1400

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1400 Correction of Patents

1401
Reissue

1401.01
Requisites

1401.02
By Whom Filed and to Whom Granted

1401.03
Notice in Original File

1401.04
Offer To Surrender Original Patent and When
Such Patent Is Returned

1401.05
Use of Original Drawing

1401.06
Form of Specification and Claims

1401.07
New Matter

1401.08
The Reissue Oath or Declaration

1401.09
Examination of Reissue

1401.09 (a)
Adjudication of Original Patent

1401.10
Restriction and Election of Species

1401.10
10 (a) Divisional Reissue Application

1401.11
Allowance and Issue

1401.12
Reissue Filed While Patent Is in Interference

1402
Certificate of Correction-Office Mistake

1402.01
Applicant's Mistake

1402.02
Handling of Request for Certificate of Cor-
rection
1403
Statutory Disclaimer

Errors in a patent may be corrected in three
ways, namely by reissue, by the issuance of a
certificate which becomes a part of the patent,
and by disclaimer.

## 1401 Reissue [R-31]

35 U.S.C. 251. Reissue of defective patents. When-
ever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or draw-
ing, or by reason of the patentee claiming more or less
than he had a right to claim in the patent, the Com-
missioner 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,
for the unexpired part of the term of the original
patent. No new matter shall be introduced into the
application for reissue,

The Commissioner 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.

The provisions of this title relating to applications
for patent shall be applicable to applications for re-
issue of a patent, except that application for reissue
may be made and sworn to by the assignee of the
entire interest if the application does not seek to
enlarge the scope of the claims of the original patent.

No reissued patent shall be granted enlarging the
scope of the claims of the original patent unless applied
for within two years from the grant of the original
patent.

The usual grounds for a reissue are that the
claims are too narrow or too broad, or that the
disclosure has inaccuracies. A reissue was
granted in Brenner v. State of Israel, 862 O.G.
661; 158 USPQ 584, where the only ground
urged was failure to file a certified copy of the
original foreign application to obtain the right
of foreign priority under 35 U.S.C. 119 before
the patent was granted. The correction of mis-
joinder of inventors was held to be a ground
for reissue in Ex parte Scudder, 169 USPQ 814.

When a reissue application is filed within
two years from the date of the original patent,
a rejection on the ground of lack of diligence
or delay in filing the reissue should not be made.

A. "claim" for the benefit of an earlier filing
date in a foreign country under 35 U.S.C. 119
must be made in a reissue application even
though such a claim was made in the applica-
tion on which the original patent was granted.
However, no additional certified copy of the
foreign application is necessary. The procedure
is similar to that for "Continuing Applica-
tions" in § 201.14 (b).

The heading on printed copies will not be
carried forward to the reissue from the original
patent. Therefore, it is important that the file
wrapper be endorsed under "Claims Foreign
Priority."

## 1401.01 Requisites

Rule 171. Application for reissue. An application
for reissue must contain the same parts required for
an application for an original patent, complying with
all the rules relating thereto except as otherwise pro-
vided, and in addition, must comply with the require-
ments of the rules relating to reissue applications. The
application must be accompanied by a certified copy of
an abstract of title or an order for a title report, to
be placed in the file, and by an offer to surrender the
original patent (rule 178).

1401.02 By Whom Filed and to
Whom Granted [R-25]

Rule 172. Applicants, assignees. (a) Reissue applica-
tions must be signed and sworn to, or declaration made,

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by the inventors except as otherwise provided (see
rules 42, 43, 47), and must be accompanied by the writ-
ten assent of all assignees, if any, owning an undivided
interest in the patent, but a reissue application may
be made and sworn to or declaration made by the
assignee of the entire interest if the application does
not seek to enlarge the scope of the claims of the
original patent.

(b) A reissue will be granted to the original patentee,
his legal representatives or assigns as the interest may
appear.

