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

[Timothy Snowden]

As an update to everyone on the 'practical' side, I talked to a very 
friendly and knowledgeable agent at OPLA, who indicated that they 
suspected the USPTO would take the position that the continuation 
broadening reissue application would be an improper 'conversion' from 
design to utility because the 'invention' of the 'original patent' was a 
design.

Not saying I agree, but it's helpful to confirm what you'd likely be facing.

On 9/25/2025 1:03 PM, Timothy Snowden via Designs wrote:
>
> Yes, and when I wrote that email I was momentarily thinking about 37 
> CFR 1.57c (which I know better, but I was focusing on the 
> design-v-utility question and had a brain freeze). Let's assume for 
> now (since it's a question that I know what the answer is based on 
> what the facts turn out to be) that each patent includes an express 
> incorporation by reference, since that's my normal practice (not my 
> patent chain though so I have to double check that).
>
> Summarizing my thoughts right now (assuming we have express inc. by 
> ref.): the argument is not out of the question but the (assuming 
> express) incorporation by reference aspect is likely an unsettled 
> question. Based on George's comments (and my gut feel), the PTO is 
> probably going to reject it, so one who followed this approach would 
> likely have to plan to take it to the CAFC.
>
> Thank you again to all - especially David, Rick, Scott, and George!
>
> On 9/25/2025 11:35 AM, David Boundy wrote:
>
>>     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?
>>
>>
>> When I first read your post, that was my first question.  If each 
>> application in the chain uses the words "incorporate by reference," 
>> 37 CFR § 1.57(c),  then I think you've got a plausible argument, even 
>> if the incorporation crosses between utility and design.  If any one 
>> link in the chain is broken, you don't.  (You emphasize the word 
>> "/expressly/" -- that suggests you might be hosed, 37 CFR § 1.57(b) 
>> clearly won't work -- "inadvertent."  A priority claim is /*not*/ an 
>> incorporation by reference.)
>> *
>> *
>
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