1451 Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending [R-08.2017]
35 U.S.C. 251 Reissue of defective patents.
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- (b) MULTIPLE REISSUED PATENTS - The Director 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.
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37 C.F.R. 1.177 Issuance of multiple reissue patents.
- (a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
- (b) If applicant files more than one application for the reissue of a single patent, each claim of the patent being reissued must be presented in each of the reissue applications as an amended, unamended, or canceled (shown in brackets) claim, with each such claim bearing the same number as in the patent being reissued. The same claim of the patent being reissued may not be presented in its original unamended form for examination in more than one of such multiple reissue applications. The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim.
- (c) If any one of the several reissue applications by itself fails to correct an error in the original patent as required by 35 U.S.C. 251 but is otherwise in condition for allowance, the Office may suspend action in the allowable application until all issues are resolved as to at least one of the remaining reissue applications. The Office may also merge two or more of the multiple reissue applications into a single reissue application. No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself.
The court in In re Graff, 111 F.3d 874, 876-77, 42 USPQ2d 1471, 1473 (Fed. Cir. 1997) stated that "[t]he statute does not prohibit divisional or continuation reissue applications, and does not place stricter limitations on such applications when they are presented by reissue, provided of course that the statutory requirements specific to reissue applications are met." Following the decision in Graff, the Office has adopted a policy of treating continuations and divisionals of reissue applications, to the extent possible, in the same manner as continuations and divisionals of non-reissue applications.
Nonetheless, the mere fact that the application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself, since it is possible to file a 35 U.S.C. 111(a) continuing application of a reissue application. See In re Bauman, 683 F.2d 405, 409, 214 USPQ 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application's filing date).
The filing of a regular continuation or divisional application (e.g., a Bauman type continuation or divisional application) has at least two significant effects. First, the claims in a Bauman type continuation or divisional application will not have the same effective U.S. filing date as the original patent. This is because a reissue application is necessarily filed after the patenting of the original application. Therefore, a Bauman type continuation or divisional application of the reissue application could not satisfy the copendency requirement of 35 U.S.C. 120 with respect to the original patent. See Bauman, 683 F.2d at 410 (regular continuation of a reissue cannot claim benefit to the filing date of the original patent, but instead is limited to the filing date of the reissue); Conover v. Downs, 35 F.2d 59, 17 C.C.P.A. 587, 590-91 (C.C.P.A. 1929) (reissue continuation of a reissue cannot claim benefit to the filing date of the original patent, but instead is limited to the filing date of the reissue). At best, the earliest effective U.S. filing date would be the filing date of the first reissue application that the Bauman type continuation or divisional application is entitled to claim benefit to under 35 U.S.C. 120. Second, a decision to file a Bauman type continuation or divisional application instead of a continuation or divisional reissue application results in the inability to file any subsequent reissues of the original patent once there are no pending applications for reissue of the original patent. See MPEP § 1460 for more information about surrender when there are multiple reissue applications and the effect of a reissued patent on other related reissue applications.
If filing a continuation reissue application as opposed to a Bauman type continuation application, there must be an identification, on filing, that the application is a continuation reissue application. Likewise, there must be an identification, on filing, that the application is a divisional reissue application, as opposed to a divisional of a reissue application. Thus, the application data sheet must state, or the specification must be amended to state that the application is a "continuation reissue application" or "divisional reissue application" of its parent reissue application. If the application data sheet states, or the specification is amended to state that the application is a "continuation" or "divisional" of its parent reissue application, the application may very well be treated as a Bauman type continuation or divisional application. In general, an application which is a continuing application of a reissue application will be considered a Bauman application when there are no indicia on filing that a continuing reissue application is being filed. Indicia that a continuing reissue application is being filed are:
- 1. A 37 CFR 1.175 reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration.
- 2. A specification and/or claims in proper double column reissue format per 37 CFR 1.173.
- 3. Amendments in proper format per 37 CFR 1.173.
- 4. A 37 CFR 3.73 statement of assignee ownership and consent by assignee.