The examiner must inspect the abstract of
title to determine whether rule 172 has been
complied with.

## 1401.03 Notice in Original File

Rule 179. Notice of reissue application. When an
application for a reissue is filed, there will be placed
in the file of the original patent a notice stating that
an application for reissue has been filed. When the
reissue is granted or the reissue application is other-
wise terminated, the fact will be added to the notice
in the file of the original patent.

The notice is entered on the file wrapper of
the original patent and pertinent data filled in
by the Application Branch. When the reissue
is granted or the prosecution of the reissue ap-
plication is terminated, it is important that the
Record Room be informed of that fact by writ-
ten memo and the information is applied by the
Record Room on the notice in the patented file.

## 1401.04 Offer To Surrender Original Patent and When Such Patent Is Returned [R-31]

Rule 178. Original patent. The application for a re-
issue must be accompanied by an offer to surrender
the original patent. The application should also be
accompanied by the original patent, or if the original
is lost or inaccessible, by an affidavit or declaration to
that effect. The application may be accepted for exami-
nation in the absence of the original patent or the affida-
vit or declaration, but one or the other must be supplied
before the case is allowed. If a reissue be refused, the
original patent will be returned to applicant upon his
request.

The examination of the reissue application
on the merits is made even though the offer to
surrender the original patent or an affidavit or
declaration to the effect that the original is lost
case the examiner should require one of them in
or inaccessible has not been received, but in such
the first action.

If applicant requests the return of his patent,
on abandonment of the reissue application, it
will be sent to him by the Mail and Correspond-
ence Branch and not by the examining group.

## 1401.05 Use of Original Drawing [R-25]

Rule 174. Drawings. (a) The drawings upon which
the original patent was issued may be used in reissue
applications if no changes whatsoever are to be made
in the drawings. In such cases, when the reissue
application is filed, the applicant must submit a tem-
porary drawing which may consist of a copy of the
printed drawings of the patent or a photoprint of the
original drawings securely mounted by pasting on
sheets of drawing board of the size required for
original drawing, or an order for the same.

(b) Amendments which can be made in a reissue
drawing, that is, changes from the drawing of the
patent, are restricted.

Applicant must submit a mounted copy of
the original drawing or "an order for same"
(rule 174) if transfer of the original drawing
is contemplated.

Provided that no alteration whatsoever is to
be made in the drawings, including canceling
an entire sheet, the drawings of the original
patent may be used in lieu of new drawings.

The mounted copy of the drawing will be
marked "Informal, AFE" (Admitted for Ex-
amination) by the Draftsman, but the exam-
iner should disregard this since the informality
will be corrected by formal transfer of the
drawing before final allowance.

When the reissue case is ready for allowance,
the file with the mounted copy and the patented
file and drawing are forwarded to the Applica-
tion Branch for formal transfer of the original
drawing to the reissue case. No formal request
from applicant for such transfer is necessary.
See § 608.02 (k).

## 1401.06 Form of Specification and Claims [R-22]

Rule 173. Specification. The specification of the re-
issue application must include the entire specification
and claims of the patent, with the matter to be omit-
ted by reissue enclosed in square brackets; and any
additions made by the reissue must be underlined, so
that the old and the new specifications and claims may
be readily compared. Claims should not be renumbered
and the numbering of claims added by reissue should
follow the number of the highest numbered patent
claim. No new matter shall be introduced into the
specification.

Cut up soft copies of the original patent,
with each COLUMN securely mounted on a
separate sheet may be used in preparing the
specification and claims. It should be noted
that amendments to the reissue applications
should not be prepared in this way. In reissue
applications, both the descriptive portion and

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1401.09 (a)

the claims must be amended as specified in rule
121 (a). Note rule 121 (e).

An example of the form for a twice-reissued
patent is found in Re. 23,558.

