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1449.02 Interference in Reissue - 1400 Correction of Patents
1449.02 Interference in Reissue
In appropriate circumstances, a reissue application may be placed into interference with a patent or pending application. A patentee may provoke an interference with a patent or pending application by filing a reissue application, if the reissue application includes an appropriate reissue error as required by 35 U.S.C. 251. Reissue error must be based upon applicant error; a reissue cannot be based solely on the error of the Office for failing to declare an interference or to suggest copying claims for the purpose of establishing an interference. See In re Keil, 808 F.2d 830, 1 USPQ2d 1427 (Fed. Cir. 1987); In re Dien, 680 F.2d 151, 214 USPQ 10 (CCPA 1982); In re Bostwick, 102 F.2d 886, 888, 41 USPQ 279, 281 (CCPA 1939); and In re Guastavino, 83 F.2d 913, 916, 29 USPQ 532, 535 (CCPA 1936). See also Slip Track Systems, Inc. v. Metal Lite, Inc., 159 F.3d 1337, 48 USPQ2d 1055 (Fed. Cir. 1998) (Two patents issued claiming the same patentable subject matter, and the patentee with the earlier filing date requested reexamination of the patent with the later filing date (Slip Track's patent). A stay of litigation in a priority of invention suit under 35 U.S.C. 291, pending the outcome of the reexamination, was reversed. The suit under 35 U.S.C. 291 was the only option available to Slip Track to determine priority of invention. Slip Track could not file a reissue application solely to provoke an interference proceeding before the Office because it did not assert that there was any error as required by 35 U.S.C. 251 in the patent.). A reissue application can be employed to provoke an interference if the reissue application:
(A) adds copied claims which are not present in the original patent;
(B) amends claims to correspond to those of the patent or application with which an interference is sought; or
(C) contains at least one error (not directed to provoking an interference) appropriate for the reissue.
In the first two situations, the reissue oath/declaration must assert that applicant erred in failing to include claims of the proper scope to provoke an interference in the original patent application. Note that in In re Metz, 1998 U.S. App. LEXIS 23733 (Fed. Cir. 1998)(unpublished), the Federal Circuit permitted a patentee to file a reissue application to copy claims from a patent in order to provoke an interference with that patent. Furthermore, the subject matter of the copied or amended claims in the reissue application must be supported by the disclosure of the original patent under 35 U.S.C. 112, first paragraph. See In re Molins, 368 F.2d 258, 261, 151 USPQ 570, 572 (CCPA 1966) and In re Spencer, 273 F.2d 181, 124 USPQ 175 (CCPA 1959).
A reissue applicant cannot present added or amended claims to provoke an interference, if the claims were deliberately omitted from the patent. If there is evidence that the claims were not inadvertently omitted from the original patent, e.g., the subject matter was described in the original patent as being undesirable, the reissue application may lack proper basis for the reissue. See In re Bostwick, 102 F.2d at 889, 41 USPQ at 282 (CCPA 1939)(reissue lacked a proper basis because the original patent pointed out the disadvantages of the embodiment that provided support for the copied claims).
The issue date of the patent, or the publication date of the application publication (whichever is applicable under 35 U.S.C. 135(b)), with which an interference is sought must be less than 1 year prior to the presentation of the copied or amended claims in the reissue application. See 35 U.S.C. 135(b) and MPEP § 715.05 and § 2307. If the reissue application includes broadened claims, the reissue application must be filed within two years from the issue date of the original patent. See 35 U.S.C. 251 and MPEP § 1412.03.
REISSUE APPLICATION FILED WHILE PAT- PATENT IS IN INTERFERENCE
If a reissue application is filed while the original patent is in an interference proceeding, the reissue applicant is required to notify the Board of Patent Appeals and Interferences of the filing of the reissue application within 10 days from the filing date. See 37 CFR 1.660(b)and MPEP § 2360.
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