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

[Timothy Snowden]

Thank you George -- this was my growing suspicion and is exactly what I 
was looking for (in addition to the separate issue of verifying actual 
continuity of disclosure).

I really appreciate the help from all -- it really helps to reality 
check so I can look into things deeper and make sure I'm not too far off 
on either side (no you can't -- too easy to give as a cop-out and lose 
rights, or yes you can and just run up expense and headache).

On 9/25/2025 11:16 AM, George Raynal wrote:
>
> 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 8^th 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 
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>
> 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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