There are currently seven ways to correct or amend an issued patent:
- Reissue (the topic of this article),
- Certificate of Correction,
- Inter partes review,
- Post Grant Review,
- Covered Business Method Review.
While a book could be written on each, this article presents a brief summary of Reissue – what it is, and how and why it is used.
Reissue of “Defective” Patents
If a patent, through error, is deemed wholly or partially inoperative or invalid, by reason of a defective specification or drawing(s), or through a patentee claiming more or less than they had a right to claim, the Director of the United States Patent and Trademark Office may reissue the patent upon surrender of the original patent, payment of a fee and filing of a new and amended application. The term of the reissue will be for the unexpired part of the term of the original patent. It is important to note that defects can be corrected and claims can be amended, but no new matter can be introduced. Furthermore, the claims in the newly filed application for reissue must be for the same general invention as that disclosed as being the invention in the original patent1.
There are many instances where an error in an issued patent would justify that a reissue application be filed. A defective specification or drawing(s), claims that are too narrow or too broad, a misunderstanding of the invention by the patent practitioner thus resulting in faulty claims, or incorrect or faulty priority references all warrant the filing of a reissue application. If there are issues related to novelty or obviousness of the claims, reexamination is usually the better tool for the job.
Timeframes to File and the Special Case of the Broadening Reissue
If the Applicant believes that he did not receive claims commensurate with the scope of his invention, but that his claims are unduly narrow, he has two years from the grant of the original patent in which to file what is known as a “broadening reissue.” If a broadening reissue3 is filed to broaden the scope of the claims, the Applicant must not only comply with this two year rule, but also must clearly indicate that the reissue application is for a broadening reissue in the reissue application papers. Other than the specific situation of a broadening reissue, a reissue application can be filed at any time as long as the patent has not expired. For any reissue application, the oath or declaration must state why the Applicant believes there is a basis for reissue (i.e., what error is being relied upon).
The Rule Against Recapture
A reissue will not be granted to “recapture” claimed subject matter which was surrendered in prosecution in order to obtain the original patent. There is a three step test that is often used for recapture analysis5 to determine if recapture has occurred. These steps are used by practitioners, Examiners, and the courts to ensure that recapture does not occur. For those interested, a quick internet search is sure to provide the specifics.
If, for example, a restriction requirement2 (or election of species) was made in a patent application and the Applicant did not file a divisional application on the non-elected invention, but instead caused only the elected invention to issue as a patent, the non-elected invention cannot be recovered by filing a reissue application. The failure of the Applicant to timely file a divisional application directed to the non-elected invention is not considered a defect that would make the patent eligible for reissue, and if the Applicant attempts to file a reissue application to recover the non-elected invention, the claims will be rejected.
The Examination Process
Reissue applications are examined like other patent applications, upon filing of the reissue application and related filing papers, payment of fees and offer to surrender the original patent. It is common for the same Examiner who issued the original patent to be assigned to the reissue application. Reissue applications are acted on by the Examiner in advance of other applications. There is usually, however, a two month delay period where the reissue application is not acted upon by the Examiner sooner than two months after the announcement of the filing of the reissue application has appeared in the Official Gazette published by the USPTO. This allows a member of the public to submit pertinent information prior to the Examiner’s action. This pertinent information is submitted in the form of a Protest4 . If the reissue application is involved in litigation, other special considerations apply, and the reissue application may then be made special above and beyond other reissue applications, or prosecution may be suspended by the Examiner.
It should be noted that application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender will take effect upon reissue of the patent. Prior to October 21, 2004, the original physical Letters Patent (the “ribbon copy”) was required to be surrendered to the USPTO, but that is no longer a requirement.
The original patent remains in effect until a reissue is granted. If the reissue application is rejected or abandoned, the original patent remains enforceable.
Enforceability of the Original Patent
If the claims of the reissued patent and the original patent are substantially identical6, the reissued patent constitutes a continuation of the original patent and infringement can be asserted since the date of the original patent. If, however, the claims of the reissue are not “substantially identical” to the claims of the original patent, enforcement is tied to the claims of the reissued patent and the date of reissue.
Doctrine of Intervening Rights
Also defined in 35 U.S.C. 252 is the doctrine of intervening rights. Should a party make decisions based on the scope of the claims in the original patent, and later find that through a reissue it is now infringing, the Court where the matter is litigated may allow that party to continue to make, purchase, offer to sell or use within the United States or import into the United States, anything patented by the reissued patent. This essentially limits a patent holder’s ability to enforce claims that are different in scope than the original patent in certain situations.
And there is more…
Reissue, like many patent law related topics, is complex. This article touches on some of the basics, but there are numerous fact patterns that must be considered in determining if a reissue application is the correct way to resolve an error. If the error is simple and of a clerical nature, a certificate of correction may be the right approach. Errors that would make the patent partially or wholly inoperative or invalid are usually best taken care of before the patent is put to task in an enforcement action. Whether Reissue is the right way to go depends on a careful review of all of the facts at hand, usually by a patent practitioner working closely with the patentee.
- 35 U.S.C. 251
- The Limited Monopoly® February 2010
- Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, CAFC
- The Limited Monopoly® June 2008
- 37 C.F.R. §1.291(a)
- 35 U.S.C. 252
Authors Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) and John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) are both registered patent agents and licensed professional engineers. They offer several courses that qualify for PDH credits. More information can be found at www.patenteducation.com. Copyright 2015 Robert Gunderman, Jr. and John Hammond.
Note: This short article is intended only to provide cursory background information, and is not intended to be legal advice. No client relationship with the authors is in any way established by this article.
GRAPHIC CREDIT: 1970 Lotus Super Seven
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