## 1401.07 New Matter [R-25]

New matter, that is, matter not present in
the patent, is excluded from a reissue applica-
tion with even greater strictness than in an
ordinary case. The claims in the reissue case
must also be for matter which the applicant
had the right to claim in the original patent.
New matter may exist by virtue of the omis-
sion of a feature or of a step in a method.
See United States Industrial Chemicals, Inc.
v. Carbide & Carbon Chemicals Corp. 1942
C.D. 751; 315 U.S. 668; 53 USPQ 6.

## 1401.08 The Reissue Oath or Decla- ration of [R-25]

Rule 175. Reissue oath or declaration. (a) Appli-
cants for reissue, in addition to complying with the
requirements of the first sentence of rule 65, must also
file with their applications a statement under oath or
declaration as follows :

(1) That applicant verily believes the original
patent to be wholly or partly inoperative or invalid,
and the reasons why.

(2) When it is claimed that such patent is so in-
operative or invalid "by reason of a defective specifi-
cation or drawing," particularly specifying such
defects.

(3) When it is claimed that such patent is inop-
erative or invalid "by reason of the patentee claiming
more or less than he had a right to claim in the
patent," distinctly specifying the excess or insufficiency
in the claims.

(4) Particularly specifying the errors relied upon,
and how they arose or occurred.

(5) That said errors arose "without any deceptive
intention" on the part of the applicant.

(b) Corroborating affidavits or declarations of others
may be filed and the examiner may, in any case, require
additional information or affidavits or declarations
concerning the application for reissue and its object.

The question of the sufficiency of the reissue
oath or declaration filed under rule 175 must
in each case be reviewed and decided personally
by the primary examiner.

The reissue oath or declaration must point out
very specifically what the defects are and how
the errors arose. The statements of the oath or
declaration must be of facts and not conclusions.

An allegation that the specification is insuffi-
cient merely because the claims are too narrow
ordinarily satisfies paragraph (a) (3) of the
rule.

A broadened reissue claim is one which
brings within its scope any subject matter not

embraced by the patent claims. A claim broad-
ened in one limitation is a broadened claim
though it may be narrower in other details.

Relative to paragraph (a) (4) of the rule, de-
liberate cancelation of a claim in the original
patent application is ordinarily regarded as
evidence that the failure to include claims to
the involved subject matter in the patent is
not due to error. Claims drawn to substantially
the same subject matter are not ordinarily suc-
cessfully urged in the reissue. An error arising
from a lack of understanding or knowledge of
applicant's attorney as to the real invention may
be an acceptable reason for reissue. However,
where an alleged lack of understanding by ap-
plicant or his attorney is based on a new factual
situation, which did not exist at the time the
patent was taken out, reissue is improper.

A ruling that the oath or declaration is insuffi-
cient should be made a ground of rejection of
all the claims.

## 1401.09 Examination of Reissue

Rule 176. Examination of reissue. An original claim,
if re-presented in the reissue application, is subject to
reexamination, and the entire application will be exam-
ined in the same manner as original applications, sub-
ject to the rules relating thereto, excepting that divi-
sion will not be required. Applications for reissue will
be acted on by the examiner in advance of other
applications.

Reissue cases are "special" and remain "spe-
cial" even though applicant does not respond
promptly.

Examination of a reissue application in-
volves two aspects, first, it is examined in the
same manner as an original application and
second, it must be examined for compliance
with the reissue statute and rules. The prose-
cution of the original patent must be carefully
studied for its bearing on the reissue questions.

While an original claim is subject to re-
examination, the rejection of such a claim con-
stitutes the rejection of a previously allowed
claim and must be personally considered by the
primary examiner with great care. To be
effective, a reference must be prior to the effec-
tive filing date of the original patent.

