice as to presentation of the copy of the claims in
the appeal brief for a reissue application. The claims on appeal
presented in an appeal brief for a reissue application should include
all underlining and bracketing necessary to reflect the changes made to
the patent claims during the prosecution of the reissue application. In
addition, any new claims added in the reissue application should be
completely underlined.

---SECTION---1455 Allowance and Issue

 "BLUE SLIP"

In all reissue applications prepared for issue, the patent number of the
original patent which is being reissued should be placed in the box
provided therefor below the box for the applicant's name on the blue
Issue Classification Slip (form PTO-270). Otherwise, the Issue
Classification Slip is prepared in the same manner as for a non-reissue
application.

For 09/ series applications, the patent number of the original patent
which is being reissued should be placed on the face of the file wrapper
above the box "PREPARED AND APPROVED FOR ISSUE" just after "(Exr.
Initials)" in the line reading "SURRENDER OF ORIGINAL
PATENT________(Exr. Initials)."

CHANGES TO THE ORIGINAL PATENT

The specifications of reissue patents will be printed in such a manner
as to show the changes over the original patent text by enclosing any
material omitted by the reissue in heavy brackets [ ] and printing
material added by the reissue in italics.  37 CFR 1.173 (see MPEP
Section  1411) requires the specification of a reissue application to be
presented in a specified form, specifically designed to facilitate this
different manner of printing, as well as for other reasons.

The printed reissue patent specification will carry the following
heading, which will be added by the Publishing Division of the Office of
Patent Publication:

"Matter enclosed in heavy brackets [ ] appears in the original patent
but forms no part of this reissue specification; matter printed in
italics indicates the additions made by reissue."

The examiners should see that the specification is in proper form for
printing. Examiners should carefully check the entry of all amendments
to ensure that the changes directed by applicant will be accurately
printed in any reissue patent that may ultimately issue. Matter
appearing in the original patent which is omitted by reissue should be
enclosed in heavy brackets, while matter added by reissue should be
underlined.

Any material added by amendment in the reissue application which is
later canceled should be crossed through, and not bracketed. Material
cancelled from the original patent should be enclosed in brackets, and
not lined through.

All the claims of the original patent should appear in the reissue
patent, with canceled patent claims being enclosed in brackets.

CLAIM NUMBERING

No renumbering of the original patent claims is permitted, even if the
dependency of a dependent patent claim is changed by reissue so that it
is to be dependent on a subsequent higher numbered claim.

When a dependent claim in a reissue application depends upon a claim
which has been canceled, and the dependent claim is not thereafter made
dependent upon a pending claim, such a dependent claim must be rewritten
in independent form.

New claims added during the prosecution of the reissue application
should follow the number of the highest numbered patent claim and should
be completely underlined to indicate they are to be printed in italics.
Often, as a result of the prosecution and examination, some new claims
are canceled while other new claims remain. When the reissue is allowed,
any claims remaining which are additional to the patent claims (i.e.,
claims added via the reissue) should be renumbered in sequence starting
with the number next higher than the number of claims in the original
patent. Therefore, the number of claims allowed will not necessarily
correspond to the number of the last claim in the reissue application,
as allowed.

CLAIM DESIGNATED FOR PRINTING

At least one claim of an allowable reissue application must be
designated for printing in the   Official Gazette. Whenever at least one
claim has been amended or added in the reissue, the claim (claims)
designated must be (or include) a claim which has been changed or added
by the reissue. A canceled claim is not to be designated as the claim
for the Official Gazette.

If there is no change in the claims of the allowable reissue application
(i.e., they are the same as the claims of the original patent) or, if
the only change in the claims is the cancellation of claims, then the
most representative pending allowed claim is designated for printing in
the Official Gazette.

PROVIDING PROPER FORMAT

Where a reissue application has not been prepared in the above-indicated
manner, the examiner may request from the applicant a clean copy of the
reissue specification prepared in the indicated form. However, if the
deletions from the original patent are small, the reissue application
can be prepared for issue by putting the bracketed inserts at the
appropriate places and suitably numbering the added claims.

PARENT APPLICATION DATA

All parent application data on the front face of the original patent
file wrapper should be placed on the front face of the reissue file
wrapper, if it is still proper.

It sometimes happens that the reissue is a continuation of another
reissue application, and there is also original-patent parent
application data. The examiner should ensure that the parent application
data on the original patent is properly combined with the parent
application data of the reissue, in the text of the specification and on
the front face of the reissue file wrapper. The combined statement as to
parent application data should be checked carefully for proper
bracketing and underlining.

REFERENCES CITED AND PRINTED

The list of references to be printed in the reissue patent should
include both the references cited during the original prosecution as
well as the references cited during the prosecution of the reissue
application. A patent cannot be reissued solely for the purpose of
adding citations of additional prior art.

TRANSFER OF DRAWINGS

Where there are no formal drawings in the reissue application, the
examiner should carefully inspect the reissue file for the presence of a
request by applicant to transfer the drawings from the patent to the
reissue application. If the request is present, the drawings should be
transferred at the time of allowance, with the appropriate transfer
notation being made on the patent file and the reissue file. See MPEP
Section  1413.

EXAMINER'S AMENDMENT AND SUPPLEMENTAL DECLARATION

When it is necessary to amend the reissue application in order to place
the application in condition for allowance, the examiner may:

(A) request that applicant provide the amendments (e.g., by facsimile
transmission or by hand-carry); or

(B) make the amendments, with the applicant's approval, by a formal
examiner's amendment. If the changes are made by a formal examiner's
amendment, the entire paragraph(s) or claim(s) being amended must be
presented in rewritten form for any deletions or additions (other than
the cancellation of a claim or deletion of a paragraph, where
instructions to delete the entire paragraph or claim would be
sufficient). See MPEP Section  1453. An examiner's amendment must comply
with  37 CFR 1.121(b) in the same manner as an amendment submitted by
applicant must comply with  37 CFR 1.121(b). Even where the amendments
to the claims or specification are minor in nature, the examiner's
amendment must present the entire claim(s) or the entire paragraph(s)
being amended in rewritten form for any deletions or additions.

If it is necessary to amend a claim or the specification in order to
correct an "error" under  35 U.S.C. 251 and thereby place the
application in condition for allowance, then a supplemental oath or
declaration will be required. See MPEP Section  1444. The examiner
should telephone applicant and request the supplemental oath or
declaration, which must be filed before the application can be counted
as an allowance.

---SECTION---1456 Reissue Review

All reissue applications are monitored and reviewed in the Examining
Groups by the Office of the Special Program Examiner (includes SPRE,
paralegal or other technical support who might be assigned as backup) at
several stages during the prosecution.  In order to ensure that SPREs
are aware of the reissue applications in their groups, a pair of
terminal-specific PALM flags have been created which must be set by the
SPRE before certain PALM transactions can be completed.  First, when a
new reissue application enters the Examining Group, a PALM flag must be
set at a SPRE PALM terminal before a docketing transaction will be
accepted.  By having to set this first flag, the SPRE is made aware of
the assignment of the reissue application to the Group and can take
steps, as may be appropriate, to instruct the examiner on
reissue-specific procedures before the examination process begins, as
well as throughout the period that the examiner is handling the reissue
application.  Further, a second PALM flag must be set at a SPRE PALM
terminal before a Notice of Allowance can be generated or the PALM
transaction for an issue revision can be entered, thereby ensuring that
the SPRE is made aware of when the reissue application is being allowed
so that the SPRE may be able to conduct a final review of the reissue
application, if appropriate.

After leaving the Examining Groups, all reissue applications go through
a screening process which is currently performed in the Special Program
Law Office. The screening process which includes review of the reissue
oath or declaration for compliance with  37 CFR 1.175, review of the
presentation and entry of reissue amendments for compliance with  37 CFR
1.121(b), and review of other matters to ensure adherence to current
reissue practices. A patentability review is made in a sample of reissue
applications by the Office of Patent Quality Review. The screening
process and the patentability review are appropriate vehicles for
correcting errors, identifying problem areas and recognizing trends,
providing information on the uniformity of practice, and providing
feedback to the Examining Groups.

---SECTION---1460 Effect of Reissue

35 U.S.C. 252 Effect of reissue.

The surrender of the original patent shall take effect upon the issue of
the reissued patent, and every reissued patent shall have the same
effect and operation in law, on the trial of actions for causes
thereafter arising, as if the same had been originally granted in such
amended form, but in so far as the claims of the original and reissued
patents are identical, such surrender shall not affect any action then
pending nor abate any cause of action then existing, and the reissued
patent, to the extent that its claims are identical with the original
patent, shall constitute a continuation thereof and have effect
continuously from the date of the original patent.

A reissued patent shall not abridge or affect the right of any person or
that person`s successors in business who, prior to the grant of a
reissue, made, purchased, offered to sell, or used within the United
States, or imported into the United States, anything patented by the
reissued patent, to continue the use of, to offer to sell, or to sell to
others to be used, offered for sale, or sold, the specific thing so
made, purchased, offered for sale, used, or imported unless the making,
using, offering for sale, or selling of such thing infringes a valid
claim of the reissued patent which was in the original patent. The court
before which such matter is in question may provide for the continued
manufacture, use, offer for sale, or sale of the thing made, purchased,
offered for sale, used, or imported as specified, or for the
manufacture, use, offer for sale, or sale in the United States of which
substantial preparation was made before the grant of the reissue, and
the court may also provide for the continued practice of any process
patented by the reissue that is practiced, or for the practice of which
substantial preparation was made, before the grant of the reissue, to
the extent and under such terms as the court deems equitable for the
protection of investments made or business commenced before the grant of
the reissue.

The effect of the reissue of a patent is stated in  35 U.S.C. 252. With
respect to the Office treatment of the reissued patent, the reissued
patent will be viewed as if the original patent had been originally
granted in the amended form provided by the reissue.

