[Patentpractice] [Designs] Continuation Broadening Reissue confirmation of my understanding

[Timothy Snowden]

Just to add on, here's how I'm thinking through 35 USC 251:

(a) ...

  * by reason of the patentee claiming more or less than he had a right
    to claim in the patent, /*- the applicant had the right to claim
    design or utility in the original patent*/
  * the Director shall, on the surrender of such patent and the payment
    of the fee required by law, reissue the patent for the invention
    disclosed in the original patent, and in accordance with a new and
    amended application, */ - this is the SAME "invention _disclosed _in
    the original patent"/*
  * for the unexpired part of the term of the original patent. */- the
    design patent would last longer than the utility patent -- but let's
    assume a terminal disclaimer would probably be required to the other
    utility patents/*
  * No new matter shall be introduced into the application for
    reissue*/ - no new matter is being introduced -- assume that direct
    quotes are being used from the utility disclosure incorporated by
    reference/*

(b) The Director may issue several reissued patents for distinct and 
separate parts of the thing patented, upon demand of the applicant, and 
upon payment of the required fee for a reissue for each of such reissued 
patents.*/ - wouldn't design and utility be "distinct and separate parts 
of the thing patented"? Just like in the original priority chain where 
both utility and design were continuations of an original application./*

On 9/25/2025 9:18 AM, Timothy Snowden via Designs wrote:
>
> 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.
>
> 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.
>
> *QUESTION: If I file 2 applications in this order:*
>
>  1. a proper broadening reissue application of the design patent
>     (claiming a patentably distinct design that is properly supported
>     in the original application), and then
>  2. a /continuation/ broadening reissue (not a regular/Bauman type)
>     */utility/* application
>
> *_Would the USPTO reject the /continuation /reissue as improperly 
> trying to convert from a design to a utility? (MPEP 1457) _*
>
> *_Does anybody have any experience (practical with the USPTO's 
> response) or thoughts (based on the statutes)?_*
>
> Just to be clear: broadening reissue application #1 would be a design. 
> Application #2 (continuation reissue application) would be a utility.
>
> Here's where I'm stuck: because it is a continuation /reissue 
> /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.
>
> However, I can also see that:
>
>   * there was an error in the design - applicant claimed less design
>     than they should have.
>   * 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.
>   * 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.
>
> Thanks in advance!
>
>
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