- 5. A correct transmittal letter identifying the application as a reissue filing under 35 U.S.C. 251. It is recommended that Form PTO/AIA/50 be used.
- 6. An identification of the application as being "a reissue continuation of application number [the parent reissue application]" or "a continuation of application number [the parent reissue application] and an application for reissue of patent number [the patent for which reissue is sought]" or equivalent language, rather than being "a continuation of reissue application number [the parent reissue application]."
The following are examples of acceptable identification providing the appropriate continuity language for a continuation or divisional reissue application (as opposed to a Bauman type non-reissue continuing application).
Example 1: This application is a continuation reissue of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 2: This application is a continuation reissue of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567, now Re 99,999.
Example 3: This application is a reissue continuation of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 4: This application is a reissue divisional of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 5: This is an application for reissue of U.S. Patent No. 9,234,567, and is a continuation of application no. 15/123,456, which is also an application for reissue of U.S. Patent No. 9,234,567.
Example 6: This is an application for reissue of U.S. Patent No. 9,234,567, and is a divisional of application no. 15/123,456, which is also an application for reissue of U.S. Patent No. 9,234,567.
Example 7: This is an application for reissue of U.S. Patent No. 9,234,567 and claims benefit under 35 U.S.C. 120 as a continuation of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 8: This is an application for reissue of U.S. Patent No. 9,234,567 and claims benefit under 35 U.S.C. 120 as a continuation of application no. 15/123,456.
Example 9: This is an application for reissue of U.S. Patent No. 9,234,567. This application claims benefit under 35 U.S.C. 120 as a continuation of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Note: For applications filed on or after September 16, 2012, domestic benefit claims under 37 CFR 1.78 must be made in an application data sheet (ADS) under 37 CFR 1.76. As explained in more detail in the Reissue Filing Guide for Applications Filed on/after September 16, 2012 (posted at www.uspto.gov/sites/default/files/forms/ uspto_reissue_ads_guide_Sept2014.pdf ), the ADS must separately identify the application as (1) a continuation or divisional of the parent reissue application and (2) a reissue of the original patent. However, it is recommended that the first line of the specification still contain language set forth in the above examples to help ensure that the Office recognizes the application as a continuation reissue application or divisional reissue application (as opposed to a Bauman type non-reissue continuing application).
Questions relating to the propriety of divisional reissue applications and continuation reissue applications should be referred via the Technology Center (TC) Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS).
I. DIVISIONAL REISSUE APPLICATIONS
37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between the original claims of the patent and any newly added claims which are directed to a separate and distinct invention(s). See also MPEP § 1450. As a result of such a restriction requirement, divisional reissue applications may be filed for each of the inventions identified in the restriction requirement.
In addition, applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177. The multiple reissue applications which are filed may contain different groups of claims from among the original patent claims, or some of the reissue applications may contain newly added groups (not present in the original patent). There is no requirement that the claims of the multiple reissue applications be independent and distinct from one another; if they are not independent and distinct from one another, the examiner must apply the appropriate double patenting rejections.
There is no requirement that a family of divisional reissue applications issue at the same time; however, it is required that they contain a cross reference to each other in the specification. 37 CFR 1.177(a) requires that all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue application(s). Accordingly, the first sentence of each reissue specification must provide (in addition to the statement of continuity – see above) notice stating that more than one reissue application has been filed, and it must identify each of the reissue applications and their relationship within the family of reissue applications, and to the original patent. An example of the suggested language to be inserted is as follows:
Notice: More than one reissue application has been filed for the reissue of Patent No. 9,999,999. The reissue applications are application numbers 09/999,994 (the present application), 09/999,995, and 09/999,998, all of which are divisional reissues of Patent No. 9,999,999.
The examiner should object to the specification and require an appropriate amendment if applicant fails to include such a cross reference to the other reissue applications in the first sentence of the specification of each of the reissue applications.
