| Patents > Search Colections > MPEP > 1406 Citation and Consideration of References Cited in Original Patent [R-3] - 1400 Correction of Patents |
|
|
|
Go to MPEP - Table of Contents
1406 Citation and Consideration of References Cited in Original Patent [R-3] - 1400 Correction of Patents
1406 Citation and Consideration of References Cited in Original Patent [R-3]
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. **>The requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS has been eliminated, unless required by the Office. 37 CFR 1.98(a)(2) requires
(A) a legible copy of each foreign patent,
(B) each publication or that portion which caused it to be listed,
(C) each pending unpublished U.S. application unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system. The requirement in 37 CFR 1.98(a)(2)(iii) for a legible copy of the specification, including the claims and drawings of each cited pending U.S. patent application (or portion of the application which caused it to be listed) is sua sponte waived where the cited pending application is stored in the Office' s IFW system. See Waiver of the Copy Requirement in 37 CFR 1.98 for Cited Pending U.S. Patent Applications, 1287 O.G. 163 (Oct. 19, 2004),
(D) all other information or that portion which caused it to be listed.
See MPEP § 609.04(a). 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 >other than a U.S. patent or U.S. patent application publication< 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 **>PTO/SB/08< submitted by applicant that a reference has been considered.
The Inventors Assistance Center is available to help you on patent matters.Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the webmaster@uspto.gov. While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website. |
|
|
Go to MPEP - Table of Contents
=online
business system 
=fees 
=forms
=help 
=laws/regulations 
=definition
(glossary)