# 1401.09(a) Adjudication of Original Patent [R-31]

When a reissue application is filed, the Ex-
aminer should determine whether the original
patent has been adjudicated by a court. The
decision of the court and also other papers in
the suit may give information essential to the

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# 1401.10

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examination of the reissue. The patented file
will contain notices of the filing and termina-
tion of infringement suits on the patent, which
notices are required by law to be filed by the
clerks of the District Courts. These notices
do not indicate if there was an opinion by the
court, nor whether a decision was published.
Shepard's Federal Citations and the cumula-
tive digests of the United States Patents Quar-
terly, both of which are in the Law Library,
contain tables of patent numbers giving the
citation of published decisions concerning the
patent. Where papers are not otherwise con-
veniently obtainable, the applicant may be re-
quested to supply or lend copies of papers and
records in suits, or the Office of the Solicitor
may be requested to obtain them from the court.
The information thus obtained should be care-
fully considered for its bearing on the proposed
claims of the reissue, particularly when the re-
issue application was made in view of the
holding of a court.

## 1401.10 Restriction and Election of Species [R-22]

The examiner may not require restriction in
a reissue application (rule 176 in § 1401.09). If
the original patent contains claims to different
inventions which the examiner may neverthe-
less consider independent and distinct, and the
reissue application also claims the same inven-
tions, the examiner should not require restric-
tion between them or take any other action
with respect to the question of plural inven-
tions. Restriction is entirely at the option, in
the first instance, of the applicant. If the reissue
application contains claims to an independent
and distinct invention which was not claimed in
the original patent, these claims may be treated
by a suitable rejection, such as: lack of in-
operativeness of, or defect in, the original pat-
ent; lack of error ; or not being for matter which
might have been claimed in the original patent.

When the original patent contains claims to
a plurality of species and the reissue applica-
tion contains claims to the same species, elec-
tion of species should not be required even
though there is no allowable generic claim. If
the reissue application presents claims to spe-
cies not claimed in the original patent, election
of species should not be required, but the added
claims may be rejected on an appropriate
ground which may be lack of inoperativeness
of, or defect in, the original patent and lack

of error in obtaining the original patent. Most
situations require special treatment.

# 1401.10(a) Divisional Reissue Appli- cations [R-25]

As is pointed out in the preceding section
the examiner cannot require restriction in re-
issue applications, and if the original patent
contains several independent and distinct in -.
ventions they can only be granted in separate
reissues if the applicant demands it. The fol-
lowing rule sets forth the only possibility of
divisional reissue applications.

Rule 177. Reissue in divisions. The Commissioner
may, in his discretion, cause several patents to be is-
sued for distinct and separate parts of the thing
patented, upon demand of the applicant, and upon
payment of the required fee for each division. Each
division of a reissue constitutes the subject of a sepa-
rate specification descriptive of the part or parts of the
invention claimed in such division; and the drawing
may represent only such part or parts, subject to the
provisions of rules 83 and 84. On filing divisional re-
issued applications, they shall be referred to the Com-
missioner. Unless otherwise ordered by the Commis-
sioner, all the divisions of a reissue will issue simul-
taneously; if there be any controversy as to one
division, the others will be withheld from issue until
the controversy is ended, unless the Commissioner
shall otherwise order.

## 1401.11 Allowance and Issue [R-22]

The specifications of reissue patents will be
printed in such a manner as to show the
changes over the original patent by printing
material omitted by reissue enclosed in heavy
brackets [ ] and material added by reissue in
italics. Rule 173 (see § 1401.06) requires the
specification of a reissue application to be
presented in a specified form, specifically de-
signed to facilitate this different manner of
printing, as well as for other reasons.

The printed reissue specification will carry
the following heading which will be added by
the Issue Branch :

"Matter enclosed in heavy brackets [ ] ap-
pears in the original patent but forms no part
of this reissue specification; matter printed
in italics indicates the additions made by
reissue."