Where one of the divisional reissue applications of the family has issued without the required cross reference to the other reissue application(s), the examiner will refer the matter to their Supervisory Patent Examiner (SPE) or Supervisory Patent Reexamination Specialist (SPRS). The SPE or SPRS will initiate a certificate of correction under 37 CFR 1.322 to include the appropriate cross reference in the already issued first reissue patent before passing the pending reissue application to issue. Form paragraph 10.19 may be used for such purpose. After the SPE or SPRS prepares the memorandum as per form paragraph 10.19, the memorandum should be forwarded to the Certificates of Correction Branch for issuance of a certificate. The examiner should make a reference in the pending divisional reissue application to the fact that an actual request for a certificate of correction has been initiated in the first reissue patent pursuant to 37 CFR 1.177(a), e.g., by an entry in the search notes or in an examiner’s amendment.
¶ 10.19 Memorandum - Certificate of Correction (Cross-Reference to Other Reissues in Family)
DATE: [1]
TO: Certificates of Correction 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]
The present reissue patent issued from an application that is one of a family of divisional reissue applications resulting from Patent No. [9]. The present reissue patent has issued without the cross reference to the other reissue application(s) of the family which is required pursuant to 37 CFR 1.177(a). Accordingly, insert in the first sentence of the specification as follows:
Notice: More than one reissue application has been filed for the reissue of patent [9]. The reissue applications are [10].
_________________________
[11], Supervisory Patent Examiner
Art Unit [12]
Examiner Note:
1 In bracket 9, insert the patent number of the patent for which multiple reissue divisional applications have been filed.
2 This is an internal memo and must not be mailed to the applicant. This memo should accompany the patented file to the Certificates of Correction Branch as noted in form paragraphs 10.13 and 10.14.
3. In brackets 5 and 11, insert the name of SPE and provide the signature of the SPE above each line.
4. In brackets 6 and 12, insert the Art Unit number.
5. Two separate pages of USPTO letterhead will be printed when using this form paragraph.
6. In bracket 10, identify each of the reissue applications (including the present application) and their relationship within the family of reissue applications, and to the original patent.
In addition to the amendment to the first sentence of the specification, the reissue application cross references will also be reflected in the file. For an IFW reissue application file, a copy of the bibliographic data sheet from the IFW file history should be annotated by the examiner such that adequate notice is provided that more than one reissue application has been filed for a single original patent. The annotated sheet should be scanned into IFW.
Pursuant to 37 CFR 1.177(b) all of the claims of the patent to be reissued must be presented in each reissue application in some form, i.e., as amended, as unamended or as canceled. Further, any added claims must be numbered beginning with the next highest number following the last patent claim. It is noted that the same claim of the patent cannot be presented for examination in more than one of the divisional reissue applications, as a pending claim, in either its original or amended versions. If a patent claim is presented in one of the divisional reissue applications of a reissue application "family," as a pending claim, then that patent claim must be presented as a canceled claim in all the other reissue applications of that family. Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application. If the same claim of the patent, e.g., patent claim 1 is presented for examination in more than one of the reissue applications, in different amended versions, the following rejections should be made in the reissue applications with that patent claim:
A rejection under 35 U.S.C. 251, in that the reissue application is not correcting an error in the original patent, because original claim 1 would be superseded by the reissuance of claim 1 in the other reissue application.
A rejection under 35 U.S.C. 112, in that claim 1 is indefinite because the invention of claim 1 is not particularly pointed out and distinctly claimed. Claim 1 presents one coverage in divisional reissue application X and another in the present reissue application. This is inconsistent.
The reissue applicant should then be advised to follow a procedure similar to the following example:
If there are patent claims 1 – 10 in two divisional reissue applications and an applicant wishes to revise claim 1, which is directed to AB (for example) to ABC in one divisional reissue application, and to ABD in a second divisional reissue application, applicant should do the following: Claim 1 in the first divisional reissue application can be revised to recite ABC. Claim 1 in the second divisional reissue application would be canceled, and new claim 11 would be added to recite ABD. The physical cancellation of claim 1 in the second divisional reissue application will not prejudice applicant’s rights in the amended version of claim 1 because those rights are retained via the first reissue application. Claim 1 continues to exist in the first reissue application, and both the first and second reissue applications taken together make up the totality of the correction of the original patent.
