37 C.F.R. § 1.175

Inventor's oath or declaration for a reissue application

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(a) The inventor's oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.

(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.

(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.

(d) If errors previously identified in the inventor's oath or declaration for a reissue application pursuant to paragraph (a) of this section are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.

(e) The inventor's oath or declaration for a reissue application required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f), except that the provisions of § 1.53(f)(3) do not apply to a reissue application.

(f)(1) The requirement for the inventor's oath or declaration for a continuing reissue application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed reissue application may be satisfied by a copy of the inventor's oath or declaration from the earlier-filed reissue application, provided that:

(i) The inventor, or each individual who is a 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 for in § 1.64;

(ii) The continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or

(iii) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.

(2) If all errors identified in the inventor's oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.

(g) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1), will be placed in the file record of the reissue application, but may not necessarily be reviewed by the Office.

[77 FR 48821, Aug. 14, 2012, as amended at 80 FR 17964, Apr. 2, 2015]

Notes of Decisions

Cited in 84 cases (4 in the last 5 years), 1973–2023 · leading case: Dethmers Mfg. Co., Inc. v. Automatic Equip. Mfg Co., Defendant/cross-Appellant, 272 F.3d 1365 (Fed. Cir. 2001).

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Dethmers Mfg. Co., Inc. v. Automatic Equip. Mfg Co., Defendant/cross-Appellant, 272 F.3d 1365 (Fed. Cir. 2001). · cites it 13× “251; that the reissue patent was not directed to the same invention as the original patent, as required by 251; and that the reissue declaration was fatally defective because it failed to satisfy the requirements of 37 C.”

In re Keller, 642 F.2d 413 (C.C.P.A. 1981). · cites it 12× “A reissue oath or declaration filed under 37 CFR 1.175 subsection (a)(4) must also comply with both subsections (a)(5) and (a)(6).”

Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co., 23 F. Supp. 2d 974 (N.D. Iowa 1998). · cites it 13× “Requirements of the declaration At the time reissue of the ’240 patent was sought, the regulation stating the requirements for the reissue declaration, 37 C.F.R. § 1.175 , required that the declaration or oath include the following matter pertinent here: (1) When the applicant…”

Medrad, Inc. v. Tyco Healthcare Grp. Lp, 466 F.3d 1047 (Fed. Cir. 2006). · cites it 10× “Medrad did not submit supplemental reissue declarations regarding the over-claiming or inventorship errors as required by 37 C.F.R. § 1.175 . That reissue application issued as U.”

Capella Photonics, Inc. v. Cisco Sys., Inc., 77 F. Supp. 3d 850 (N.D. Cal. 2014). · cites it 3× “37 C.F.R. § 1.175 (a). Sometime around June 10, 2010, Capella sought reissue of what would become the patents-in-suit.”

Hewlett-Packard Co., Plaintiff/cross-Appellant v. Bausch & Lomb Inc., 882 F.2d 1556 (Fed. Cir. 1989). · cites it 3× “§ 251 (1982) and 37 C.F.R. § 1.175 (1988). The court rejected HP’s argument, however, that the improper oath also rendered claims 1-9, which were carried over unchanged from the original patent, invalid.”

In Re Leslie N. Wilder, James C. Whitney & Gary G. Matison, & Lanier Bus. Prods., Intervenor, 736 F.2d 1516 (Fed. Cir. 1984). · cites it 4× “OPINION Error Rejections The first order of business for the board and for this court is to determine whether appellants have satisfied the requirements of 35 U.”

Shockley v. Arcan, Inc., 248 F.3d 1349 (Fed. Cir. 2001). · cites it 7× “reissue patents, 37 C.F.R. § 1.175 (1997) (new Rule 1.175), applies to the '732 reissue, this court affirms the district court’s grant of summary judgment that the '732 reissue is not invalid.”

