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1406 Citation and Consideration of References Cited in Original Patent [R-2] - 1400 Correction of Patents
1406 Citation and Consideration of References Cited in Original Patent [R-2]
In a reissue application, the examiner should consider and list on a PTO-892 form all references that have been cited during the original prosecution of the patent. See MPEP § 1455. An exception to this practice might be where the references cited in the original patent may no longer be relevant, e.g., in view of a narrowing of the claim scope in the reissue application.
Should applicants wish to ensure that all of the references which were cited in the original patent are considered and cited in the reissue application, an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and 1.98 should be filed in the reissue application. See MPEP § 609. Note that the waiver of the 37 CFR 1.98(a)(2)(i) requirement for submitting copies of U.S. patents and U.S. patent application publications applies to a reissue application that is filed after June 30, 2003, even though the underlying patent to be reissued resulted from an application filed before June 30, 2003. See the notice entitled "Information Disclosure Statements May Be Filed Without Copies of U.S. Patents and Published Applications in Patent Applications filed after June 30, 2003" published on August 5, 2003 in 1273 OG 55. Note also that the Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the "References Cited" in the patent for which reissue is sought. Rather, applicant has a continuing duty under 37 CFR 1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in the reissue application. See MPEP § 1418.
Where a copy of a reference is not available and cannot be obtained through any source other than the reissue applicant (who has not submitted the copy), the examiner will not indicate on PTO-892 or an SB/08 submitted by applicant that a reference has been considered.<
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