---SECTION---1480 Certificates of Correction - Office Mistake

35 U.S.C. 254 Certificate of correction of Patent and Trademark Office
mistake.

Whenever a mistake in a patent, incurred through the fault of the Patent
and Trademark Office, is clearly disclosed by the records of the Office,
the Commissioner may issue a certificate of correction stating the fact
and nature of such mistake, under seal, without charge, to be recorded
in the records of patents. A printed copy thereof shall be attached to
each printed copy of the patent, and such certificate shall be
considered as part of the original patent. Every such patent, together
with such certificate, shall have the same effect and operation in law
on the trial of actions for causes thereafter arising as if the same had
been originally issued in such corrected form. The Commissioner may
issue a corrected patent without charge in lieu of and with like effect
as a certificate of correction.

37 CFR 1.322 Certificate of correction of Office mistake.

(a) A certificate of correction under  35 U.S.C. 254 may be issued at
the request of the patentee or the patentee's assignee. Such certificate
will not be issued at the request or suggestion of anyone not owning an
interest in the patent, nor on motion of the Office, without first
notifying the patentee (including any assignee of record) and affording
the patentee an opportunity to be heard. When the request relates to a
patent involved in an interference, the request shall comply with the
requirements of this section and shall be accompanied by a motion under
Section  1.635.

(b) If the nature of the mistake on the part of the Office is such that
a certificate of correction is deemed inappropriate in form, the
Commissioner may issue a corrected patent in lieu thereof as a more
appropriate form for certificate of correction, without expense to the
patentee.

Mistakes incurred through the fault of the Office are the subject of
Certificates of Correction under  37 CFR 1.322. If such mistakes are of
such a nature that the meaning intended is obvious from the context, the
Office may decline to issue a certificate and merely place the
correspondence in the patented file, where it serves to call attention
to the matter in case any question as to it arises.

Letters which merely call attention to errors in patents, with a request
that the letter be made of record in the patented file, will not be
acknowledged.

In order to expedite all proper requests, a Certificate of Correction
should be requested only for errors of consequence. Instead of a request
for a Certificate of Correction, letters making errors of record should
be utilized whenever possible.

Each issue of the Official Gazette (patents section) numerically lists
all United States patents having Certificates of Correction. The list
appears under the heading "Certificates of Correction for the week of
(date)."

---SECTION---1481 Applicant's Mistake

35 U.S.C. 255 Certificate of correction of applicant's mistake.

Whenever a mistake of a clerical or typographical nature, or of minor
character, which was not the fault of the Patent and Trademark Office,
appears in a patent and a showing has been made that such mistake
occurred in good faith, the Commissioner may, upon payment of the
required fee, issue a certificate of correction, if the correction does
not involve such changes in the patent as would constitute new matter or
would require re-examination. Such patent, together with the
certificate, shall have the same effect and operation in law on the
trial of actions for causes thereafter arising as if the same had been
originally issued in such corrected form.

37 CFR 1.323 Certificate of correction of applicant's mistake.

Whenever a mistake of a clerical or typographical nature or of minor
character which was not the fault of the Office, appears in a patent and
a showing is made that such mistake occurred in good faith, the
Commissioner may, upon payment of the fee set forth in Section  1.20(a),
issue a certificate, if the correction does not involve such changes in
the patent as would constitute new matter or would require
reexamination. A request for a certificate of correction of a patent
involved in an interference shall comply with the requirements of this
section and shall be accompanied by a motion under Section  1.635.

37 CFR 1.323 relates to the issuance of Certificates of Correction for
the correction of errors which were not the fault of the Office. 
Mistakes in a patent which are not correctable by Certificate of
Correction may be correctable via filing a reissue application (see MPEP
Section  1401 -  Section  1460).

In re Arnott, 19 USPQ2d 1049, 1052 (Comm'r Pat. 1991) specifies the
criteria of  35 U.S.C. 255 (for a certificate of correction) as follows:

Two separate statutory requirements must be met before a certificate of
correction for an applicant's mistake may issue. The first statutory
requirement concerns the nature, i.e., type, of the mistake for which a
correction is sought.  The mistake must be:

   (1)	of a clerical nature,

   (2)	of a typographical nature, or

   (3)	a mistake of minor character.

   The second statutory requirement concerns the nature of the proposed
correction.  The correction must not involve changes which would:

   (1)	constitute new matter or

   (2)	require reexamination. If the above is not satisfied, then
reissue must be used. Usually, any mistake affecting claim scope must be
corrected by reissue.

A mistake is not considered to be of the "minor" character required for
the issuance of a Certificate of Correction if the requested change
would materially affect the scope or meaning of the patent. See also
MPEP Section  1412.04 as to correction of inventorship via certificate
of correction or reissue.

The fee for providing a correction of applicant's mistake, other than
inventorship, is set forth in  37 CFR 1.20(a). The fee for correction of
inventorship is set forth in  37 CFR 1.20(b).

CORRECTION OF ASSIGNEES' NAMES

The Issue Fee Transmittal Form portion (PTOL-85B) of the Notice of
Allowance provides a space (item 3) for assignment data which should be
completed in order to comply with  37 CFR 3.81. Unless an assignee's
name and address are identified in the appropriate space for specifying
the assignee, (i.e., item 3 of the Issue Fee Transmittal Form PTOL-85B),
the patent will issue to the applicant. Assignment data printed on the
patent will be based solely on the information so supplied.

A request for a certificate of correction under  37 CFR 1.323 arising
from incomplete or erroneous assignee's name furnished in item 3 of
PTOL-85B will not be granted unless a petition under  37 CFR 1.183 has
been granted. Any such petition under  37 CFR 1.183 should be directed
to the Office of Petitions and should include:

(A) the petition fee required by  37 CFR 1.17(h);

(B) a request that  37 CFR 3.81(a) be waived to permit the correct name
of the assignee to be provided after issuance of the patent;

(C) a statement that the failure to include the correct assignee name on
the PTOL-85B was inadvertent; and

(D) a copy of the Notice of Recordation of Assignment Document.

CORRECTION OF INVENTORS' NAMES

35 U.S.C. 256 Correction of named inventor.

Whenever through error a person is named in an issued patent as the
inventor, or through error an inventor is not named in an issued patent
and such error arose without any deceptive intention on his part, the
Commissioner may, on application of all the parties and assignees, with
proof of the facts and such other requirements as may be imposed, issue
a certificate correcting such error.

The error of omitting inventors or naming persons who are not inventors
shall not invalidate the patent in which such error occurred if it can
be corrected as provided in this section. The court before which such
matter is called in question may order correction of the patent on
notice and hearing of all parties concerned and the Commissioner shall
issue a certificate accordingly.

In requesting the Office to effectuate a court order correcting
inventorship in a patent pursuant to  35 U.S.C. 256, a copy of the court
order and a certificate of correction under  37 CFR 1.323 should be
submitted to the Certificates of Corrections Branch.

37 CFR 1.324 Correction of inventorship in patent.

(a) Whenever through error a person is named in an issued patent as the
inventor, or through error an inventor is not named in an issued patent
and such error arose without any deceptive intention on his or her part,
the Commissioner may, on petition, or on order of a court before which
such matter is called in question, issue a certificate naming only the
actual inventor or inventors.  A petition to correct inventorship of a
patent involved in an interference must comply with the requirements of
this section and must be accompanied by a motion under Section  1.634.

(b) Any petition pursuant to paragraph (a) of this section must be
accompanied by:

(1) A statement from each person who is being added as an inventor and
from each person who is being deleted as an inventor that the
inventorship error occurred without any deceptive intention on his or
her part;

(2) A statement from the current named inventors who have not submitted
a statement under paragraph (b)(1) of this section either agreeing to
the change of inventorship or stating that they have no disagreement in
regard to the requested change;

(3) A statement from all assignees of the parties submitting a statement
under paragraphs (b)(1) and (b)(2) of this section agreeing to the
change of inventorship in the patent, which statement must comply with
the requirements of Section  3.73(b) of this chapter; and

(4) The fee set forth in Section  1.20(b).

The petition to correct inventorship under  37 CFR 1.324 must include
the statements and fee required by  37 CFR 1.324(b).

Under  37 CFR 1.324(b)(1), a statement is required from each person who
is being added as an inventor, and each person who is being deleted as
an inventor, that the inventorship error occurred without any deceptive
intention on their part. In order to satisfy this, a statement such as
the following is sufficient:

"The inventorship error of failing to include John Smith as an inventor
of the patent occurred without any deceptive intention on the part of
the applicant." Nothing more is required. The examiner will determine
only whether the statement contains the required language; the examiner
will not make any comment as to whether or not it appears that there was
in fact deceptive intention (see MPEP Section  2022.05).

Under  37 CFR 1.324(b)(2), all other inventors who did not submit a
statement under  37 CFR 1.324(b)(1) must submit a statement either
agreeing to the change of inventorship, or stating that they have no
disagreement with regard to the requested change. These "other"
inventors need not make a statement as to whether the inventorship error
occurred without deceptive intention.

Under  37 CFR 1.324(b)(3), a statement is required from the assignee(s)
of the patent agreeing to the change of inventorship in the patent.  The
statement must comply with the requirements of  37 CFR 3.73(b). See MPEP
Section  324 as to compliance with the requirements of  37 CFR 3.73(b).

While a petition under  37 CFR 1.48(a) is appropriate to request
correction of inventorship in a nonprovisional application, a petition
under  37 CFR 1.324 is the appropriate vehicle to correct inventorship
in a patent. If a petition under  37 CFR 1.48(a) is inadvertently filed
in a patent, the petition may be treated as a petition under  37 CFR
1.324, and if it is grantable, form paragraph 10.14 set forth below
should be used.

Unlike correction of inventorship in a nonprovisional application under 
37 CFR 1.48(a), where the requirement for a statement by each originally
named inventor may be waived pursuant to  37 CFR 1.183, any correction
of inventorship in a patent under  37 CFR 1.324 requires petition of all
the parties, i.e., originally named inventors and assignees, in
accordance with statute (35 U.S.C. 256) and thus the requirement cannot
be waived. Correction of inventorship requests under  37 CFR 1.324
should be directed to the Supervisory Patent Examiner whose unit handles
the subject matter of the patent. Form paragraphs 10.13 through 10.18
may be used.