The examiners should see that the specifica-
tion is in proper form for the new style of
printing. Matter appearing in the original
patent which is omitted by reissue should be
enclosed in heavy brackets, while matter added
by reissue should be underlined. All the
claims of the patent should appear in the spec-

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# 1401.11

ification, with omitted claims enclosed in
brackets. New claims should follow the num-
ber of the highest numbered patent claims
and be underlined to indicate italics. The pro-
visions of rule 173 that claims should not be
renumbered applies to the reissue application

as filed. When the reissue is allowed, any
claims remaining which are additional to the
patent claims are renumbered in sequence
starting with the number next higher than the
number of claims in the original patent. There-
fore, the number of claims allowed will not

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necessarily correspond to the number of the last
claim in the reissue application, as allowed.

In the case of reissue applications which
have not been prepared in the indicated man-
ner, the Examiner may request from the appli-
cant a clean copy of the reissue specification
prepared in the indicated form. However, if
the deletions from the original patent are
small, the reissue application can be prepared
for issue by putting the bracketed inserts at
the appropriate places and suitably numbering
the claims.

All parent application data on the original-
patent file wrapper should be placed on the re-
issue file wrapper, if it is still proper.

The list of references to be printed at the
end of the reissue specification should include
both the references cited during the original
prosecution as well as the references cited dur-
ing the prosecution of the reissue application,
and the heading on the sheet on which the
references are listed amended by adding or
the original patent.

NOTE .- Transfer of drawing, section 1401.05.

There is no issue fee for reissue applications
in which the patent being reissued was granted
prior to October 25, 1965. For reissue applica-
tions in which the patent being reissued was
granted after October 25, 1965, the issue fee is
the same as for original applications. (35
U.S.C. 41 (a)2).

## 1401.12 Reissue Filed While Patent Is in Interference [R-20]

If an application for reissue of a patent is
filed while the patent is involved in interfer-
ence, that application must be called to the at-
tention of the Commissioner before any action
by the Examiner is taken thereon.

When an application for reissue of a patent
is filed while the patent is involved in inter-
ference, a letter with titling relative to the inter-
ference is placed in the interference file and in
the reissue application file, and a copy thereof
is sent to each of the interfering parties, giving
notice of the filing of the reissue application.
See section 1111.08.

## 1402 Certificates of Correction-Of- fice Mistake [R-22]

35 U.S.C. 254. Certificate of correction of Patent
Office mistake. Whenever a mistake in a patent, in-
curred through the fault of the Patent Office, is clearly
disclosed by the records of the Office, the Commissioner
may issue a certificate of correction stating the fact
and nature of such mistake, under seal, without charge,
to be recorded in the records of patents. A printed

copy thereof shall be attached to each printed copy
of the patent, and such certificate shall be considered
as part of the original patent. Every such patent,
together with such certificate, shall have the same
effect and operation in law on the trial of actions for
causes thereafter arising as if the same had been
originally issued in such corrected form. The Com-
missioner may issue a corrected patent without charge
in lieu of and with like effect as a certificate of
correction.

Rule 322. Certificate of correction of Office mistake.

(a) A certificate of correction under 35 U.S.C. 254,
may be issued at the request of the patentee or his as-
signee. Such certificate will not be issued at the request
or suggestion of anyone not owning an interest in the
patent, nor on motion of the Office, without first noti-
fying the patentee (including any assignee of record)
and affording him an opportunity to be heard.

(b) If the nature of the mistake on the part of the
Office is such that a certificate of correction is deemed
inappropriate in form, the Commissioner may issue a
corrected patent in lieu thereof as a more appropriate
form for certificate of correction, without expense to
the patentee.

Mistakes incurred through the fault of the
Office are the subject of Certificates of Correc-
tion under Rule 822. If such mistakes are of
such a nature that the meaning intended is ob-
vious from the context, the Office may decline
to issue a certificate and merely place the cor-
respondence in the patented file, where it
serves to call attention to the matter in case
any question as to it arises.

Letters which merely call attention to errors
in patents, with a request that the letter be
made of record in the patented file, will not be
acknowledged. Unless notification to the con-
trary is received within thirty days, it may be
assumed that such letters have been made of
record as requested.

