Patent It Yourself - PDF Archive

408 | Patent it YOURSELF
file a terminal disclaimer. If the claims of the CIP are not
patentably different from those of the parent case, you must
file a terminal disclaimer to avoid double patenting.
If you’re filing the CIP by mail, you must use the same
procedure (Rule 53(b)) as outlined above for filing a
divisional when the parent case will issue, except substitute
or check “continuation-in-part” for “divisional” in the
Transmittal Letter (Form 10-2) and specification. Don’t
forget the filing fee and postcard.
If you’re filing the CIP electronically, use the same
procedure as above for filing a continuation or divisional
electronically. Also use the checklist in Chapter 10. The new
subject matter in the CIP and any claims directed to it will
be entitled to the CIP’s filing date, not the filing date of the
parent case.
As with continuation and divisional applications, you
also have to file an IDS cover letter (Form 10-5) and the
actual IDS Forms (10-6) (use a photocopy of the IDS in your
parent case but change the Serial Number and the Filing
Date). File the IDS when you file the CIP or up to three
months later. However, you don’t have to file the references
again if your IDS cover letter refers to the IDS in the prior
case. Just type the following on Form 10-5:
“Pursuant to Rule 98(d), the references listed on attached
Forms SB/08 (A and B) are not enclosed since these were
supplied in the parent case, Ser. Nr. / .”
If you want to delete any inventors when you file a CIP,
you may do so by including a simple request on a separate
form. All inventors named on the prior applications should
sign.
If you’re filing an independent application (rather than
a CIP), do it in the usual manner (see Chapters 8 through
10), except that you can add the following sentence to the
CROSS-REFERENCE TO RELATED APPLICATION part
of specification:
“This application is related to application Ser. Nr.
/ , Filed , now patent Nr.
, granted .”
If you want to abandon any parent case, you can do so in
a separate letter or by not responding to an Office Action.
CAUTION
20-Year Term Warning. The 20-year term warning
for continuation applications in Section B also applies to CIP
applications.
F. Reissue Applications
As stated in MPEP 201.05, “a reissue application is an
application for a patent that takes the place of an unexpired
patent that’s defective in some one or more particulars.” Parts
1400 to 1401.12 of the MPEP discuss reissue applications
extensively. Suppose you’ve received a patent and believe
that the claims are not broad enough, that they’re too broad
(you’ve discovered a new reference), or that there are some
significant errors in the specification. To remedy this, you
can file an application to get your original patent reissued at
any time during its term. (See “If You Want to Broaden the
Claims by Reissue,” above.) The reissue patent will take the
place of your original patent and expire the same time as
the original patent would have expired.
To file a reissue application you must:
• Reproduce the entire specification of the original
application (a copy of the printed patent pasted one
column per page is acceptable), putting brackets
around matter to be canceled and underlining matter
to be added. When the reissue patent issues, it will
include the brackets and underlining.
• Supply a request for a title report on the original patent
(see Fee Schedule for amount) and offer to surrender
the original patent deed.
• Provide a declaration stating you believe the original
patent to be wholly or partially inoperative or invalid
and referring to and discussing at least one error in the
patent. See Patent Rules 171-179.
Reissue patents are relatively rare and are identified
by the letters “RE” followed by a five-digit number, for
example, “Patent RE 26,420.”
Although the procedure has been somewhat simplified
recently, it is still relatively complicated, so I suggest that
you consult a patent lawyer if you are interested in filing a
reissue.
CAUTION
Reissue Warning. If you file a reissue, all of the
claims of your original patent will be examined and can be
rejected. Thus you should consider whether you want to take
this chance before filing a reissue.
G. Statutory Invention Registration
(SIR) and Defensive Publications
Suppose you’ve filed a U.S. application and for some reason
don’t wish it to issue as a patent, or can’t obtain a patent on
it. However, you want to be absolutely sure that no one else