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<p>I've encountered a fairly uncommon scenario and just want to run
this thought process by all of you to double check myself. I'm
cross-posting to designs and patent practice because it relates to
both.</p>
<p>Assume there's a proper continuation chain of applications (all
issued) including utilities and designs. A design patent is the
only patent issued in the last 2 years, and so the only patent
eligible for broadening reissue. Assume for the sake of discussion
that subject matter recapture and original invention are not an
issue here.</p>
<p><b>QUESTION: If I file 2 applications in this order:</b></p>
<ol>
<li>a proper broadening reissue application of the design patent
(claiming a patentably distinct design that is properly
supported in the original application), and then</li>
<li>a <i>continuation</i> broadening reissue (not a regular/Bauman
type) <b><i>utility</i></b> application</li>
</ol>
<b><u>Would the USPTO reject the <i>continuation </i>reissue as
improperly trying to convert from a design to a utility? (MPEP
1457) </u></b>
<p><b><u>Does anybody have any experience (practical with the
USPTO's response) or thoughts (based on the statutes)?</u></b></p>
<p>Just to be clear: broadening reissue application #1 would be a
design. Application #2 (continuation reissue application) would be
a utility.</p>
<p>Here's where I'm stuck: because it is a continuation <i>reissue
</i>application, does the inability to 'convert' apply? I can see
an argument that it is still a reissue application of the design
patent, so no go. </p>
<p>However, I can also see that: </p>
<ul>
<li>there was an error in the design - applicant claimed less
design than they should have. </li>
<li>There is no new matter because the design patent incorporated
by reference (at least via the priority chain) the entire
specification of the parent utility applications. </li>
<li>Assume there is no extension of time -- the utility patent 20
year from initial filing term would be less than the design
patent 15 year from issue term.</li>
</ul>
<p>Thanks in advance!</p>
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