10.13 Petition Under 37 CFR 1.324, Granted

Paper No. [1]

In re Patent No. [2]	:

Issue Date: [3]	:  DECISION   

Appl. No.: [4]	:  GRANTING

Filed: [5]	: PETITION

For:   [6]	: 37 CFR 1.324

This is a decision on the petition filed   [7] to correct inventorship
under  37 CFR 1.324.

The petition is granted.

The patented file is being forwarded to Certificate of Corrections
Branch for issuance of a certificate naming only the actual inventor or
inventors.

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Patent Examining Group [10]

[11]

Examiner Note:

1. Petitions to correct inventorship of an issued patent are decided by
the Supervisory Patent Examiner, as set forth in the Commissioner's
memorandum dated June 2, 1989.

2. In bracket 11, insert the correspondence address of record.

3. This form paragraph is printed with the PTO letterhead.

4. Prepare Certificate using form paragraph 10.15.

10.14 Treatment of 37 CFR 1.48 Petition Under 37 CFR 1.324, Granted

Paper No. [1]

In re Patent No. [2]	:

Issue Date: [3]	:   DECISION

Appl. No.: [4]	:   GRANTING  

Filed: [5]	: PETITION

For:   [6]	:  37 CFR  1.324

This is a decision on the petition under  37 CFR 1.48, filed   [7].  In
view of the fact that the patent has already issued, the petition has
been treated as a petition to correct inventorship under  37 CFR 1.324.

The petition is granted.

The patented file is being forwarded to Certificate of Corrections
Branch for issuance of a certificate naming only the actual inventor or
inventors.

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Patent Examining Group [10]

[11]

Examiner Note:

1. Petitions to correct inventorship of an issued patent are decided by
the Supervisory Patent Examiner, as set forth in the Commissioner's
memorandum dated June 2, 1989.

2. This form paragraph is printed with the PTO letterhead.

3. Prepare Certificate using form paragraph 10.15.

4. In bracket 11, insert the correspondence address of record.

10.15 Memorandum - Certificate of Correction

DATE:    [1]

TO:  Certificate of Corrections Branch

FROM: [2], SPE, Art Unit   [3]

SUBJECT: Request for Certificate of Correction

Please Issue a Certificate of Correction in U. S. Letters Patent No. [4]
as specified on the attached Certificate.

______________________

[5], SPE

Art Unit [6]

UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE

Patent No. [7]

Patented: [8]

On petition requesting issuance of a certificate for correction of
inventorship pursuant to  35 U.S.C. 256, it has been found that the
above identified patent, through error and without deceptive intent,
improperly sets forth the inventorship.  Accordingly, it is hereby
certified that the correct inventorship of this patent is:

[9]

_________________________

[10], SPE

Art Unit [11]

Examiner Note:

1. In bracket 9, insert the full name and residence (City, State) of
each 	actual inventor.

2. This is an internal memo, not to be mailed to applicant, which
accompanies the patented file to Certificates of Corrections Branch as
noted in form paragraphs 10.13 and 10.14.

3. In brackets 5 and 10, insert name of SPE; in brackets 6 and 11 the
Art Unit and sign above each line.

4. Two separate pages of PTO letterhead will be printed when using this
form paragraph.

10.16 Petition Under 37 CFR 1.324, Dismissed

Paper No. [1]

In re Patent No. [2]	:

Issue Date: [3]	:   DECISION

Appl. No.: [4]	: DISMISSING

Filed: [5]	: PETITION

For:   [6]	: 37 CFR 1.324

This is a decision on the petition filed   [7] to correct inventorship
under  37 CFR 1.324.

The petition is dismissed.

A petition to correct inventorship as provided by  37 CFR 1.324 requires
(1) a statement from each person who is being added as an inventor and
from each person who is being deleted as an inventor that the
inventorship error occurred without any deceptive intention on their
part, (2) a statement from the current named inventors who have not
submitted a statement as per "(1)" either agreeing to the change of
inventorship or stating that they have no disagreement in regard to the
requested change, (3) a statement from all assignees of the parties
submitting a statement under "(1)" and "(2)" agreeing to the change of
inventorship in the patent; such statement must comply with the
requirements of  37 CFR 3.73(b); and (4) the fee set forth in  37 CFR
1.20(b).  This petition lacks item(s) [8].

_______________________

[9]

Supervisory Patent Examiner,

Art Unit [10],

Patent Examining Group [11]

[12]

Examiner Note:

1. If each of the four specified items has been submitted but one or
more is insufficient, the petition should be denied.  See paragraph
10.17.  However, if the above noted deficiency can be cured by the
submission of a renewed petition, a dismissal would be appropriate.

2. If the petition includes a request for suspension of the rules (37
CFR 1.183) of one or more provisions of  37 CFR 1.324 that are required
by the statute (35 U.S.C. 256), form paragraph 10.18 should follow this
paragraph.

3. In bracket 8, pluralize as necessary and insert the item number(s)
which are missing.

4. In bracket 12, insert correspondence address of record.

5. This form paragraph is printed with the PTO letterhead.

10.17 Petition Under 37 CFR 1.324, Denied

Paper No. [1]

In re Patent No. [2]:

Issue Date: [3]:  DECISION DENYING PETITION

Appl. No.: [4]:  37 CFR  1.324

Filed: [5]:

For:   [6]:

This is a decision on the petition filed   [7] to correct inventorship
under  37 CFR 1.324.

The petition is denied.

[8]

_______________________ 

[9]

Supervisory Patent Examiner,

Art Unit [10],

Patent Examining Group [11]

[12]

Examiner Note:

1. In bracket 8, a full explanation of the deficiency must be provided.

2. If the petition lacks one or more of the required parts set forth in 
37 CFR 1.324, it should be dismissed using paragraph 10.14 or 7.99,
rather than being denied.

3. In bracket 12, insert correspondence address of record.

4. This form paragraph is printed with the PTO letterhead.

10.18 Waiver of Requirements of 37 CFR 1.324 Under 37 CFR 1.183,
Dismissed

Suspension of the rules under  37 CFR 1.183 may be granted for any
requirement of the regulations which is not a requirement of the
statutes.  In this instance,  35 U.S.C. 256 requires   [1]. 
Accordingly, the petition under  37 CFR 1.183 is dismissed as moot.

Examiner Note:

1. This paragraph should follow paragraph 10.16 whenever the petition
requests waiver of one or more of the provisions of  37 CFR 1.324 that
are also requirements of  35 U.S.C. 256.

2. If the petition requests waiver of requirements of  37 CFR 1.324 that
are not specific requirements of the statute (i.e., the fee or the oath
or declaration by all inventors), the application must be forwarded to a
petitions examiner in the Office of the Deputy Assistant Commissioner
for Patent Policy and Projects for decision.

CORRECTION TO PERFECT CLAIM FOR 35 U.S.C. 119 (a)-(d) BENEFITS

See MPEP Section  201.06 for a discussion of when  35 U.S.C. 119 (a)-(d)
benefits can be perfected by certificate of correction.

CORRECTION AS TO 35 U.S.C. 120 AND 35 U.S.C. 119(e) BENEFITS

37 CFR 1.78 Claiming benefit of earlier filing date and cross-references
to other applications.

(a)(1) A nonprovisional application may claim an invention disclosed in
one or more prior filed copending nonprovisional applications or
copending international applications designating the United States of
America.  In order for a nonprovisional application to claim the benefit
of a prior filed copending nonprovisional application or copending
international application designating the United States of America, each
prior application must name as an inventor at least one inventor named
in the later filed nonprovisional application and disclose the named
inventor's invention claimed in at least one claim of the later filed
nonprovisional application in the manner provided by the first paragraph
of  35 U.S.C. 112.  In addition, each prior application must be:

(i) An international application entitled to a filing date in accordance
with PCT Article 11 and designating the United States of America; or

(ii) Complete as set forth in Section  1.51(b); or

(iii) Entitled to a filing date as set forth in Section  1.53(b) or
Section  1.53(d) and include the basic filing fee set forth in Section 
1.16; or

(iv) Entitled to a filing date as set forth in Section  1.53(b) and have
paid therein the processing and retention fee set forth in Section 
1.21(l) within the time period set forth in Section  1.53(f).

(2) Except for a continued prosecution application filed under Section 
1.53(d), any nonprovisional application claiming the benefit of one or
more prior filed copending nonprovisional applications or international
applications designating the United States of America must contain or be
amended to contain in the first sentence of the specification following
the title a reference to each such prior application, identifying it by
application number (consisting of the series code and serial number) or
international application number and international filing date and
indicating the relationship of the applications. The request for a
continued prosecution application under Section  1.53(d) is the specific
reference required by  35 U.S.C. 120 to the prior application.  The
identification of an application by application number under this
section is the specific reference required by  35 U.S.C. 120 to every
application assigned that application number. Cross-references to other
related applications may be made when appropriate (see Section 
1.14(a)).

(3) A nonprovisional application other than for a design patent may
claim an invention disclosed in one or more prior filed copending
provisional applications.  Since a provisional application can be
pending for no more than twelve months, the last day of pendency may
occur on a Saturday, Sunday, or Federal holiday within the District of
Columbia which for copendency would require the nonprovisional
application to be filed on or prior to the Saturday, Sunday, or Federal
holiday.  In order for a nonprovisional application to claim the benefit
of one or more prior filed copending provisional applications, each
prior provisional application must name as an inventor at least one
inventor named in the later filed nonprovisional application and
disclose the named inventor's invention claimed in at least one claim of
the later filed nonprovisional application in the manner provided by the
first paragraph of  35 U.S.C. 112.  In addition, each prior provisional
application must be:

(i) Complete as set forth in Section  1.51(c); or

(ii) Entitled to a filing date as set forth in Section  1.53(c) and
include the basic filing fee set forth in Section  1.16(k).

