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

[Rick Neifeld]

- -  *his is the SAME "invention disclosed in the original patent"* - -

But that is not enough.  "the claims must satisfy the statutory original
patent requirement."  Antares Pharma, Inc. v. Medac Pharma Inc. and Medac
Gmbh, 2014-1648 (Fed. Cir. 11/17/2014). And I suspect an open legal
question is whether an incorporation by reference could, as a matter of
law, be sufficient to satisfy that requirement.



On Thu, Sep 25, 2025 at 10:48 AM Timothy Snowden via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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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>
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>


-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com;
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