[Patentpractice] [Designs] Continuation Broadening Reissue confirmation of my understanding
David Boundy
DavidBoundyEsq at gmail.com
Thu Sep 25 17:26:48 UTC 2025
MPEP 1457(IV) and (V) seem fishy to me. Neither cites any law. If every
step in the chain has § 1.57(c) incorporations by reference, then crossing
from utility to design seems to me to be classic "more or less than he had
a right to claim" and "failure of patentee’s attorney to appreciate the
full scope of the invention during prosecution" that the PTO can't abrogate
by guidance. Tim proposes to get there via a continuation -- I've only
done two reissues in the last two decades, but I don't see any reason why
not. It will be an uphill climb against the MPEP (you will have to do a
good deal of legal research to make *sure* you're right, and then convince
the CRU that the MPEP needs to be amended), but if it's valuable enugh, it
seems doable to me. *Vas-Cath v. Marhurkar* seems on point to me. (Is
there any difference between "written description" and reissue "same
invention?" They seem to be essentially the same. But I've never dug into
it.)
President Trump’s Executive Order 13892, *Promoting the Rule of Law Through
Transparency and Fairness in Civil Administrative Enforcement and
Adjudication*, § 3 reminds all agencies of long-standing requirements of
law: subregulatory guidance documents may not be enforced against the
public, only against executive branch employees.
*Sec. 3* . *Proper Reliance on Guidance Documents.* Guidance documents may
not be used to impose new standards of conduct on persons outside the
executive branch except as expressly authorized by law …. When an agency
takes an administrative enforcement action, engages in adjudication, or
otherwise makes a determination that has legal consequence for a person, it
must establish a violation of law by applying statutes or regulations. The
agency may not treat noncompliance with a standard of conduct announced
solely in a guidance document as itself a violation of applicable statutes
or regulations. …
The Executive Order doesn't have force of law for or against applicants,
but I don't know any executive branch employee that's looking for an
opportunity to get cross-wise with this president. I can send you
underlying case law that *does* have force of law, and says the same thing
as the Executive Order.
On Thu, Sep 25, 2025 at 12:16 PM George Raynal via Patentpractice <
patentpractice at oppedahl-lists.com> 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 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!
>
>
>
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