If the same or similar claims are presented in more than one of the multiple reissue applications, the possibility of statutory double patenting (35 U.S.C. 101 ) or nonstatutory (judicially created doctrine) double patenting should be considered by the examiner during examination, and the appropriate rejections made. A terminal disclaimer may be filed to overcome a nonstatutory double patenting rejection. The terminal disclaimer is necessary in order to ensure common ownership of the reissue patents throughout the remainder of the unexpired term of the original patent.
A. Consent of the Assignee
Whenever a divisional reissue application is filed with a copy of the assignee consent from the parent reissue application, the copy of the assignee consent from the parent reissue application should not be accepted, unless the divisional reissue application is being filed in response to a restriction requirement. The copy of the consent from the parent reissue application does not indicate that the assignee has consented to the addition of the new invention of the divisional reissue application to the original patent. The Office of Patent Application Processing (OPAP) should accord a filing date and send out a notice of missing parts stating that there is no proper consent and 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(f). See MPEP § 1410.01. In a divisional reissue application filed in response to a restriction requirement made in the parent reissue application, the assignee need not file a consent to the divided-out invention now being provided in the divisional reissue application, because consent has already been provided in the parent reissue application.
B. Reissue Oath/Declaration
Whenever a divisional reissue application is filed with a copy of the oath/declaration from the parent reissue application, the copy of the reissue oath/declaration in the divisional reissue application should be accepted by OPAP, because it is an oath/declaration, even though it may be improper under 35 U.S.C. 251 or 37 CFR 1.175. The examiner should check the copy of the oath/declaration to ensure that it identifies an error being corrected by the divisional reissue application. The copy of the oath/declaration from the parent reissue application may or may not cover the error being corrected by the divisional reissue application because the divisional reissue application is (by definition) directed to a new invention. If it does not, the examiner should reject the claims of the divisional reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the divisional reissue application, and require a new oath/declaration. See MPEP § 1414. Even for applications filed on or after September 16, 2012, a new oath/declaration is required for identification of the error, as opposed to identification of the error in the remarks accompanying an amendment, because 37 CFR 1.175(f)(2) states that "[i]f all errors identified in the inventor’s oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue," and in this instance the initial oath/declaration (the copy filed) never stated a proper "error." If the copy of the reissue oath/declaration from the parent reissue application does in fact cover an error being corrected in the divisional reissue application, no such rejection should be made. For applications filed before September 16, 2012, even though the copy of the reissue oath/declaration from the parent covers an error being corrected, a supplemental reissue oath/declaration pursuant to pre-AIA 37 CFR 1.175 (b)(1) will be required. See MPEP § 1414.03. 37 CFR 1.175 requires that the oath/declaration of the divisional reissue application identify at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application. Thus, where a divisional reissue application corrects the same error in a different way than its parent reissue application does, different oaths/declarations must be presented in the two reissue applications.
Example: Patent Broad claim – ABC
Parent Reissue - Claim to ABC canceled and replaced by ABCD to define over the art.
Divisional Reissue - Claim to ABC canceled and replaced by ABCE to define over the art.
The parent reissue oath/declaration error statement would be that ABC is too broad, and it was an error not to include D for patentability. The divisional reissue oath/declaration error statement would be that ABC is too broad and it was an error not to include E for patentability.
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. For treatment of a plurality of divisional reissue applications resulting from a requirement to restrict to distinct inventions or a requirement to elect species, see MPEP § 1450.
II. CONTINUATION REISSUE APPLICATIONS
A continuation reissue application of a parent reissue application is not ordinarily filed "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 [The Corn-Planter Patent, 90 U.S. 181, 227-28 (1874)] which recognized that more than one patent can result from a reissue proceeding. Thus § 251[2] places no greater burden on Mr. Graff’s continuation reissue application than upon a continuation of an original application; § 251[2] neither overrides, enlarges, nor limits the statement in § 251[3] that the provisions of Title 35 apply to reissues.
