1453 Amendments to Reissue Applications [R-07.2022]

The provisions of 37 CFR 1.173(b)-(g) and those of 37 CFR 1.121(i) apply to amendments in reissue applications.

Amendments submitted in a reissue application, including preliminary amendments (i.e., amendments filed as a separate paper to accompany the filing of a reissue application), must comply with the practice outlined below in this section. The exception for examiner’s amendments to the specification and claims set forth in 37 CFR 1.121(g) does not apply in reissue applications.

Pursuant to 37 CFR 1.173(a), no amendment in a reissue application may enlarge the scope of the claims, unless “applied for within two years from the grant of the original patent.” Further, the amendment may not introduce new matter. See MPEP § 1412.03 for further discussion as to the time limitation on enlarging the scope of the patent claims in a reissue application.

All amendment changes must be made relative to the patent to be reissued. Pursuant to 37 CFR 1.173(d), any such changes which are made to the specification, including the claims but excluding “Large Tables” submitted in ASCII plain text as defined in 37 CFR 1.58(c), a “Computer Program Listing Appendix” as defined in 37 CFR 1.96(c), a “Sequence Listing” as defined in 37 CFR 1.821(c) and a “Sequence Listing XML” defined in 37 CFR 1.831(a), must be shown by employing the following “markings”:

• (A) The matter to be omitted by reissue must be enclosed in brackets; and
• (B) The matter to be added by reissue must be underlined.

I. THE SPECIFICATION

37 CFR 1.173(b)(1)(i) relates to the manner of making amendments to the specification other than the claims, “Large Tables” submitted in ASCII plain text (37 CFR 1.58(c)), a “Computer Program Listing Appendix” (37 CFR 1.96(c)), a “Sequence Listing” (37 CFR 1.821(c)) or a “Sequence Listing XML” (37 CFR 1.831(a)). It is also not to be used for making amendments to the drawings. Changes to "Large Tables" must be made in accordance with 37 CFR 1.58(g). Changes to a "Computer Program Listing Appendix" must be made in accordance with 37 CFR 1.96(c)(5). Changes to a "Sequence Listing" must be made in accordance with 37 CFR 1.825. Changes to a “Sequence Listing XML” must be made in accordnace with 37 CFR 1.835. See 37 CFR 1.173(b)(1)(ii).

All amendments submitted under 37 CFR 1.173(b)(1)(i), which include any deletions or additions, must be made by submission of the entire text of each added or rewritten paragraph with markings (single brackets and underlining), except that an entire paragraph of specification text may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. Applicant must indicate the precise point where any added or rewritten paragraph is located. All bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application. Thus, all paragraphs which are newly added to the specification of the original patent must be submitted as completely underlined each time they are re-submitted in the reissue application.

II. THE CLAIMS

37 CFR 1.173(b)(2) relates to the manner of making amendments to the claims in reissue applications. It is not to be used for making amendments to the remainder of the specification or to the drawings. 37 CFR 1.173(b)(2) requires that:

• (A) For each claim that is being amended by the amendment being submitted (the current amendment), the entire text of the claim must be presented with markings as defined above;
• (B) For each new claim added to the reissue by the amendment being submitted (the current amendment), the entire text of the added claim must be presented completely underlined;
• (C) A patent claim should be canceled by a direction to cancel that claim, there is no need to present the patent claim surrounded by brackets; and
• (D) A new claim (previously added in the reissue) should be canceled by a direction to cancel that claim.

Original patent claims are never to be renumbered; see 37 CFR 1.173(e). A patent claim retains its number even if it is canceled in the reissue proceeding, and the numbering of any added claims must begin after the last original patent claim.

Pursuant to 37 CFR 1.173(c), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is pending or canceled. The failure to submit the claim status will generally result in a notification to applicant that the amendment before final rejection is not completely responsive (see 37 CFR 1.135(c)). Such an amendment after final rejection will not be entered.

