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

[George Raynal]

FWIW, I’ve seen the Board reject this line of argument and distinguish what an application disclosure supports claiming from what an applicant has a right to claim in a particular issued patent type, concluding “the lack of a design claim in a utility patent does not render that patent inoperative, and the patentee in this case did not have the right to claim the ornamental appearance in the utility patent.”

Prior to 2012, MPEP 1457 only had section IV prohibiting “conversion to utility patent” but 8th edition Rev 9 added section V prohibiting “conversion to design patent.”

From: Designs <designs-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Designs
Sent: Thursday, September 25, 2025 10:47 AM
To: designs at oppedahl-lists.com; Patentpractice (Oppedahl-Lists) <patentpractice at oppedahl-lists.com>
Cc: Timothy Snowden <tdsnowden at outlook.com>
Subject: Re: [Designs] Continuation Broadening Reissue confirmation of my understanding

CAUTION: This email originated from outside of the organization. Do not click links or open attachments unless you recognize the sender and know the content is safe.


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!


-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250925/5587a071/attachment.html>