In re Graff, 111 F.3d at 877, 42 USPQ2d at 1473. Accordingly, prosecution of a continuation reissue application of a parent reissue application will be permitted (despite the existence of the pending parent reissue application) where the continuation reissue application complies with the rules for reissue.
The parent and the continuation reissue applications should be examined together if possible. In order that the parent-continuation relationship of the reissue applications be specifically identified and notice be provided of reissue applications for both the parent and the continuation reissue application, the following is done:
- (A) An appropriate amendment to the continuing data entries must be made to the first sentence of the specification, (see the discussion above under the heading "Divisional Reissue Applications").
- (B) For an IFW reissue application file, a copy of the bibliographic data sheet from the IFW file history should be annotated by the examiner such that adequate notice is provided that more than one reissue application has been filed for a single original patent. The annotated sheet should be added to the application file in IFW.
As is true for the case of multiple divisional reissue applications, all of the claims of the patent to be reissued must be presented in both the parent reissue application and the continuation reissue application in some form, i.e., as amended, as unamended, or as canceled. The same claim of the patent cannot, however, be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions. See the discussion in subsection I. above for treatment of this situation. Further, any added claims must be numbered beginning with the next highest number following the original patent claims.
Where the parent reissue application issues before the examination of the continuation reissue application, the claims of the continuation reissue application should be carefully reviewed for double patenting over the claims of the parent reissue application. 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 § 804 - § 804.04 as to double patenting rejections. Any terminal disclaimer filed to obviate a nonstatutory double patenting rejection ensures common ownership of the reissue patents throughout the remainder of the unexpired term of the original patent.
If the parent reissue application issues without any cross reference to the continuation reissue application, amendment of the parent reissue patent to include a cross-reference to the continuation reissue application must be effected at the time of allowance of the continuation reissue application by certificate of correction. See the discussion above under the heading "Divisional Reissue Applications" as to how the certificate of correction is to be provided.
Again, the examiner should make reference in the pending continuation reissue application to the fact that an actual request for a certificate of correction has been generated in the first reissue patent pursuant to 37 CFR 1.177(a), e.g., by an entry in the search notes or in an examiner’s amendment.
Generally, where a continuation reissue application is filed with a copy of the oath/declaration and assignee consent from the parent reissue application, and the parent reissue application is not to be abandoned, the copy of the consent of the parent reissue application should not be accepted. The copy of the consent of the parent reissue application does not indicate that the assignee has consented to the addition of the new error correction of the continuation reissue application to the original patent. Presumably, a new correction has been added, because the parent reissue application is still pending. OPAP should accord a filing date and send out a notice of missing parts stating that there is no proper consent and 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(f). See MPEP § 1410.01.
The copy of the reissue oath/declaration should be accepted by OPAP, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration. See 37 CFR 1.175. Even for applications filed on or after September 16, 2012, a new oath/declaration is required for identification of the error, as opposed to identification of the error in the remarks accompanying an amendment, because 37 CFR 1.175(f)(2) states that "[i]f all errors identified in the inventor’s oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue," and in this instance the initial oath/declaration (the copy filed) never stated a proper "error." 37 CFR 1.175(f)(2) allows for the identification of the reissuable error in the remarks only where a proper reissuable error was previously entered into the application. One of form paragraphs 14.01.01 through 14.01.03 may be used. See MPEP § 1414.