(4) Any nonprovisional application claiming the benefit of one or more
prior filed copending provisional applications must contain or be
amended to contain in the first sentence of the specification following
the title a reference to each such prior provisional application,
identifying it as a provisional application, and including the
provisional application number (consisting of series code and serial
number).

                  +++    

Under certain conditions as specified below, a certificate of correction
can be used, with respect to  35 U.S.C. 120 and 119(e) priority, to
correct:

(A) the failure to make reference to a prior copending application
pursuant to  37 CFR 1.78(a)(2) and (a)(4); or

(B) an incorrect reference to a prior copending application pursuant to 
37 CFR 1.78(a)(2) and (a)(4).

For all situations other than where priority is based upon  35 U.S.C.
365(c), the conditions are as follows:

(A) for  35 U.S.C. 120 priority, all requirements set forth in  37 CFR
1.78(a)(1) must have been met in the application which became the patent
to be corrected;

(B) for  35 U.S.C. 119(e) priority, all requirements set forth in  37
CFR 1.78(a)(3) must have been met in the application which became the
patent to be corrected;

(C) the prior copending application to be added via the certificate of
correction must be identified elsewhere (other than the first sentence
of the specification following the title) in the application papers; and

(D) it must be clear from the record of the patent and the parent
application(s) that priority is appropriate.

Where  35 U.S.C. 120 and 365(c) priority based on an international
application is to be asserted or corrected in a patent via a certificate
of correction, the following conditions must be satisfied:

(A) all requirements set forth in  37 CFR 1.78(a)(1) must have been met
in the application which became the patent to be corrected;

(B) the prior copending application to be added via the certificate of
correction must be identified in the application papers other than in
the first sentence of the specification following the title and other
than in a claim under  35 U.S.C. 119(a)-(d)

(C) it must be clear from the record of the patent and the parent
application(s) that priority is appropriate; and

(D) the patentee must submit with the request for the certificate copies
of documentation showing designation of states and any other information
needed to make it clear from the record that the  35 U.S.C. 120 priority
is appropriate. See MPEP Section  201.13(b) as to the requirements for 
35 U.S.C. 120 priority based on an international application.

If all the above-stated conditions are satisfied, a certificate of
correction can be used to amend the patent to make reference to a prior
copending application, or to correct an incorrect reference to the prior
copending application. Note In re Schuurs, 218 USPQ 443 (Comm'r Pat.
1983) which suggests that a certificate of correction is an appropriate
remedy for correcting, in a patent, reference to a prior copending
application. Also, note In re Lambrech, 202 USPQ 620 (Comm'r Pat. 1976),
citing In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975).

If any of the above-stated conditions is not satisfied, the filing of a
reissue application (see MPEP Section  1401 -  Section  1460) would be
appropriate to pursue the desired correction of the patent.

---SECTION---1485 Handling of Request for Certificates of Correction

A request for a certificate of correction should be addressed to the
attention of the Certificate of Correction Branch, Assistant
Commissioner for Patents, Washington, DC 20231. Requests for
certificates of correction will be forwarded to the Certificate of
Correction Branch of the Office of Patent Publication, where they will
be listed in a permanent record book.

If the patent is involved in an interference, a certificate of
correction under  37 CFR 1.324 will not be issued unless a corresponding
motion under  37 CFR 1.634 has been granted by the administrative patent
judge. See MPEP Section  2334. Otherwise, determination as to whether an
error has been made, the responsibility for the error, if any, and
whether the error is of such a nature as to justify the issuance of a
certificate of correction will be made by the Certificate of Correction
Branch. If a report is necessary in making such determination, the case
will be forwarded to the appropriate group with a request that the
report be furnished. If no certificate is to issue, the party making the
request is so notified and the request, report, if any, and copy of the
communication to the person making the request are placed in the file
and entered thereon under "Contents" by the Certificate of Correction
Branch. The case is then returned to the patented files. If a
certificate is to issue, it will be prepared and forwarded to the person
making the request by the Office of Patent Publication. In that case,
the request, the report, if any, and a copy of the letter transmitting
the certificate of correction to the person making the request will be
placed in the file and entered thereon under "Contents".

Applicants, or their attorneys or agents, are urged to submit the text
of the correction on a special Certificate of Correction form, PTO-1050,
which can serve as the camera copy for use in direct offset printing of
the certificate of correction. Form PTO/SB/44 may also be used.  Both
parts of form PTO-1050 must accompany the request since the second part
will be placed in the application file for internal use.

A perforated space at the bottom of form PTO-1050 has been provided for
the patentee's current mailing address, and for ordering any desired
additional copies of the printed certificate. The fee for each
additional copy ordered is set forth in  37 CFR 1.19(a)(1). The fee
should accompany the request.

Where only a part of a request can be approved, or where the Office
discovers and includes additional corrections, the appropriate
alterations are made on the form PTO-1050 by the Office. The patentee is
notified of the changes on the Notification of Approval-in-part form
PTOL-404. The certificate is issued approximately 6 weeks thereafter.

Form PTO-1050 (or PTO/SB/44) should be used exclusively regardless of
the length or complexity of the subject matter. Intricate chemical
formulas or page of specification or drawings may be reproduced and
mounted on a blank copy of PTO-1050. Failure to use the form has
frequently delayed issuance since the text must be retyped by the Office
onto a PTO-1050.

The exact page and line number where the errors occur in the application
file should be identified on the request. However, on form PTO-1050,
only the column and line number in the printed patent should be used.

The patent grant should be retained by the patentee. The Office does not
attach the Certificate of Correction to patentee's copy of the patent.
The patent grant will be returned to the patentee if submitted.

Below is a sample form illustrating a variety of corrections and the
suggested manner of setting out the format. Particular attention is
directed to:

(A) Identification of the exact point of error by reference to column
and line number of the printed patent or to claim number and line where
a claim is involved.

(B) Conservation of space on the form by typing single space, beginning
two lines down from the printed message.

(C) Starting the correction to each separate column as a sentence, and
using semicolons to separate corrections within said column, where
possible.

(D) Two-inch space left blank at bottom of the last sheet for signature
of attesting officer.

(E) Use of quotation marks to enclose the exact subject matter to be
deleted or corrected; use of double hyphens (-- --) to enclose subject
matter to be added, except for formulas.

(F) Where a formula is involved, setting out only that portion thereof
which is to be corrected or, if necessary, pasting a photocopy onto form
PTO-1050.

The examiner's comments are requested on form PTO-306 where, under  37
CFR 1.323, there is a question involving change in subject matter.

UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE OF CORRECTION

    Patent No. - - - - -		Dated April 1, 1969

James W. Worth

It is certified that error appears in the above-identified patent and
that said Letters Patent is hereby corrected as shown below:

In the drawings, Sheet 3, Fig. 3, the reference numer al 225 should be
applied to the plate element attached to the support member 207. Column
7, lines 45 to 49, the left-hand formula should appear as follows:

[GRAPHIC]

Formula XXXVII, that portion of the formula reading "-CH2CH-" should
read - -CHCH- -.  Column 2, line 68 and column 3, lines 3, 8 and 13, for
the claim reference numeral "2", each occurrence, should read -1-.
Column 10, line 16, cancel beginning with "12.  A sensor device" to and
including  "tive strips."  in column 11, line 8, and insert the
following claim:

   12.	A control circuit of the character set forth in claim 1 and for
an automobile having a convertible t p, and including; means for moving
said top between raised and lowered retracted position; and control
means responsive to said sensor relay for energizing the top moving
means for moving said top from retract ed position to raised position.

---SECTION---1490 Disclaimers

35 U.S.C. 253 Disclaimer.

Whenever, without any deceptive intention, a claim of a patent is
invalid the remaining claims shall not thereby be rendered invalid. A
patentee, whether of the whole or any sectional interest therein, may,
on payment of the fee required by law, make disclaimer of any complete
claim, stating therein the extent of his interest in such patent. Such
disclaimer shall be in writing, and recorded in the Patent and Trademark
Office; and it shall thereafter be considered as part of the original
patent to the extent of the interest possessed by the disclaimant and by
those claiming under him.

In like manner any patentee or applicant may disclaim or dedicate to the
public the entire term, or any terminal part of the term, of the patent
granted or to be granted.

37 CFR 1.321 Statutory disclaimers, including terminal disclaimers.

(a) A patentee owning the whole or any sectional interest in a patent
may disclaim any complete claim or claims in a patent. In like manner
any patentee may disclaim or dedicate to the public the entire term, or
any terminal part of the term, of the patent granted. Such disclaimer is
binding upon the grantee and its successors or assigns. A notice of the
disclaimer is published in the Official Gazette and attached to the
printed copies of the specification.  The disclaimer, to be recorded in
the Patent and Trademark Office, must:

(1) be signed by the patentee, or an attorney or agent of record;

(2) identify the patent and complete claim or claims, or term being
disclaimed. A disclaimer which is not a disclaimer of a complete claim
or claims, or term, will be refused recordation;

(3) state the present extent of patentee's ownership interest in the
patent; and

(4) be accompanied by the fee set forth in Section  1.20(d).

(b) An applicant or assignee may disclaim or dedicate to the public the
entire term, or any terminal part of the term, of a patent to be
granted. Such terminal disclaimer is binding upon the grantee and its
successors or assigns. The terminal disclaimer, to be recorded in the
Patent and Trademark Office, must:

(1) be signed:

(i) by the applicant, or

(ii) if there is an assignee of record of an undivided part interest, by
the applicant and such assignee, or

(iii) if there is an assignee of record of the entire interest, by such
assignee, or

(iv) by an attorney or agent of record;

(2) specify the portion of the term of the patent being disclaimed;

(3) state the present extent of applicant's or assignee's ownership
interest in the patent to be granted; and

(4) be accompanied by the fee set forth in Section  1.20(d).

(c) A terminal disclaimer, when filed to obviate a judicially created
double patenting rejection in a patent application or in a reexamination
proceeding, must:

(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of
this section;

(2) Be signed in accordance with paragraph (b)(1) of this section if
filed in a patent application or in accordance with paragraph (a)(1) of
this section if filed in a reexamination proceeding; and

(3) Include a provision that any patent granted on that application or
any patent subject to the reexamination proceeding shall be enforceable
only for and during such period that said patent is commonly owned with
the application or patent which formed the basis for the rejection.

