As logn as the Initial Reissue Application is Filed within Two Years, Subsequent Broadening Continuation Reissue Applications can be filed Any Time

In re Staats, [2010-1443] (March 5, 2012) [DYK, O'Malley, Reyna] The Federal Circuit reversed and remanded the BPAI's rejection of claims as being improperly broadened by a reissue filed more than two years after issuance.
DISCUSSION: Staats filed a broadening reissue application within two years from the issuance of the patent relating to the the first preferred embodiment of the invention. While the reissue application was pending, but more than two years from the issuance of the patent, Staats filed a second broadening reissue application relating to the first preferred embodiment. While the second reissue patent application was pending, well almost seven years after the issuance of the patent, Staats filed a third broadening reissue application, and eventually included claims directed to a second embodiment. These were rejected by the Examiner as untimely because they were not related to the subject matter of the original broadening reissue application, and the BPAI affirmed. The Federal Circuit reversed, finding In re Doll, 419 F.2d 925 (C.C.P.A. 1970), which held that the Section 251 time limit applies only to the filing of the first broadening reissue application. The Federal Circuit rejected the PTO 's attempt to distinguish Doll because the subject matter of the later filed broadening reissue application was not related to original reissue application. The Federal Circuit said that In re Doll made no such distinction, and in any event a different approach would be "unmanageable".

Everyone Makes Mistakes; But the Patentee Has to Fix Them All

Everyone makes mistakes, but when a mistake occurs in a patent, regardless of who is at fault, the patent may not have full force and effect unless and until the patent is corrected. At first blush the Fig. 12 from U.S. Patent No. 8,075,302 might appear to be of a transparent device, but it is supposed to be "an exploded view of a preferred embodiment of the dispensing and mixing head showing the static mixer, the mixing block, seal plate, valving block, compound pin valves, O-rings, packing, valve actuating air cylinder, and associated connecting and mounting hardware." Furthermore the Figure in the patent is not the Figure that the applicant submitted. How the image disappeared is the Patent Office's problem, but the fact that it disappeared is the patentee's problem. The specification may be incomplete unless and until the patent is corrected, by reissue or a Certificate of Correction

Design Patent Claim Drafting

While the words of a design patent claim are standardized, that does not mean that there is no art to drafting a design patent. A design patent claims the design "as shown and described". Thus the scope of the claim is controlled by controlling what is shown and how it is described. U.S. Patent No. D456,915 is an interesting example of controlling the scope of a design patent claim through the use of dashed lines and description. The invention, an eggnog-colored candle top with a sprinkled nutmeg-like topping, is defined solely by dashed lines. This means that the claim is not limited to any particular shape, and essentially covers randomly dispersed dots on the top of a candle. Also interesting is the attempt to cover color (eggnog) with a black and white drawing solely through written description and the submission of informal drawings.

Proper preparation of a design patent means thoughtful preparation of the drawings, and careful drafting of the description.