Nupla Corp. v. Ixl Mfg. Co., Inc., 114 F.3d 191 (Fed. Cir. 1997). · cites it 6× “RE 32,364 (“ ’364 patent”) is invalid since the declaration submitted pursuant to 37 C.F.R. § 1.175 was insufficient as it addressed only one of three material changes from the original claims; and (2) Nupla’s two registrations for the trademark CUSH-NGRIP, U.”

StairMaster Sports/Med. Prods., Inc. v. Groupe Procycle, Inc., 25 F. Supp. 2d 270 (D. Del. 1998). · cites it 9× “§ 251 and its accompanying regulation, 37 C.F.R. § 1.175 and therefore, the ’959 Patent is invalid.”

In Re James R. Amos, Chester K. Greathouse & David S. Riddle, 953 F.2d 613 (Fed. Cir. 1991). · cites it 4× “” The examiner objected to the declaration because the patentees had not “specif[ied] the errors relied upon, and how they arose or occurred” as expressly required by 37 C.F.R. § 1.175 (a)(5) (1988). The Manual of Patent Examining Procedure, at § 1414.”

Am. Hoist & Derrick Co., Cross-Appellee v. Sowa & Sons, Inc., Cross-Appellant, 725 F.2d 1350 (Fed. Cir. 1984). “Apparently, the reissue application was filed pursuant to 37 CFR 1.175(a)(4), now repealed. Thus, on making any amendment, AmHoist was required to submit a new oath.”

Show all 84 citing cases →

— 37 C.F.R. § 1.175(a) — 1 case

Dethmers Mfg. Co., Inc. v. Automatic Equip. Mfg Co., Defendant/cross-Appellant, 272 F.3d 1365 (Fed. Cir. 2001). “251; that the reissue patent was not directed to the same invention as the original patent, as required by 251; and that the reissue declaration was fatally defective because it failed to satisfy the requirements of 37 C.”

— 37 C.F.R. § 1.175(a)(3) — 1 case

In re Bose, 687 F.2d 432 (C.C.P.A. 1982).

— 37 C.F.R. § 1.175(a)(4) — 9 cases

In re Keller, 642 F.2d 413 (C.C.P.A. 1981). “A reissue oath or declaration filed under 37 CFR 1.175 subsection (a)(4) must also comply with both subsections (a)(5) and (a)(6).”

Baker Perkins, Inc., Appellant-Petitioner v. Werner & Pfleiderer Corp., Appellee-Respondent, 710 F.2d 1561 (Fed. Cir. 1983).

Howard A. Fromson, Appellant/cross-Appellee v. Advance Offset Plate, Inc., Appellee/cross-Appellant, 755 F.2d 1549 (Fed. Cir. 1985).

In re Dien, 680 F.2d 151 (C.C.P.A. 1982).

— 37 C.F.R. § 1.175(a)(5) — 5 cases

In re Keller, 642 F.2d 413 (C.C.P.A. 1981). “A reissue oath or declaration filed under 37 CFR 1.175 subsection (a)(4) must also comply with both subsections (a)(5) and (a)(6).”

In Re James R. Amos, Chester K. Greathouse & David S. Riddle, 953 F.2d 613 (Fed. Cir. 1991). “” The examiner objected to the declaration because the patentees had not “specif[ied] the errors relied upon, and how they arose or occurred” as expressly required by 37 C.F.R. § 1.175 (a)(5) (1988). The Manual of Patent Examining Procedure, at § 1414.”

In Re Leslie N. Wilder, James C. Whitney & Gary G. Matison, & Lanier Bus. Prods., Intervenor, 736 F.2d 1516 (Fed. Cir. 1984). “OPINION Error Rejections The first order of business for the board and for this court is to determine whether appellants have satisfied the requirements of 35 U.”

Patecell v. United States, 16 Cl. Ct. 644 (Ct. Cl. 1989).

— 37 C.F.R. § 1.175(a)(6) — 1 case

In re Keller, 642 F.2d 413 (C.C.P.A. 1981). “A reissue oath or declaration filed under 37 CFR 1.175 subsection (a)(4) must also comply with both subsections (a)(5) and (a)(6).”

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