A disclaimer is a statement filed by an owner (in part or in entirety)
of a patent or of a patent to be granted (i.e., an application), in
which said owner relinquishes certain legal rights to the patent. There
are two types of disclaimers:  a statutory disclaimer and a terminal
disclaimer. The owner of a patent or an application is the original
inventor(s) or the assignee of the original inventor(s). The patent or
application is assigned by one assignment or by multiple assignments
which establish a chain of title from the inventor(s) to the
assignee(s). The owner of the patent or application can sign a
disclaimer, and a person empowered to sign the disclaimer can also sign
it. Per  37 CFR 1.321(b)(1)(iv), an attorney or agent of record is
permitted to sign the disclaimer. For a disclaimer to be accepted, it
must be signed by the proper party as follows:

(A) A disclaimer filed in an application must be signed by either

(1) the applicant where the application has not been assigned,

(2) the applicant and the assignee where each owns a part interest in
the application,

(3) the assignee where assignee owns the entire interest in the
application, or

(4) an attorney or agent of record.

(B) A disclaimer filed in a patent or a reexamination proceeding must be
signed by either

(1) the patentee (the assignee, the inventor(s) if the patent is not
assigned, or the assignee and the inventors if the patent is
assigned-in-part), or

(2) an attorney or agent of record.

(C) Where the assignee (of an application or of a patent being
reexamined or to be reissued) signs the disclaimer, there is a
requirement to comply with  37 CFR 3.73(b) in order to satisfy  37 CFR
1.321, unless an attorney or agent of record signs the disclaimer. In
order to comply with  37 CFR 3.73(b), the assignee's ownership interest
must be established by:

(1) filing in the application or patent evidence of a chain of title
from the original owner to the assignee, or

(2) specifying in the record of the application or patent where such
evidence is recorded in the Office (e.g., reel and frame number, etc.).

The submission with respect to  37 CFR 3.73(b) to establish ownership
must be signed by a party authorized to act on behalf of the assignee.
See also MPEP Section  324 as to compliance with  37 CFR 3.73(b). A copy
of the "Certificate Under  37 CFR 3.73 (b)," which is reproduced in MPEP
Section  324, may be sent by the examiner to applicant to provide an
acceptable way to comply with the requirements of  37 CFR 3.73 (b).

(D) Where the attorney or agent of record signs the disclaimer, there is
no need to comply with  37 CFR 3.73(b).

(E) The signature on the disclaimer need not be an original signature.
Pursuant to  37 CFR 1.4(d)(2), the submitted disclaimer can be a copy,
such as a photocopy or facsimile transmission of an original disclaimer.

---SECTION---STATUTORY DISCLAIMERS

Under  37 CFR 1.321(a) the owner of a patent may disclaim a complete
claim or claims of his patent. This may result from a lawsuit or because
he has reason to believe that the claim or claims are too broad or
otherwise invalid. If the patent is involved in an interference, see
MPEP Section  2362.

---SECTION---TERMINAL DISCLAIMERS

37 CFR 1.321(a) also provides for the filing by an applicant or patentee
of a terminal disclaimer which disclaims or dedicates to the public the
entire term or any portion of the term of a patent or patent to be
granted.

37 CFR 1.321(c) specifically provides for the filing of a terminal
disclaimer in an application or a reexamination proceeding for the
purpose of overcoming a judicially created double patenting rejection. 
See MPEP Section  804.02.

---SECTION---PROCESSING

The Certificates of Corrections Branch is responsible for the handling
of all statutory disclaimers filed under the first paragraph of  35
U.S.C. 253, whether the case is pending or patented, and all terminal
disclaimers (filed under the second paragraph of  35 U.S.C. 253) except
for those filed in an application pending in an Examining Group. This
involves:

(A) Determining compliance with  35 U.S.C. 253 and  37 CFR 1.321 and
3.73;

(B) Notifying applicant or patentee when the disclaimer is informal and
thus not acceptable;

(C) Recording the disclaimers; and

(D) Providing the disclaimer data for printing.

---SECTION---TERMINAL DISCLAIMER IN PENDING APPLICATION PRACTICE

Where a terminal disclaimer is filed in an application pending in an
Examining Group, it will be processed by the paralegal of the Office of
the Special Program Examiner of the Examining Group having
responsibility for the application. The paralegal will:

(A) Determine compliance with  35 U.S.C. 253 and  37 CFR 1.321 and 3.73;

(B) Notify the examiner having charge of the application whether the
terminal disclaimer is acceptable or not;

(C) Where the terminal disclaimer is not acceptable, indicate the nature
of the informalities so that the examiner can inform applicant in the
next Office action;

(D) Where the terminal disclaimer is acceptable, record the terminal
disclaimer; and

(E) Where the terminal disclaimer is acceptable, provide the appropriate
terminal disclaimer data for printing.

The paralegal will identify a terminal disclaimer as being present in an
application by:

(A) Attaching a green label to the file wrapper;

(B) Stamping a notice on the file of the term which has been disclaimed;

(C) Endorsing the paper containing the terminal disclaimer submission on
the "Contents" flap of the application file; and

(D) Entering the terminal disclaimer into the PALM system records, for
the application.

The Group's paralegal completes a Terminal Disclaimer Informal Memo to
notify the examiner of the nature of any informalities in the terminal
disclaimer. The examiner should notify the applicant of the
informalities in the next Office action, or by interview with applicant
if such will expedite prosecution of the application. Further, the
examiner should initial and date the Terminal Disclaimer Informal Memo
and return it to the paralegal to indicate that the examiner has
appropriately notified applicant about the terminal disclaimer, and so
that the Terminal Disclaimer Informal Memo may be discarded.

PTO Form Terminal Disclaimer Informal Memo[GRAPHIC]

Since the claims of pending applications are subject to cancellation,
amendment, or renumbering, a terminal disclaimer directed to a
particular claim or claims will not be accepted; the disclaimer must be
of a terminal portion of the term of the entire patent to be granted.
The statute does not provide for conditional disclaimers and
accordingly, a proposed disclaimer which is made contingent on the
allowance of certain claims cannot be accepted. The disclaimer should
identify the disclaimant and his or her interest in the application and
should specify the date when the disclaimer is to become effective.

A terminal disclaimer filed to obviate a double patenting rejection is
effective only with respect to the application identified in the
disclaimer unless by its terms it extends to continuing applications.
For example, a terminal disclaimer filed in a parent application
normally has no effect on a continuing application claiming filing date
benefits of the parent application under  35 U.S.C. 120. A terminal
disclaimer filed in a parent application to obviate a double patenting
rejection does, however, carry over to a continued prosecution
application (CPA) filed under  37 CFR 1.53(d). The terminal disclaimer
filed in the parent application carries over because the CPA retains the
same application number as the parent application, i.e., the application
number to which the previously filed terminal disclaimer is directed. If
applicant does not want the terminal disclaimer to carry over to the
CPA, applicant must file a petition under  37 CFR 1.182 along with the
required petition fee, requesting the terminal disclaimer filed in the
parent application not be carried over to the CPA; see below
"Withdrawing a Terminal Disclaimer" (paragraph "A. Before Issuance of
Patent"). If two (or more) pending applications are filed, in each of
which a rejection of one claimed invention over the other on the ground
of obviousness-type double patenting is proper, the rejection will be
made in each application. An appropriate terminal disclaimer must be
filed in each application. This is because a terminal disclaimer filed
to obviate a double patenting rejection is effective only with respect
to the application identified in the disclaimer. Moreover, the filing of
an appropriate terminal disclaimer in each application will prevent a
potential improper timewise extension of patent rights in the last
application to be issued.

The following form paragraphs may be used to inform the applicant (or
patent owner) of the status of a submitted terminal disclaimer.

14.23 Terminal Disclaimer Proper

The terminal disclaimer filed on [1] disclaiming the terminal portion of
any patent granted on this application which would extend beyond the
expiration date of   [2] has been reviewed and is accepted.  The
terminal disclaimer has been recorded.

Examiner Note:

1. In bracket 1, insert the date the terminal disclaimer was filed.

2. In bracket 2, list the Patent Number and/or Application Number
(including series code and serial no.) preceded by the phrase --any
patent granted on Application Number--.

3. If an assignment is submitted to support the terminal disclaimer,
also use form paragraph 14.34 to suggest that the assignment be
separately submitted for recording in the Office.

4. See MPEP Section  1490 for discussion of requirements for a proper
terminal disclaimer.

5. Use form paragraph 14.23.01 for reexamination proceedings.	

6. For improper terminal disclaimers, see the form paragraphs which
follow.

14.23.01 Terminal Disclaimer Proper (Reexamination Only)

The terminal disclaimer filed on [1] disclaiming the terminal portion of
the patent being reexamined which would extend beyond the expiration
date of   [2] has been reviewed and is accepted.  The terminal
disclaimer has been recorded.

Examiner Note:

1. In bracket 1, insert the date the terminal disclaimer was filed.

2. In bracket 2, list the Patent Number and/or Application Number
(including series code and serial no.) preceded by the phrase --any
patent granted on Application Number--.

3. If an assignment is submitted to support the terminal disclaimer,
also use 14.34 to suggest that the assignment be separately submitted
for recording in the Office.

4. See MPEP Section  1490 for discussion of requirements for a proper
terminal disclaimer.

5. For improper terminal disclaimers, see the form paragraphs which
follow.

14.24 Terminal Disclaimer Not Proper - Introductory Paragraph

The terminal disclaimer filed on   [1] disclaiming the terminal portion
of any patent granted on this application which would extend beyond the
expiration date of [2] has been reviewed and is NOT accepted.

Examiner Note:

1. In bracket 1, insert the date the terminal disclaimer was filed.

2. In bracket 2, list the Patent Number and/or Application Number
(including series code and serial no.) preceded by the phrase --any
patent granted on Application Number--.