In order to expedite all proper requests, a.
Certificate of Correction should be requested
only for errors of consequence. Letters mak-
ing errors of record should be utilized when-
ever possible.

Each issue of the Official Gazette numeri-
cally lists all United States patents having
Certificates of Correction. The list appears
under the heading "Certificates of Correction
for the week of (date)."

## 1402.01 Applicant's Mistake [R-22]

35 U.S.O. 255. Certificate of correction of appli-
cant's mistake. Whenever a mistake of a clerical or
typographical nature, or of minor character, which
was not the fault of the Patent Office, appears in a
patent and a showing has been made that such mis-
take occurred in good faith, the Commissioner may,
upon payment of the required fee, issue a certificate

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of correction, if the correction does not involve such
changes in the patent as would constitute new matter
or would require re-examination. Such patent, to-
gether with the certificate, shall have the same effect
and operation in law on the trial of actions for causes
thereafter arising as if the same had been originally
issued in such corrected form.

Rule 323. Certificate of correction of applicant's mis-
take. Whenever a mistake of a clerical or typograph-
ical nature or of minor character which was not the
fault of the Office, appears in a patent and a showing
is made that such mistake occurred in good faith, the
Commissioner may, upon payment of the required fee,
issued a certificate of correction, if the correction does
not involve such changes in the patent as would con-
stitute new matter or would require reexamination.

Rule 323 relates to the issuance of Certifi-
cates of Correction for the correction of errors
which were not the fault of the Office. A mis-
take is not of a minor character if the re-
quested change would materially affect the
scope or meaning of the patent.

35 U.S.C. 256. Misjoinder of inventor. Whenever
a patent is issued on the application of persons' as
joint inventors and it appears that one of such persons
was not in fact a joint inventor, and that he was in-
cluded as a joint inventor by error and without any
deceptive intention, the Commissioner may, on applica-
tion of all the parties and assignees, with proof of the
facts and such other requirements as may be imposed,
issue a certificate deleting the name of the erroneously
joined person from the patent.

Whenever a patent is issued and it appears that a
person was a joint inventor, but was omitted by error
and without deceptive intention on his part, the Com-
missioner may, on application of all the parties and
assignees, with proof of the facts and such other re-
quirements as may be imposed, issue a certificate add-
ing his name to the patent as a joint inventor.

The misjoinder or nonjoinder of joint inventors shall
not invalidate a patent, if such error can be corrected
as provided in this section. The court before which
such matter is called in question may order correction
of the patent on notice and hearing of all parties con-
cerned and the Commissioner shall issue a certificate
accordingly.

Rule 324. Correction of error in joining inventor.
Whenever a patent is issued and it appears that there
was a misjoinder or non-joinder of inventors and that
such misjoinder or omission occurred by error and
without deceptive intention, the Commissioner may, on
application of all the parties and the assignees and
satisfactory proof of the facts, or on order of a court
before which such matter is called in question, issue a
certificate deleting the misjoined inventor from the
patent or adding the non-joined inventor to the patent.

The "satisfactory proof of facts" required by
Rule 324 must be of the same type and character
as the proof required to justify converting an

application, as described in section 201.03. An
oath or declaration of the type required by Rule
65 corresponding to the newly asserted inven-
torship must be submitted, together with the
original patent for attachment of the certificate.

## 1402.02 Handling of Requests for Certificates of Correction [R-22]

Requests for certificates of correction will be
forwarded by the Correspondence and Mail
Branch, to the Solicitor's Office, where they will
be listed in a permanent record book.