Also pursuant to 37 CFR 1.173(c), each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for all changes made in the claim(s), whether insertions or deletions). The failure to submit an explanation will generally result in a notification to applicant that the amendment before final rejection is not completely responsive (see 37 CFR 1.135(c)). Such an amendment after final rejection will not be entered.

III. THE DRAWINGS

37 CFR 1.173(a)(2) states that amendments to the original patent drawings are not permitted, and that any change to the drawings must be by way of 37 CFR 1.173(b)(3). See MPEP § 1413 for the manner of making amendments to the drawings in a reissue application.

Form paragraph 14.20.01 may be used to advise applicant of the proper manner of making amendments in a reissue application.

Form paragraph 14.21.01 may be used to notify applicant that proposed amendments filed before final rejection in the reissue application do not comply with 37 CFR 1.173(b).

Note that if an informal amendment is submitted after final rejection, form paragraph 14.21.01 should not be used. Rather, an advisory Office action should be issued using Form PTO-303 indicating that the amendment was not entered because it does not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications.

IV. ALL CHANGES ARE MADE VIS-À-VIS THE PATENT TO BE REISSUED

When a reissue patent is printed, all underlined matter is printed in italics and all brackets are printed as inserted in the application, in order to show exactly which additions and deletions have been made to the patent being reissued. Therefore, all underlining and bracketing in the reissue application should be made relative to the text of the patent, as follows. In accordance with 37 CFR 1.173(g), all amendments in the reissue application must be made relative to (i.e. vis-à-vis) the patent specification in effect as of the date of the filing of the reissue application. The patent specification includes the claims and drawings. If there was a prior change to the patent (made via a prior concluded reexamination certificate, reissue of the patent, certificate of correction, PTAB trial certificate, etc.), the first amendment of the subject reissue application must be made relative to the patent specification as changed by the prior proceeding or other mechanism for changing the patent. All amendments subsequent to the first amendment must also be made relative to the patent specification in effect as of the date of the filing of the reissue application, and not relative to the prior amendment.

A. The Subject Patent Already Has Underlining or Bracketing

If the original (or previously changed) patent includes a formula or equation already having underlining or bracketing therein as part of the formula or equation, any amendment of such formula or equation should be made by bracketing the entire formula and rewriting and totally underlining the amended formula in the re-presented paragraph of the specification or rewritten claim in which the changed formula or equation appears. Amendments of segments of a formula or equation should not be made. If the original patent includes bracketing and underlining from an earlier reissue, double brackets and double underlining should be used in the subject reissue application to identify and distinguish the present changes being made. The subject reissue, when printed, would include double brackets (indicating deletions made in the subject reissue) and boldface type (indicating material added in the subject reissue). If the original patent includes bracketing and underlining from an earlier reexamination, the reissue application must be presented as if the changes made to the original patent text via the reexamination certificate are a part of the original patent. Thus, all italicized text of the reexamination certificate is presented in the amendment (made in the reissue application) without italics. Further, any text found in brackets in the reexamination certificate is omitted in the amendment (made in the reissue application). Any canceled claims resulting from the reexamination will be lined through.

V. EXAMPLES OF PROPER AMENDMENTS

A substantial number of problems arise in the Office because of improper submission of amendments in reissue applications. In regard to status identifiers, examiners may accept an amendment even if the status identifier used is not a status identifier recommended by 37 CFR 1.173(b)(2) or 1.121(c).

The following examples are provided to assist in preparation of proper amendments to reissue applications.

A. Original Patent Description or Patent Claim Amended B. Cancellation of Claim(s) C. Presentation of New ClaimsD. Amendment of New Claims

An amendment of a “new claim” (i.e., a claim not found in the patent, that was previously presented in the reissue application) must be done by presenting the amended “new claim” containing the amendatory material, and completely underlining the claim, including the claim number. Examiners may accept an amendment even if the claim number is not underlined or the status identifier(s) used is not a status identifier recommended by 37 CFR 1.173(b)(2) or 1.121(c). Although 37 CFR 1.173(b)(2) does not require using the status identifier “new”, its use is recommended so that examiners can easily identify the presentation of new claim(s). The presentation cannot contain any bracketing or other indication of what was in the previous version of the claim. This is because all changes in the reissue are made vis-à-vis the original patent, and not in comparison to the prior amendment. Although the presentation of the amended claim does not contain any indication of what is changed from the previous version of the claim, applicant must point out what is changed in the “Remarks” portion of the amendment. Also, per 37 CFR 1.173(c), each change made in the claim must be accompanied by an explanation of the support in the disclosure of the patent for the change.

