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

[Timothy Snowden]

So, starting with Antares -- "the essential inquiry under the ‘original 
patent’ clause of § 251 . . . is whether one skilled in the art, reading 
the specification, would identify the subject matter of the new claims 
as invented and disclosed by the patentees.”

I can't find any decisions addressing incorporation by reference.

Also, if the 'original patent' didn't /expressly /incorporate all 
parents by reference, then Lockwood v American Airlines 1997 (requiring 
'continuity of disclosure') could prohibit reaching back?

On 9/25/2025 9:57 AM, Rick Neifeld wrote:
> - - */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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>
>
> -- 
> 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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