Divisional-reissue
From Patentbarquestions
[from MyPatentBar]
(MPEP 1400, Broadening Reissue)
Question #16 from the October 2003(AM) patent bar exam is in the Prometric database.
Recent test takes have noted that the inventor, Tribell, is periodically swapped out with another name.
16. Tribell files a patent application for her aroma therapy kit on November 29, 1999, which issues as a patent August 7, 2001. She tries to market her kit
but all her prospects are concerned that her patent claims are not sufficiently broad. On September 5, 2001, Tribell asks a registered practitioner for advice
on what to do to improve her ability to market her aroma therapy kit. At the consultation the practitioner learns that in the original patent application,
Tribell had a number of claims which were subjected to a restriction requirement, but were nonelected and withdrawn from further consideration.
The practitioner also determines that the claims in the patent obtained by Tribell were narrower than the broader invention disclosed in the specification,
and the cited references may not preclude patentability of the broader invention. Which of the following is the best course of action to pursue
in accordance with the patent laws, rules and procedures as related to the MPEP?
(A) Tribell should file a reissue application under 35 USC 251 within two years of the issue of the patent,
broadening the scope of the claims of the issued patent.
(B) Tribell should file a reissue application under 35 USC 251 any time during the period of enforceability of the patent to broaden the scope of the claims
of the issued patent, and then file a divisional reissue application of the first reissue application on the nonelected claims that were subjected to a restriction requirement
in the nonprovisional application which issued as a patent.
(C) Tribell should simultaneously file two separate reissue applications under 35 USC 251, one including an amendment of broadening the claims
in the original patent, and the other including the nonelected claims that were subjected to a restriction in the nonprovisional application which issue as a patent.
(D) Tribell should immediately file a divisional application under 37 CFR 1.53(b) including the nonelected claims that were subjected to a restriction requirement
in the original application.
(E) Tribell should immediately file a reissue application under 35 USC 251, including the nonelected claims that were subjected to a restriction requirement
in the original application.
The answer is to file a reissue to broaden the claims. A divisional reissue cannot be filed because not claiming restricted claims is not an “error”
that can be considered in a reissue application. See MPEP 1402, Grounds for Filing.
ANSWER: (A) is the most correct answer. 35 USC § 251, MPEP §1402 (5th paragraph). MPEP § 1402 states that one on the “most common bases for filing a
reissue application [is] (A) the claims are too narrow or too broad.” The claims may be broadened in a reissue application filed by the inventor
within two tears from the patent issue date. (B) is incorrect since the 4th paragraph of 35 USC §251 states that 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. (C) and (E) are
incorrect. MPEP § 1402, sixteenth paragraph. An applicant’s failure to timely file a divisional application while the original application is still pending
is not considered to be an error correctable via reissue. See In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). (D) is incorrect.
MPEP § 201.06. IN order to claim benefit under 35 USC § 120 to a parent application, a divisional application must be filed while the parent patent
application is still pending.
