MPEP 1410.01
Reissue Applicant and Inventor's Oath or Declaration

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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1410.01    Reissue Applicant and Inventor's Oath or Declaration [R-08.2017]

I.    REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012

[Editor Note: See subsection II., below, for reissue applications filed before September 16, 2012.]

35 U.S.C. 251  Reissue of defective patents.

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  • (c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.

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37 C.F.R. 1.172 Reissue Applicant.

  • (a) The reissue applicant is the original patentee, or the current patent owner if there has been an assignment. A reissue application must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. All assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(c).
  • (b) A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.

37 C.F.R. 1.175  Reissue oath or declaration.

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  • (c) The inventor, or each individual who is a joint inventor of a claimed invention, in a reissue application must execute an oath or declaration for the reissue application, except as provided for in § 1.64, and except that the inventor's oath or declaration for a reissue application may be signed by the assignee of the entire interest if:
    • (1) The application does not seek to enlarge the scope of the claims of the original patent; or
    • (2) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.

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For reissue applications filed on or after September 16, 2012, the reissue applicant is the original patentee, or the current patent owner, if there has been an assignment. However the inventor, or each individual inventor who is a joint inventor of a claimed invention, must execute an oath or declaration for the reissue application, except as otherwise provided in 37 CFR 1.175(c). A reissue applicant may file a substitute statement in lieu of the inventor’s oath or declaration as provided for in 37 CFR 1.64 (see MPEP § 604). In addition, the inventor’s oath or declaration may be signed by the assignee of the entire interest if (a) the reissue application does not seek to enlarge the scope of the claims of the original patent (37 CFR 1.175(c)(1) ), or (b) the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest (37 CFR 1.175(c)(2) ).

For continuation or divisional reissue applications, a copy of the inventor’s oath or declaration from the earlier-filed reissue application may be used, provided that: (1) the inventor, or each joint inventor of a claimed invention, in the reissue application executed an inventor’s oath or declaration for the earlier-filed reissue application, except as provided in 37 CFR 1.64; (2) the continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or (3) the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest. Depending on the circumstances, either Form PTO/AIA/05, Reissue Application Declaration by the Inventor, or Form PTO/AIA/06, Reissue Application Declaration by the Assignee, may be used to prepare a declaration in a reissue application. These forms are reproduced in MPEP § 1414, which includes additional information on the content of reissue oaths or declarations, such as when the statement of at least one error in a copy of the inventor’s oath or declaration from the earlier-filed reissue application will be accepted by the Office.

II.    REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012

[Editor Note: See subsection I., above, for reissue applications filed on or after September 16, 2012.]

35 U.S.C. 251  (pre-AIA) Reissue of defective patents.

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The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.

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Pre-AIA 37 C.F.R. 1.172  Applicants, assignees.

  • (a) A reissue oath must be signed and sworn to or declaration made by the inventor or inventors except as otherwise provided (see §§ 1.42, 1.43, 1.47 ), and must be accompanied by the written consent of all assignees, if any, owning an undivided interest in the patent, but a reissue oath may be made and sworn to or declaration made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. All assignees consenting to the reissue must establish their ownership interest in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(b) of this chapter.
  • (b) A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.

For reissue applications filed before September 16, 2012, the reissue application must be made by the inventor or the person(s) applying for a patent in place of the inventor as provided in pre-AIA 37 CFR 1.42, 1.43, and 1.47 (see MPEP § 409.01(b) and § 409.03 et seq.), except that the application for reissue may be made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. See pre-AIA 35 U.S.C. 251, third paragraph.

The reissue oath must be signed and sworn to by all the inventors, or declaration made by all the inventors, except as otherwise provided in pre-AIA 37 CFR 1.42, 1.43, and 1.47. Alternatively, pursuant to pre-AIA 37 CFR 1.172, where the reissue application does not seek to enlarge the scope of any of the claims of the original patent, the reissue oath may be made and sworn to, or declaration made, by the assignee of the entire interest. Depending on the circumstances, either Form PTO/SB/51, Reissue Application Declaration by the Inventor, or Form PTO/SB/52, Reissue Application Declaration by the Assignee, may be used to prepare a declaration in a reissue application. These forms are reproduced in MPEP § 1414, which includes additional information pertaining to reissue oaths or declarations.

III.    ADDING OR DELETING AN INVENTOR

If an inventor is to be added in a reissue application, a proper reissue oath or declaration including the signatures of all of the inventors is required, except where the assignee of the entire interest can properly sign the reissue oath or declaration. If one or more inventors are being deleted in a reissue application, an oath or declaration must be supplied over the signatures of the remaining inventors, except where the assignee of the entire interest can properly sign the reissue oath or declaration. Note that although an inventor being deleted in a reissue application need not sign the oath or declaration, if that inventor to be deleted has any ownership interest in the patent (e.g., that inventor did not assign away their rights to the patent), the signature of that inventor must be supplied in a consent to the filing of the reissue application. See MPEP § 1410.02 as to consent of assignee and MPEP § 1412.04 as to correction of inventorship via reissue.