3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST
follow this form paragraph to indicate why the terminal disclaimer is
not accepted.

4. Form paragraph 14.33 includes the full text of rule  37 CFR 3.73 and
may be included in the Office action when deemed appropriate.

5. Form paragraph 14.35 may be used to inform applicant that an
additional disclaimer fee will not be required for the submission of a
replacement or supplemental terminal disclaimer.

6. Do not use in reexamination proceedings, use form paragraph 14.25
instead.

14.25 Terminal Disclaimer Not Proper - Introductory Paragraph
(Reexamination Only)

The terminal disclaimer filed on   [1] disclaiming the terminal portion
of the patent being reexamined which would extend beyond the expiration
date of [2] has been reviewed and is NOT accepted.

Examiner Note:

1. In bracket 1, insert the date the terminal disclaimer was filed.

2. In bracket 2, list the Patent Number and/or the Application Number
(including series code and serial no.) preceded by the phrase --any
patent granted on Application Number--.

3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST
follow this form paragraph to indicate why the terminal disclaimer is
not accepted.

4. Form paragraph 14.33 includes the full text of rule  37 CFR 3.73 and
may be included in the Office action when deemed appropriate.

5. Form paragraph 14.35 may be used to inform applicant that an
additional disclaimer fee will not be required for the submission of a
replacement or supplemental terminal disclaimer.

14.26 Does Not Comply With 37 CFR 1.321(b) and/or (c) "Sub-Heading" Only

The terminal disclaimer does not comply with  37 CFR 1.321(b) and/or (c)
because:

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 and followed by one or more of the appropriate form paragraphs
14.26.01 to 14.27.03.

14.26.01 Extent of Interest Not Stated

The person who has signed the disclaimer has not stated the extent of
his/her interest, or the business entity's interest, in the
application/patent.  See  37 CFR  1.321(b)(3).

Examiner Note:

This form paragraph MUST be preceded by form paragraphs 14.24 or 14.25
AND 14.26.

14.26.02 Directed to Particular Claim(s)

It is directed to a particular claim or claims, which is not acceptable,
since "the disclaimer must be of a terminal portion of the term of the
entire [patent or] patent to be granted." See MPEP Section  1490.

Examiner Note:

This form paragraph MUST be preceded by form paragraphs 14.24 or 14.25
AND 14.26.

14.26.03 Not Signed

The terminal disclaimer was not signed.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 AND 14.26.

14.26.04 Application/Patent Not Identified

The application/patent being disclaimed has not been identified.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 AND 14.26.

14.26.05 Application/Patent Improperly Identified

The application/patent being disclaimed has been improperly identified
since the number used to identify the [1] being disclaimed is incorrect. 
The correct number is [2].

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 AND 14.26.

2. In bracket 1, insert --application-- or --patent--.

3. In bracket 2, insert the correct Application Number (including series
code and serial no.) or the correct Patent Number being disclaimed.

4. A terminal disclaimer is acceptable if it includes the correct Patent
Number or the correct Application Number or the serial number together
with the proper filing date or the proper series code.

14.26.06 Not Signed by All Owners

It was not signed by all owners and, therefore, supplemental terminal
disclaimers are required from the remaining owners.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 AND 14.26.

14.26.07 No Disclaimer Fee Submitted

The disclaimer fee of $  [1] in accordance with  37 CFR 1.20(d) has not
been submitted, nor is there any authorization in the application file
to charge a specified Deposit Account.

Examiner Note:

1. In bracket 1, insert the fee for a disclaimer.

2. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 AND 14.26.  If the disclaimer fee was paid for a terminal
disclaimer which was not accepted, applicant does not have to pay
another disclaimer fee when submitting a replacement or supplemental
terminal disclaimer, and this paragraph should not be used.

14.27.01 Lacks Clause of Enforceable Only During Period of Common
Ownership

It does not include a recitation that any patent granted shall be
enforceable only for and during such period that said patent is commonly
owned with the application(s) or patent(s) which formed the basis for
the double patenting rejection.  See  37 CFR 1.321(c)(3).

Examiner Note:

This form paragraph MUST be preceded by form paragraphs 14.24 or 14.25
AND 14.26.

14.27.02 Fails To Disclaim Terminal Portion of Any Patent Granted On
Subject Application

It fails to disclaim the terminal portion of any patent granted on the
subject application.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 AND 14.26.

2. Use this form paragraph when the period disclaimed is not the correct
period or when no period is specified at all.

3. When using this form paragraph, give an example of proper terminal
disclaimer language using form paragraph 14.27.04 following this or the
series of statements concerning the defective terminal disclaimer.

14.27.03 Fails To Disclaim Terminal Portion of Subject Patent

It fails to disclaim the terminal portion of the subject patent.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 AND 14.26.

2. Use this paragraph in a reissue application or reexamination
proceeding when the period disclaimed is not the correct period or when
no period is specified at all.

3. When using this form paragraph, give an example of proper terminal
disclaimer language using form paragraph 14.27.05 (for reissue) or form
paragraph 14.27.06 (for reexamination proceeding) following this or the
series of statements concerning the defective terminal disclaimer.

14.27.04 Examples of Acceptable Terminal Disclaimer Language in Patent
To Be Granted

Examples of acceptable language for making the disclaimer of the
terminal portion of any patent granted on the subject application
follow:

I. If a Provisional Obviousness-Type Double Patenting Rejection Over A
Pending Application was made, use:

Petitioner hereby disclaims, except as provided below, the terminal part
of any patent granted on the instant application, which would extend
beyond the expiration date of any patent granted on Application No.
___/__________, filed on _________, as shortened by any terminal
disclaimer.  Petitioner hereby agrees that any patent so granted on the
instant application shall be enforceable only for and during such period
that it and any patent granted on the above-listed application are
commonly owned.  This agreement runs with any patent granted on the
instant application and is binding upon the grantee, its successors, or
assigns.

II. If an Obviousness-Type Double Patenting Rejection Over A Prior
Patent was made, use:

Petitioner hereby disclaims, except as provided below, the terminal part
of any patent granted on the instant application, which would extend
beyond the expiration date of Patent No. ____________, as presently
shortened by any terminal disclaimer.  Petitioner hereby agrees that any
patent so granted on the instant application shall be enforceable only
for and during such period that it and the above listed patent are
commonly owned.  This agreement runs with any patent granted on the
instant application and is binding upon the grantee, its successors, or
assigns.

14.27.05 Examples of Acceptable Terminal Disclaimer Language in An
Existing Patent

Examples of acceptable language for making the disclaimer of the
terminal portion of the subject patent follow:

I. If a Provisional Obviousness-Type Double Patenting Rejection Over A
Pending Application was made, use:

Petitioner hereby disclaims, except as provided below, the terminal part
of any patent granted on the instant application, which would extend
beyond the expiration date of any patent granted on Application No.
____/_________, filed on ________, as shortened by any terminal
disclaimer.  Petitioner hereby agrees that any patent so granted on the
instant application shall be enforceable only for and during such period
that it and any patent granted on the above-listed application are
commonly owned.  This agreement runs with any patent granted on the
instant application and is binding upon the grantee, its successors, or
assigns.

II.	If an Obviousness-Type Double Patenting Rejection Over A Prior
Patent was made, use:

Petitioner hereby disclaims, except as provided below, the terminal part
of any patent granted on the instant application, which would extend
beyond the expiration date of Patent No. _________, as presently
shortened by any terminal disclaimer.  Petitioner hereby agrees that any
patent so granted on the instant application shall be enforceable only
for and during such period that it and the above listed patent are
commonly owned.  This agreement runs with any patent granted on the
instant application and is binding upon the grantee, its successors, or
assigns.

14.27.06 Examples of Acceptable Terminal Disclaimer Language in Patent
(Reexamination Situation)

Examples of acceptable language for making the disclaimer of the
terminal portion of the patent being reexamined follow:

I.	If a Provisional Obviousness-Type Double Patenting Rejection Over A
Pending Application was made, use:

Petitioner hereby disclaims, except as provided below, the terminal part
of the patent being reexamined, which would extend beyond the expiration
date of any patent granted on Application No. ___/________, filed on
_______, as shortened by any terminal disclaimer.  Petitioner hereby
agrees that the patent being reexamined shall be enforceable only for
and during such period that it and any patent granted on the
above-listed application are commonly owned.  This agreement runs with
any reexamination certificate issued on the instant patent and is
binding upon the grantee, its successors, or assigns.

II.	If an Obviousness-Type Double Patenting Rejection Over A Prior
Patent was made, use:

Petitioner hereby disclaims, except as provided below, the terminal part
of the patent being reexamined, which would extend beyond the expiration
date of Patent No. __________, as presently shortened by any terminal
disclaimer.  Petitioner hereby agrees that the patent for which a
reexamination certificate is issued as a result of this proceeding shall
be enforceable only for and during such period that it and the above
listed patent are commonly owned.  This agreement runs with any
reexamination certificate issued on the instant patent and is binding
upon the grantee, its successors, or assigns.

14.28 Failure To State Capacity To Sign

The person who signed the terminal disclaimer has failed to state
his/her capacity to sign for the corporation or other business entity,
and he/she has not been established as being authorized to act on behalf
of the assignee.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 OR
14.25 and 14.26.

14.29 Not Recognized as Officer of Assignee - "Sub-Heading" Only

The person who signed the terminal disclaimer is not recognized as an
officer of the assignee, and he/she has not been established as being
authorized to act on behalf of the assignee.  See MPEP Section  324.

Examiner Note:

1. This form paragraph is to be used when the person signing the
terminal disclaimer is not an authorized officer as defined in MPEP
Section  324.

2. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 and followed by form paragraphs 14.29.01 and/or 14.29.02 when
appropriate.  An attorney or agent of record is always authorized to
sign the terminal disclaimer, even though there is no indication that he
or she is an officer of the assignee.

3. Use form paragraph 14.29.02 to explain how an official, other than a
recognized officer, may properly execute a terminal disclaimer. 

