Patents > Search Collections > MPEP > 1406 Citation and Consideration of References Cited in Original Patent [R-7] - 1400 Correction of Patents

Go to MPEP - Table of Contents

browse before

1406 Citation and Consideration of References Cited in Original Patent [R-7] - 1400 Correction of Patents

1406 Citation and Consideration of References Cited in Original Patent [R-7]

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 legible copy of:<

(A) **each foreign patent*>;<

(B) each publication or that portion which caused it to be listed, >other than U.S. patents and U.S. patent application publications unless required by the Office;<

(C) **>for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion; and<

(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 >that was cited in the original patent< 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 **>consider that reference and therefore, will not list that reference on the PTO-892. If that reference was listed by the reissue applicant on a PTO/SB/08 form but a copy has not been provided, the examiner will line-through the reference to indicate that the reference has not been considered<.

browse after

KEY: =online business system =fees =forms=help =laws/regulations =definition (glossary) 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