As an exception to the general practice, there may be a situation where: (a) the original declaration of a parent reissue application may identify an error X, but as a result of an amendment to the claims, error X is no longer being corrected in the parent reissue application (and includes a supplemental declaration for applications filed prior to September 16, 2012 or remarks for applications filed on or after September 16, 2012 to provide a new error statement), and (b) a continuation reissue application is filed to correct error X. In this situation, applicant may provide in the continuation reissue application a copy of the original declaration and consent filed in the parent reissue application. The applicant is to point out this exception to the general practice in the remarks accompanying the continuation reissue application. 37 CFR 1.175 requires that the filing of any continuing reissue application which does not replace its parent reissue application must include an oath or declaration which, pursuant to paragraph (a)(1) of this section, identifies at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application. In this instance, the continuation reissue application would identify at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application by virtue of the copy of the original declaration (whose error is different from that of the parent reissue application which now has the supplemental declaration). To the extent that 37 CFR 1.175 requires a waiver to accommodate this situation, the requirement for a new oath/declaration is hereby waived. Two examples of this exception are provided:
Example 1
Patent Broad claim – ABC; Dependent claim – ABCE; and Dependent claim – ABCF
Parent Reissue Broad claim – ABCD originally presented in the reissue, and then canceled during prosecution. During prosecution, dependent claims rewritten as independent claims – ABCDEQ and ABCDFQ
Continuation Reissue Broad claim – ABCD
The parent reissue application’s supplemental declaration describes the addition of Q and D to the dependent claims, which have been rewritten as independent claims. A copy of the original reissue declaration from the parent reissue application, which describes the addition of D to the original independent patent claim, was filed in the continuation reissue application. Thus, the declarations of the parent reissue application and the continuation reissue application correct different errors. Further, the copy of the original consent from the parent reissue application filed in the continuation reissue application covers the error described in the copy of the declaration filed in the continuation reissue application.
A nonstatutory double patenting rejection should be considered by the examiner, with the requirement of a terminal disclaimer in each application. In re Berg, 140 F.3d 1428, 1435, 46 USPQ2d 1226, 1232 (Fed. Cir. 1998) ("The two-way exception can only apply when the applicant could not avoid separate filings, and even then, only if the PTO controlled the rates of prosecution to cause the later filed species claims to issue before the claims for a genus in an earlier application…In Berg’s case, the two applications could have been filed as one, so it is irrelevant to our disposition who actually controlled the respective rates of prosecution.").
Example 2:
Patent Broad claim – ABC; Dependent claim – ABCE; and Dependent claim – ABCF
Parent Reissue Broad claim – ABCD originally presented in the reissue, and then canceled during prosecution. During prosecution, dependent claims rewritten as independent claims – ABCDE and ABCDF
Continuation Reissue Broad claim – ABCD
The parent reissue application’s supplemental declaration describes the addition of D to the ABCE and ABCF combinations, correcting an error in the original dependent claims. The copy of the original reissue declaration from the parent reissue application filed in the continuation reissue application describes the addition of D to the broad claim, correcting an error in the original independent claim. This is permitted because the applicant is free to split the correction of an error as to different claims into different reissue applications, where one is a continuing application of another. See In re Graff, 111 F.3d at 877, 42 USPQ2d at 1473, where the Federal Circuit stated that 35 U.S.C. 251 places "no greater burden on Mr. Graff’s continuation reissue application than upon a continuation of an original application…"
Again a nonstatutory double patenting rejection should be considered by the examiner, with the requirement of a terminal disclaimer in each application. In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233.
Where a continuation reissue application is filed with a copy of the oath/declaration and assignee consent from the parent reissue application, and the parent reissue application is, or will be abandoned, the copy of the consent should be accepted by both OPAP and the examiner. The reissue oath/declaration should be accepted by OPAP, and the examiner should check to ensure that the oath/declaration identifies an error that is being corrected in the continuation reissue application. See MPEP § 1414.
For applications filed before September 16, 2012, if a preliminary amendment was filed with the continuation reissue application, the examiner should check for the need of a supplemental reissue oath/declaration. Pursuant to 37 CFR 1.175(b)(1), for any error corrected via the preliminary amendment which is not covered by the oath or declaration submitted in the parent reissue application, applicant must submit a supplemental oath/declaration stating that every such error arose without any deceptive intention on the part of the applicant. See MPEP § 1414 and § 1414.03.