Strategic Plan > Index to Action Papers > Permit Assignees to File Broadening Reissue

Action:

The assignee of the patent rights should be permitted to broaden the scope of patent claims in a reissue, without requiring signatures of inventors.

Background Information:

At present, the inventors' signatures are required in order to seek broadened claims in a reissue application.  As such, patent rights are frequently placed in jeopardy when a patent owner (assignee) wishes to broaden a patent (e.g., in order to encompass activity by a competitor and preclude that activity), yet, the patent owner is unable to obtain the inventors' signatures.  Inventors periodically leave employers (assignees) or become otherwise unavailable for participation in the reissue process, and, in some instances become hostile to the assignee.  While there are procedures in place to circumvent the statutory requirement for the inventors' signatures (e.g., 37 CFR 1.47), they are complex and difficult to comply with.  Compliance with these procedures often has the potential to delay the filing of the broadening reissue, sometimes beyond a critical date needed for dealing with an infringer, and sometimes beyond the two-year statutory time limit on broadening.  Thus, a strong need exists to simplify the process of filing without the inventors' signatures in the interest of protecting assignee property rights.

Option Considered:

Revise 35 U.S.C. 251 to explicitly permit the assignee to make a broadening reissue application in absence of the inventors' signatures.

The third paragraph of 35 U.S.C. 251 would be changed to eliminate the prohibition against assignee broadening in a reissue application.  This would permit the filing of broadened reissue applications without the currently required inventors' signatures.

Advantages:  Assignees who are unable to acquire inventors' signatures would no longer have to use the complex procedures of 37 CFR 1.47 to broaden the claims of a patent, with the result being a savings of time and resources in the Office in processing reissue applications under this rule.

USPTO Recommended Course of Action:

Pursue the identified option.  Amend the third paragraph of 35 U.S.C. 251 to eliminate the prohibition against assignee broadening as per Attachment.

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].

Revise 37 CFR 1.172(a) as per the Attachment, and make conforming changes in the rules.

Comment - Adoption of this proposed legislative change amounts to a means to simplify the broadening process for both assignees and the Office.

Estimated benefits:  A reduction in the number of reissue filings under 37 CFR 1.47 would ease the burden on the petitions process.  Further, there would be good public relations for the Office's efforts to simplify reissue and ease the burden on the public.

Proof of Concept (POC):

POC is not recommended for this initiative.  This proposal has received widespread approval from the user community and was not the subject of commentary suggesting that a pilot or further study of the proposal should be done.  Further, conducting a pilot of the proposal is not viable given the need for a statutory revision in order to implement the proposal. 

Timing:

This statutory initiative is intended to be part of the second phase of legislation supporting the 21^st Century Strategic Plan or it may be introduced with any legislation submitted to implement unity of invention. 

PERMIT ASSIGNEES TO FILE BROADENING REISSUES -- Attachment

Amend the third paragraph of 35 U.S.C. 251 to eliminate the prohibition against assignee broadening as follows:

§ 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 Director 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 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.

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 ].

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.

PERMIT ASSIGNEES TO FILE BROADENING REISSUES

In conjunction with a statutory change to 35 U.S.C. 251, a change to 37 CFR 1.172(a) would also be required as follows:

§ 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 §§ 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[].  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  § 3.73(b) of this chapter.

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