Determination as to whether an error has
been made, the responsibility for the error, if
any, and whether the error is of such a nature
as to justify the issuance of a certificate of cor-
rection will be made by the Solicitor's office.
If a report is necessary in making such deter-
mination, the case will be forwarded to the ap-
propriate Group or Branch with a request that
the report be furnished. If no certificate is
to issue, the party making the request is so
notified by the Solicitor's Office, and the re-
quest, report, if any, and copy of the commu-
nication to the person making the request are
placed in the file and entered thereon under
"Contents" by the Solicitor's Office. The case
is then returned to the patented files. If a cer-
tificate is to issue, it will be prepared and for-
warded to the person making the request by
the Issue and Gazette Branch. In that case,
the request, the report, if any, and a copy of
the letter transmitting the certificate of correc-
tion to the person making the request will be
placed in the file and entered thereon under
"Contents".

Applicants, or their attorneys or agents, are
urged to submit the text of the correction on a
special Certificate of Correction Form, PO-
1050, which can serve as the final copy for use
in direct offset printing of the certificate of
correction. The request for issuance of the cer-
tificate (together with the fee where the error
is due to applicant's mistake) should be in a
separate letter accompanied by two copies of
Form PO-1050 and a self-addressed envelope.

Where the recommended format is used and
approved, one copy of Form, PO-1050, duly
certified will be returned to the person making
the request for attachment to his copy of the
patent. This procedure eliminates the necessity
for returning the patent when requesting a
certificate of correction. The other copy of the
Certificate of Correction Form PO-1050 is used
for direct offset printing of copies of the cer-
tificate which are attached to every printed
copy of the patent subsequently sold or
distributed.

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To facilitate the use of the Form PO-1050,
the public may obtain as many copies as needed
from the Correspondence and Mail Branch or
from the receptionist in the lobby of building
3 at Crystal Plaza.

Below is a sample form illustrating a variety
of corrections and the suggested manner of set-
ting out the format. Particular attention is
directed to:

a. Identification of the exact point of
error by reference to column and line num-
ber of the printed patent.

b. Conservation of space on the form by
typing single space, beginning two lines
down from the printed message.

c. Starting the correction to each sepa-
rate column as a sentence, and using semi-
colons to separate corrections within said
column, where possible.

d. Two inch space left blank at bottom
for signature of attesting officer.

e. Use of quotation marks to enclose the
exact subject matter to be deleted or cor-
rected; use of double hyphens (- - ) to en-
close subject matter to be added, except for
formulas.

f. Where a formula is involved, setting
out only that portion thereof which is to be
corrected.

Where the recommended format is not used or
where the nature of the subject matter is such
that it is more expedient to print by the direct
image offset technique, e.g., entire sheets of
drawing or pages of corrections, intricate chemi-
cal formulas, etc., Issue and Gazette Branch
will prepare the certificate as heretofore.
Patentee will receive a copy for attachment to
his copy of the patent.

# UNITED STATES PATENT OFFICE CERTIFICATE OF CORRECTION

Patent No.

Dated April 1, 1969
James W. Worth

It is certified that error appears in the above-
identified patent and that said Letters Patent is
hereby corrected as shown below:

In the drawings, Sheet 3, Fig. 3, the reference
numeral 225 should be applied to the plate element
attached to the support member 207. Column 7, lines 45
to 49, the left-hand formula should appear as follows :

Rg
CX"Z
OF3

Column 10, formula XXXV, that portion of the formula
reading

CH
should read
ỢN

Formula XXXVII, that portion of the formula reading
"-CH.CH-" should read - - - CHCH- --. Column 2,
line 68 and column 3, lines 3, 8 and 13, for the claim
reference numeral "2", each occurrence, should read
-- 1 --. Column 10, line 16, cancel beginning with "12.
A sensor device" to and including "tive strips." in
column 11, line 8, and insert the following claim :

12\. A control circuit of the character set forth
in claim 1 and for an automobile having a con-
vertible top, and including ; means for moving said
top between raised and lowered retracted position ;
and control means responsive to said sensor relay
for energizing the top moving means for moving
said top from retracted position to raised position.

