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Reissue Application Requirements

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The person who signed the deposit establishing the right of ownership did not specify in what capacity the deposit was signed on behalf of the company or any other business entity, and the person who signed it was not considered authorized to act on behalf of the assignee. In the case of applications for new editions filed on or after September 16, 2012, the filing may be signed by a registered patent owner to establish ownership. See 37 CFR 3.73; MPEP § 325. The assignee who agrees to file the request for reissue (as indicated above) must also prove that he is the assignee, i.e. the owner, of the patent. See 37 CFR 1.172. Therefore, at the time of filing the request for reissue, a 37 CFR 3.73 document proving the assignee`s ownership must be provided in support of the assignee`s consent. The assignee must establish ownership under 37 CFR 3.73 as follows: If the 37 CFR 3.73 filing is accompanied by an assignment document, the assignment must be reviewed to ensure that the designated assignee is identical to the assignment document and 37 CFR 3.73 statement and that the assignment document is an assignment of the patent to be reissued to the assignee. If an assignment document is not attached to 37 CFR 3.73, but the roll and frame number in which the assignment document is recorded in the USPTO are referenced in 37 CFR 3.73, the assignment registered in the USPTO is deemed to support the statement identifying the assignee. The reviewer does not need to receive a copy of the saved task document.

If Form 37 CFR 1.172 and 37 CFR 3.73 does not exist, Form 14.16 may be used to indicate that the transferee has not provided proof of ownership. (b) indicate in the file of the request for reissue where these references are registered at the Office (e.g. roll and frame number, etc.). Changes to claims in a reissue application may result in « intervention rights » of potential infringers who infringe claims between the date of grant of the original patent and the grant of the reissue patent. 9 The doctrine of interlocutory law has the effect that an action for infringement is brought against an infringer who infringes renewal claims arising from the patent which reproduce subject-matter covered by the original patent as if the original patent had been continued. Where a written declaration of microunit status, a certificate of microunit status or any other document on file indicates that the application or patent has been transferred and that there is no consent of the assignee named in the written declaration of small unit status or the attestation of microunit status, the examiner should consider the matter in a communication from the Office. even if the minutes also indicate that the application/patent has not been transferred. Where applicable, the applicant may also submit a declaration of disclosure of information for the re-issue. Even if the filing indicates that it establishes ownership of the reissue application (and not the patent), the filing must be accepted by the examiner as it also establishes ownership of the patent. The filing documents proving ownership of the reissue application must necessarily include a chain of ownership of the patent.

Form PTO/AIA/50, Transmission of Patent Applications, which can be used to file new grant applications, is reproduced below. For reissue requests filed before September 16, 2012, the reissue request must be filed by the inventor or person(s) filing a patent in place of the inventor, as provided in Pre-AIA 37 CFR 1.42, 1.43 and 1.47 (cf. MPEP § 409.01(b) and § 409.03ff.), except that the request for reissue may be filed by the assignee of the public interest, if the application is not intended to extend the scope of the claims. of the original patent. See Pre-AIA 35 U.S.C. 251, third paragraph. A request for republication is filed when a granted patent is wrongly considered to be « wholly or partially invalid or invalid ». 1 The new edition may therefore be used to correct errors that are more important than those that can be corrected by a simple request for a certificate of correction. Only the owner of the granted patent (i.e. the patent owner) may choose to file a request for reissue. Legal and regulatory requirements in cases of error prevent courts from ordering parties to request reissue if the patent owner insists that their patent does not contain an error.2 An application for reissue, whether filed before, September 16, 2012 or after that date, must be accompanied by the written consent of all assignees who currently have an undivided interest in the patent.

In addition, all assignees who accept reissue must prove that they own the patent by filing a filing in the reissue application in accordance with the provisions of 37 CFR 3.73. The consent of the assignee must be signed by a party authorized to act on behalf of the assignee. For applications filed on or after September 16, 2012, the consent may be signed by the assignee or an approved patent attorney. For applications submitted before September 16, 2012, consent must be signed by the assignee. If the transferee is a corporation, the consent may be signed by a person in the organization who is clearly authorized to sign on behalf of the organization or by a person giving a power of attorney to act on behalf of the transferee. For a discussion of the parties authorized to act on behalf of the assignee, see MPEP § 325 (for applications filed on or after September 16, 2012) and MPEP § 324 (for applications filed before September 16, 2012). Approval of the reissue request can read as follows: A guide to filing reissue applications on or after September 16, 2012 is available at www.uspto.gov/sites/default/files/forms/ uspto_reissue_ads_guide_Sept2014.pdf The request for reissue may then be reviewed, but will not be approved or issued without the consent of all agents under 37 CFR 1.172. See Baker Hughes Inc. v. Kirk, 921 F. Supp.

801, 809, 38 USPQ2d 1885, 1892 (D.D.C. 1995), 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).

(b) If the request for reissue is intended to extend the scope of the claims (the basis for reissue is that the patent owner claims less than the patent owner was entitled to the patent), the oath or declaration of the inventor for a request for reissue must specify a claim that the application is intended to extend. A claim is an extended claim if the claim is extended in any respect. XYZ Corporation, assignee of U.S. Patent No. 9,999,999, agrees to file Reissue Application No. 99/999,999 (or this application if filed with the original application documents) for the reissue of U.S. Patent No. 9,999,999.

With respect to option (A) above, the submission of documentary evidence to establish ownership must be accompanied by a statement confirming that documentary evidence of the chain of ownership has been submitted by the original owners to the assignee for registration pursuant to 37 CFR 3.11 or will be submitted concurrently. Therefore, when filing a 37 CFR 3.73 declaration of ownership, an applicant or patentee must also submit the reliable assignment document(s) to the Office for registration, unless such filing was previously filed. If the 37 CFR 3.73 statement is not accompanied by a statement confirming that the written evidence pursuant to 37 CFR 3.11 has been filed for registration or is filed at the same time, the 37 CFR 3.73 statement will not be accepted and the assignee(s) will not be entitled to establish in the patent application or patent, for which 37 CFR 3.73 was filed. This could, for example, lead to an incomplete response if a party designated as an « assignee » signs its consent to reissue in order to circumvent the obligation to submit the consent of the assignee in a communication from the Office.