The following is one example to illustrate a proper amendment of a new claim:

E. Amendment of Original Patent Claims More Than Once

The following illustrates proper claim amendment of original patent claims in reissue applications:

Note that the second amendment must include the remaining changes previously presented in the first amendment, i.e., [cutting means] knife, as well as the new changes presented in the second amendment, i.e., serrated.

The word bone was presented in the first amendment and is now to be deleted in the second amendment. The word “bone” is NOT to be shown in brackets in the second amendment. Rather, the word “bone” is simply omitted from the claim, because “bone” never appeared in the patent. An explanation of the deletion should appear in the remarks.

The word notched which was presented in the first amendment is replaced by the word serrated in the second amendment. The word notched is being deleted in the second amendment and did not appear in the patent; accordingly, “notched” is not shown in any form in the claim. The word serrated is being added in the second amendment, and accordingly “serrated” is added to the claim and is underlined.

In the second amendment, the deletions of “notched” and “bone” are not changes from the original patent claim text and therefore are not shown in brackets in the second amendment. In both the first and the second amendments, the entire claim is presented only with the changes from the original patent text.

VI. ADDITIONAL EXAMPLES

• (A) For a reissue application, where the patent was previously reissued: As per MPEP § 1411, double underlining and double bracketing are used in the second reissue application to show amendments made relative to the first reissue patent
• (B) For a reissue application, where the patent was previously reexamined and a certificate has issued for the patent or the patent was subject to a trial before the PTAB and a certificate has issued for the patent:

  An amendment in the reissue application must be presented as if the changes made to the original patent text via the certificate are a part of the original patent. For example, all italicized text of the reexamination certificate is presented in the amendment (made in the reissue application) without italics. Further, any text found in brackets in the reexamination certificate is omitted in the amendment (made in the reissue application). A claim canceled by the certificate must be deleted by a direction to strike through the claim, i.e., the canceled claim(s) should be lined through, and not surrounded by brackets.

• (C) For a reissue application, where a certificate of correction has issued for the patent:

  An amendment in the reissue application must be presented as if the changes made to the original patent text via the certificate of correction are a part of the original patent. Thus, all text added by certificate of correction is presented in the amendment (made in the reissue application) without italics. Further, any text deleted by certificate of correction is entirely omitted in the amendment (made in the reissue application). A claim canceled by the certificate of correction must be deleted by a direction to strike through the claim, i.e., the canceled claim(s) should be lined through, and not surrounded by brackets.

• (D) For a reissue application, where a statutory disclaimer has issued for the patent:

  Any claim statutorily disclaimed is no longer in the patent, and such a claim cannot be amended. A disclaimed claim must be deleted by a direction to strike through the claim, i.e., the statutorily disclaimed claim(s) should be lined through, and not surrounded by brackets.

• (E) Making amendments in an application for reissue of a previously reissued patent:

  When a copy of a first reissue patent is presented as the specification of a second reissue application (filed as a reissue of a reissue), additions made by the first reissue will already be printed in italics, and should remain in such format. Thus, applicants need only present additions to the specification/claims in the second reissue application as double underlined text. Subject matter to be deleted from the first reissue patent should be presented in the second reissue application within sets of double brackets. Examples of the form for a twice-reissued patent (a reissue of a reissue) are found in Re. 23,558 and Re. 28,488. Double underlining and double bracketing are used in the second reissue application, while bold-faced type and double bracketing appear in the printed patent (the second reissue patent) to indicate further insertions and deletions, respectively, in the second reissue patent.

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