14.29.01 Attorney/Agent Not of Record

An attorney or agent, not of record, is not authorized to sign a
terminal disclaimer in the capacity as an attorney or agent acting in a
representative capacity as provided by  37 CFR 1.34 (a).  See  37 CFR
1.321(b) and/or (c).

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 AND 14.29.

2. An attorney or agent, however, may sign a terminal disclaimer
provided he/she is an attorney or agent of record or is established as
an appropriate official of the assignee.  To suggest to the attorney or
agent, not of record,  how he/she may establish status as an appropriate
official of the assignee to execute a terminal disclaimer, use form
paragraph 14.29.02.

14.29.02 Criteria To Accept Terminal Disclaimer When Signed by a
Non-Recognized Officer

It would be acceptable for a person, other than a recognized officer, to
execute a terminal disclaimer, provided the record for the application
includes a statement that the person is empowered to sign terminal
disclaimers and/or act on behalf of the organization.

	Accordingly, a new terminal disclaimer which includes the above
empowerment statement will be considered to be executed by an
appropriate official of the assignee.  A separately filed paper
referencing the previously filed terminal disclaimer and containing a
proper empowerment statement would also be acceptable.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25 AND 14.29.

2. When form paragraph 14.29 is used to indicate that a terminal
disclaimer is denied because it was not signed by a recognized officer
nor by an attorney or agent of record, this form paragraph should be
used to point out one way to correct the problem.

3. While an indication of the person's title is desirable, its inclusion
is not mandatory when this option is employed.

4. A sample terminal disclaimer should be sent with the Office action.

14.30 No Evidence of Chain of Title to Assignee - Application

The assignee has not established its ownership interest in the
application, in order to support the terminal disclaimer. There is no
submission in the record establishing the ownership interest by either
(a) providing documentary evidence of a chain of title from the original
inventor(s) to the assignee, or (b) specifying (by reel and frame
number) where such documentary evidence is recorded in the Office (37
CFR 3.73(b)).

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25.

2. Where an attorney or agent of record signs a terminal disclaimer,
there is no need to provide a statement under  37 CFR 3.73(b).  Thus,
this form paragraph should not be used.

3. It should be noted that the documentary evidence or the specifying of
reel and frame number may be found in the terminal disclaimer itself or
in a separate paper.

14.30.01 No Evidence of Chain of Title to Assignee - Patent

The assignee has not established its ownership interest in the patent,
in order to support the terminal disclaimer. There is no submission in
the record establishing the ownership interest by either (a) providing
documentary evidence of a chain of title from the original inventor(s)
to the assignee, or (b) specifying (by reel and frame number) where such
documentary evidence is recorded in the Office (37 CFR 3.73(b)).

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25.

2. Where an attorney or agent of record signs a terminal disclaimer,
there is no need to provide a statement under  37 CFR 3.73(b).  Thus,
this form paragraph should not be used.

3. It should be noted that the documentary evidence or the specifying of
reel and frame number may be found in the terminal disclaimer itself or
in a separate paper in the application.

14.30.02 Evidence of Chain of Title to Assignee - Submission Not Signed
by Appropriate Party - Terminal Disclaimer Is Thus Not Entered

The submission establishing the ownership interest of the assignee is
informal. There is no indication of record that the party who signed the
submission establishing the ownership interest is authorized to sign the
submission  (37 CFR 3.73(b)).

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25.

2. Where an attorney or agent of record signs a terminal disclaimer,
there is no need to provide any statement under  37 CFR 3.73(b).  Thus,
this form paragraph should not be used.

3. This form paragraph should be followed by one of form paragraphs
14.16.02 or 14.16.03.  In rare situations where BOTH form paragraphs
14.16.02 and 14.16.03 do not apply and thus cannot be used, the examiner
should instead follow this form paragraph with a detailed statement of
why the there is no authorization to sign.

4. Use form paragraph 14.16.06 to point out one way to correct the
problem.

14.32 Application/Patent Which Forms Basis for Rejection Not Identified

The application/patent which forms the basis for the double patenting
rejection is not identified in the terminal disclaimer.

Examiner Note:

1. This form paragraph MUST be preceded by form paragraphs 14.24 or
14.25.

2. Use this form paragraph when no information is presented.  If
incorrect information is contained in the terminal disclaimer, use form
paragraphs 14.26 and 14.26.05.

14.33 37 CFR 3.73 - Establishing Right of Assignee To Prosecute

The following is a statement of  37 CFR 3.73, which became effective on
September 4, 1992, and was revised to its present form in 1997:

37 CFR 3.73  Establishing right of assignee to prosecute.

(a) The inventor is presumed to be the owner of a patent application,
and any patent that may issue therefrom, unless there is an assignment. 
The original applicant is presumed to be the owner of a trademark
application unless there is an assignment.

(b) When an assignee seeks to take action in a matter before the Office
with respect to a patent application, trademark application, patent,
registration, or reexamination proceeding, the assignee must establish
its ownership of the property to the satisfaction of the Commissioner. 
Ownership is established by submitting to the Office, in the Office file
related to the matter in which action is sought to be taken, documentary
evidence of a chain of title from the original owner to the assignee
(e.g., copy of an executed assignment submitted for recording or by
specifying (e.g., reel and frame number) where such evidence is recorded
in the Office.  The submission establishing ownership must be signed by
a party authorized to act on behalf of the assignee.  Documents
submitted to establish ownership may be required to be recorded as a
condition to permitting the assignee to take action in a matter pending
before the Office.

14.34 Suggestion To Record Assignment Submitted With Terminal Disclaimer

The assignment document filed on [1] is acceptable as the documentary
evidence required by  37 CFR 3.73.  If the assignment document is not
already recorded with the Patent and Trademark Office, it is suggested
that the assignment document be submitted for recording among the Office
assignment records.  See  37 CFR 3.11 and MPEP Section  302.

Examiner Note:

1. In bracket 1, insert the date the assignment document was filed.

2. This form paragraph should be used when an assignment document (an
original, facsimile, or copy) is submitted for recording among the
assignment records of the Office.

14.35 Disclaimer Fee Not Required Twice - Applicant

It should be noted that applicant is not required to pay another
disclaimer fee as set forth in  37 CFR 1.20(d) when submitting a
replacement or supplemental terminal disclaimer.

Examiner Note:

1. This form paragraph can be used to notify an applicant that another
disclaimer fee will not be required when a replacement or supplemental
terminal disclaimer is submitted.

2. Use form paragraph 14.35.01 for providing notification to patent
owner, rather than an applicant.

14.35.01 Disclaimer Fee Not Required Twice - Patent Owner

It should be noted that patent owner is not required to pay another
disclaimer fee as set forth in  37 CFR 1.20(d) when submitting a
replacement or supplemental terminal disclaimer.

Examiner Note:

This form paragraph can be used to notify a patent owner that another
disclaimer fee will not be required when a replacement or supplemental
terminal disclaimer is submitted.

14.36 Suggestion That "Applicant" Request a Refund

Since the required fee for the terminal disclaimer was previously paid,
applicant's payment of an additional terminal disclaimer fee is not
required.  Applicant may request a refund of this additional terminal
disclaimer fee by submitting a written request for a refund and a copy
of this Office action to: Commissioner of Patents and Trademarks, Office
of Finance, Washington, DC 20231.

Examiner Note:

1. This form paragraph should be used to notify applicant that a refund
can be obtained if another terminal disclaimer fee was paid when a
replacement or supplemental terminal disclaimer was submitted.

2. Note - If applicant has authorized or requested a fee refund to be
credited to a specific Deposit Account, then an appropriate credit
should be made to that Deposit Account and this paragraph should NOT be
used.

3. Use form paragraph 14.36.01 for providing notification to patent
owner, rather than an applicant.

14.36.01 Suggestion That "Patent Owner" Request a Refund

Since the required fee for the terminal disclaimer was previously paid,
patent owner's payment of an additional terminal disclaimer fee is not
required.  Patent owner may request a refund of this additional terminal
disclaimer fee by submitting a written request for a refund and a copy
of this Office action to: Commissioner of Patents and Trademarks, Office
of Finance, Washington, DC 20231.

Examiner Note:

1. This form paragraph should be used to notify patent owner that a
refund can be obtained if another terminal disclaimer fee was paid when
a replacement or supplemental terminal disclaimer was submitted.

2. Note - If patent owner has authorized or requested a fee refund to be
credited to a specific Deposit Account, then an appropriate credit
should be made to that Deposit Account and this paragraph should NOT be
used.

14.37 Samples of a Terminal Disclaimer Over a Pending Application and
Assignee Certificate Enclosed

Enclosed with this Office action is a sample terminal disclaimer which
is effective to overcome a provisional obviousness-type double patenting
rejection over a pending application (37 CFR 1.321(b) and (c)).

Also enclosed is a sample Certificate Under  37 CFR 3.73(b) which an
assignee may use in order to ensure compliance with the rule.  Part A of
the Certificate is used when there is a single assignment from the
inventor(s).  Part B of the Certificate is used when there is a chain of
title.  The "Copies of assignments..."  box should be checked when the
assignment document(s) (set forth in part A or part B ) is/are not
recorded in the Office, and a copy of the assignment document(s) is/are
attached.  When the "Copies of assignments..." box is checked, either
the part A box or the part B box, as appropriate, must be checked, and
the "Reel_____, Frame_____" entries should be left blank.  If the part B
box is checked, and copies of assignments are not included, the
"From:______ To:______" blank(s) must be filled in.  This certificate
should be used the first time an assignee seeks to take action in an
application under  37 CFR 3.73(b), e.g., when signing a terminal
disclaimer or a power of attorney.

Examiner Note:

1. This form paragraph can be used to provide applicant samples of a
terminal disclaimer which contains the necessary clauses to overcome a
provisional obviousness-type double patenting rejection over a pending
application and a Certificate to be signed by an assignee to ensure
compliance with  37 CFR 3.73(b).