## 1403 Statutory Disclaimer [R-29]

35 U.S.C. 253. Disclaimer. Whenever, without any
deceptive intention, a claim of a patent is invalid the
remaining claims shall not thereby be rendered invalid.
A patentee, whether of the whole or any sectional inter-
est therein, may, on payment of the fee required by law,
make disclaimer of any complete claim, stating therein
the extent of his interest in such patent. Such dis-
claimer shall be in writing, and recorded in the Patent
Office; and it shall thereafter be considered as part
of the original patent to the extent of the interest
possessed by the disclaimant and by those claiming
under him.

In like manner any patentee or applicant may dis-
claim or dedicate to the public the entire term, or any
terminal part of the term, of the patent granted or to be
granted.

Rule 321. Statutory disclaimer. (a) A disclaimer
under 35 U.S.C. 253 must identify the patent and the
claim or claims which are disclaimed, and be signed
by the person making the disclaimer, who shall state
therein the extent of his interest in the patent. A
disclaimer which is not a disclaimer of a complete
claim or claims may be refused recordation. A notice
of the disclaimer is published in the Official Gazette
and attached to the printed copies of the specification.
In like manner any patentee or applicant may disclaim
or dedicate to the public the entire term, or any termi-
nal part of the term, of the patent granted or to be
granted.

(b) A terminal disclaimer, when filed in an applica-
tion to obviate a double patenting rejection, must in-
clude a provision that any patent granted on that
application shall be enforceable only for and during
such period that said patent is commonly owned with
the application or patent which formed the basis for
the rejection. See rule 21 for fee.

The examination as to formal matters is
done by the Issue and Gazette Branch.

Terminal disclaimers may affect the prosecu-
tion of other applications. They are brought
to the examiner's attention by the Issue and

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Gazette Branch which attaches a label to the
file wrapper and forwards the file containing
them to the examining group after having a
title search made, endorsing the paper on the
"Contents" and otherwise insuring that the pat-
ent, if issued, will be properly headed.

# TERMINAL DISCLAIMER IN PENDING APPLICATION PRACTICE

Since the claims of pending applications are
subject to cancellation, amendment or renum-
bering, a terminal disclaimer directed to a par-
ticular claim or claims will not be accepted;
the disclaimer must be of a terminal portion of
the term of the entire patent to be granted. The
statute does not provide for conditional dis-
claimers and accordingly, a proposed dis-
claimer which is made contingent on the
allowance of certain claims cannot be accepted.
The disclaimer should identify the disclaimant
and his interest in the application and should
specify the date when the disclaimer is to be-
come effective. An acceptable form for such a
disclaimer is as follows :

To the Commissioner of Patents:

Your petitioner, John Doe, residing at
and
State of

in the county of
represents that he is (here
state exact interest of disclaimant and, if he
is an assignee, set out the liber and page or reel
and frame where the assignment is recorded)

of Application No.
filed on the
day of
19 __ for
Your
petitioner hereby disclaims all that portion of
the term of any patent to be issued on the said
application subsequent to
19
The disclaimer must be accompanied by the
statutory fee.

FORM 53-TERMINAL DISCLAIMER TO OBVIATE
A DOUBLE PATENTING REJECTION
To the Commissioner of Patents :

· Your petitioner,
residing at

in the county of
and
State of
represents that he is (here
state exact interest of the disclaimant and, if he
is an assignee, set out the liber and page or reel
and frame where the assignment is recorded)
of application Serial No.
filed on the
day of
19 __ for
Your petitioner,
hereby disclaims
the terminal part of any patent granted on the
above-identified application, which would ex-
tend beyond the expiration date of Patent No.
and hereby agrees that any patent so
granted on the above-identified application
shall be enforceable only for and during such
period that the legal title to said patent shall
be the same as the legal title to United States
Patent No.
this agreement to run with
any patent granted on the above identified ap-
plication and to be binding upon the grantee,
its successors or assigns.

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