2. Note that the requirements for compliance with  37 CFR 3.73 (b) have
been made more liberal, such that certain specifics of the sample
certificate are no longer required. At present, in order to comply with 
37 CFR 3.73(b), the assignee's ownership interest must be established by
(a) filing in the application or patent evidence of a chain of title
from the original owner to the assignee, or (b) specifying in the record
of the application or patent where such evidence is recorded in the
Office (e.g., reel and frame number, etc.). The submission with respect
to (a) and (b) to establish ownership must be signed by a party
authorized to act on behalf of the assignee.

(See your Group Paralegal or Special Program Examiner for copies of the
sample terminal disclaimer and Certificate to enclose with the Office
action.  Alternatively, it is permissible to copy the sample terminal
disclaimer found in MPEP Section  1490 and the Sample Certificate found
in MPEP Section  324.)

14.38 Samples of a Terminal Disclaimer Over a Prior Patent and Assignee
Certificate Enclosed

Enclosed with this Office action is a sample terminal disclaimer which
is effective to overcome an obviousness-type double patenting rejection
over a prior patent (37 CFR 1.321(b) and (c)).

Also enclosed is a sample Certificate Under  37 CFR  3.73(b) which an
assignee may use in order to ensure compliance with the rule.  Part A of
the Certificate is used when there is a single assignment from the
inventor(s).  Part B of the Certificate is used when there is a chain of
title.  The "Copies of assignments..."  box should be checked when the
assignment document(s) (set forth in part A or part B ) is/are not
recorded in the Office, and a copy of the assignment document(s) is/are
attached.  When the "Copies of assignments..." box is checked, either
the part A box or the part B box, as appropriate, must be checked, and
the "Reel_____, Frame_____" entries should be left blank.  If the part B
box is checked, and copies of assignments are not included, the
"From:______ To:______" blank(s) must be filled in.  This certificate
should be used the first time an assignee seeks to take action in an
application under  37 CFR 3.73(b), e.g., when signing a terminal
disclaimer or a power of attorney.

Examiner Note:

1. This form paragraph can be used to provide applicant samples of a
terminal disclaimer which contains the necessary clauses to overcome an  
obviousness-type double patenting rejection over a prior patent and a
Certificate to be signed by an assignee to ensure compliance with  37
CFR 3.73(b).

2. Note that the requirements for compliance with  37 CFR 3.73 (b) have
been made more liberal, such that certain specifics of the sample
certificate are no longer required.  At present, in order to comply with 
37 CFR 3.73(b), the assignee's ownership interest must be established by
(a) filing in the application or patent evidence of a chain of title
from the original owner to the assignee, or (b) specifying in the record
of the application or patent where such evidence is recorded in the
Office (e.g., reel and frame number, etc.).  The submission with respect
to (a) and (b) to establish ownership must be signed by a party
authorized to act on behalf of the assignee.

(See your Group Paralegal or Special Program Examiner for copies of the
sample terminal disclaimer and Certificate to enclose with the Office
action.  Alternatively, it is permissible to copy the sample terminal
disclaimer found in MPEP Section  1490 and the Sample Certificate found
in MPEP Section  324.)

14.39 Sample Assignee Certificate Under 37 CFR 3.73(b) Enclosed

Enclosed with this Office action is a sample Certificate under  37 CFR
3.73(b) which an assignee may use in order to ensure compliance with the
Rule.  Part A of the Certificate is used when there is a single
assignment from the inventor(s).  Part B of the Certificate is used when
there is a chain of title.  The "Copies of assignments..."  box should
be checked when the assignment document(s) (set forth in part A or part
B ) is/are not recorded in the Office, and a copy of the assignment
document(s) is/are attached.  When the "Copies of assignments..." box is
checked, either the part A box or the part B box, as appropriate, must
be checked, and the "Reel_____, Frame_____" entries should be left
blank.  If the part B box is checked, and copies of assignments are not
included, the "From:______ To:______" blank(s) must be filled in.  This
certificate should be used the first time an assignee seeks to take
action in an application under  37 CFR 3.73(b).

Examiner Note:

1. This form paragraph can be used to provide applicant a sample of a
Certificate to be signed by an assignee to ensure compliance with  37
CFR 3.73(b).

2. Note that the requirements for compliance with  37 CFR 3.73 (b) have
been made more liberal, such that certain specifics of the sample
certificate are no longer required.  At present, in order to comply with 
37 CFR 3.73(b), the assignee's ownership interest must be established by
(a) filing in the application or patent evidence of a chain of title
from the original owner to the assignee, or (b) specifying in the record
of the application or patent where such evidence is recorded in the
Office (e.g., reel and frame number, etc.).  The submission with respect
to (a) and (b) to establish ownership must be signed by a party
authorized to act on behalf of the assignee.

(See your Group Paralegal or Special Program Examiner for copies of the
sample terminal disclaimer and Certificate to enclose with the Office
action.  Alternatively, it is permissible to copy the sample certificate
found in MPEP Section  324.)

---SECTION---WITHDRAWING A RECORDED TERMINAL DISCLAIMER

If timely requested, a recorded terminal disclaimer may be withdrawn
before the application in which it is filed issues as a patent, or in a
reexamination proceeding before the reexamination certificate issues.
After a patent or reexamination certificate issues, it is unlikely that
a recorded terminal disclaimer will be nullified.

A.	 Before Issuance Of Patent

While the filing and recordation of an unnecessary terminal disclaimer
has been characterized as an "unhappy circumstance" in In re Jentoft,
392 F.2d 633, 157 USPQ 363 (CCPA 1968), there is no statutory
prohibition against nullifying or otherwise canceling the effect of a
recorded terminal disclaimer which was erroneously filed before the
patent issues. Since the terminal disclaimer would not take effect until
the patent is granted, and the public has not had the opportunity to
rely on the terminal disclaimer, relief from this unhappy circumstance
may be available by way of petition or by refiling the application
(other than by refiling it as a CPA).

Under appropriate circumstances, consistent with the orderly
administration of the examination process, the nullification of a
recorded terminal disclaimer may be addressed by filing a petition under 
37 CFR 1.182 requesting withdrawal of the recorded terminal disclaimer.
Petitions seeking to reopen the question of the propriety of the double
patenting rejection that prompted the filing of the terminal disclaimer
have not been favorably considered. The filing of a continuing
application other than a CPA, while abandoning the application in which
the terminal disclaimer has been filed, will typically nullify the
effect of a terminal disclaimer.

B.	After Issuance Of Patent

The mechanisms to correct a patent - certificate of correction (35
U.S.C. 255), reissue (35 U.S.C. 251), and reexamination (35 U.S.C. 305)
- are not available to withdraw or otherwise nullify the effect of a
recorded terminal disclaimer. As a general principle, public policy does
not favor the restoration to the patent owner of something that has been
freely dedicated to the public, particularly where the public interest
is not protected in some manner - e.g., intervening rights in the case
of a reissue patent. See, e.g., Altoona Publix Theatres v. American
Tri-Ergon Corp., 294 U.S. 477, 24 USPQ 308 (1935).

Certificates of correction (35 U.S.C. 255) are available for the
correction of an applicant's mistake. The scope of this remedial
provision is limited in two ways - by the nature of the mistake for
which correction is sought and the nature of the proposed correction. In
re Arnott, 19 USPQ2d 1049 (Comm'r Pat. 1991). The nature of the mistake
for which correction is sought is limited to those mistakes that are:

(A) of a clerical nature,

(B) of a typographical nature, or

(C) of a minor character.

The nature of the proposed correction is limited to those situations where the correction does not involve changes which would:

(A) constitute new matter, or

(B) require reexamination.

A mistake in filing a terminal disclaimer does not fall within any of
the categories of mistake for which a certificate of correction of
applicant's mistake is permissible, and any attempt to remove or nullify
the effect of the terminal disclaimer would typically require
reexamination of the circumstances under which it was filed.

Although the remedial nature of reissue (35 U.S.C. 251) is well
recognized, reissue is not available to correct all errors. It has been
the Office position that reissue is not available to withdraw or
otherwise nullify the effect of a terminal disclaimer recorded in an
issued patent. First, the reissue statute only authorizes the
Commissioner to reissue a patent "for the unexpired part of the term of
the original patent." Since the granting of a reissue patent without the
effect of a recorded terminal disclaimer would result in extending the
term of the original patent, reissue under these circumstances would be
contrary to the statute. Second, the principle against recapturing
something that has been intentionally dedicated to the public dates back
to Leggett v. Avery, 101 U.S. 256 (1879). The attempt to restore that
portion of the patent term that was dedicated to the public to secure
the grant of the original patent would be contrary to this recapture
principle. Finally, applicants have the opportunity to challenge the
need for a terminal disclaimer during the prosecution of the application
that issues as a patent. "Reissue is not a substitute for Patent Office
appeal procedures." Ball Corp. v. United States, 729 F.2d 1429, 1435,
221 USPQ 289, 293 (Fed. Cir. 1984). Where applicants did not challenge
the propriety of the examiner's obvious-type double patenting rejection,
but filed a terminal disclaimer to avoid the rejection, the filing of
the terminal disclaimer did not constitute error within the meaning of 
35 U.S.C. 251. Ex parte Anthony, 230 USPQ 467 (Bd. App. 1982), aff'd,
No. 84-1357 (Fed. Cir. June 14, 1985).

Finally, the nullification of a recorded terminal disclaimer would not
be appropriate in a reexamination proceeding. There is a prohibition (35
U.S.C. 305) against enlarging the scope of a claim during a
reexamination proceeding. As noted by the Board in   Anthony, supra, if
a terminal disclaimer was nullified, "claims would be able to be sued
upon for a longer period than would the claims of the original patent.
Therefore, the vertical scope, as opposed to the horizontal scope (where
the subject matter is enlarged), would be enlarged."

Form PTO/SB/43. Disclaimer in Patent[GRAPHIC]

Form PTO/SB/25. Terminal Disclaimer to Obviate a Provisional Double
Patenting Rejection Over a Pending Second Application[GRAPHIC]

Form PTO/SB/26. Terminal Disclaimer to Obviate a Double Patenting
Rejection Over a Prior Patent[GRAPHIC]

