A reissue application may be filed to correct an error made without any deceptive intent in the original patent. In order to qualify for a reissue, the patent must be deemed wholly or partly inoperative or invalid as a result of the error. The most common reasons for filing a reissue include; too narrow or too broad of claims, inaccuracies in the disclosure, an incorrectly claimed foreign priority, or lastly a failure to make reference to or an incorrectly made reference to prior copending applications. Reissues may not be filed for minor typing errors.

There are usually a few questions pertaining to reissue applications on the patent bar exam. Know the basics of reissue applications and at least familiarize yourself with the specifics, especially Certificates of correction. The PTO will most likely ask about foreign priority in reference to reissues, broadening claims in a reissue and how to handle amendments to reissues.

 

1401 Reissue
The provisions of 35 U.S.C. 251 permit the reissue of a patent in order to correct an
error in the patent made without any deceptive intention and provide the criteria for the reissue patent.

35 U.S.C. 251 Reissue of defective patents.
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less then he had a right to claim in the 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, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue. 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. The provisions of this title relating to applications for patent shall be applicable to applications for reissue 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.

1402 Grounds for filing
a reissue patent is filed in order to correct an error in the patent which was made without
any deceptive intention, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid
an error in the patent arises from an error in the preparation and/or prosecution of the application
a reissue may be based on a drawing correction that is substantive in nature
there must be at least one error
little errors such as spelling, grammar, typographical, editorial or clerical do not factor in as reasons for a reissue

the patent must be "deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent"

a practitioner's failure to appreciate the full scope of the claims is not an error correctable through a reissue

a patent which is not enabling or which does not disclose the best mode may not be corrected by reissue
such a patent is fatally defective

failure to timely file a divisional application is not considered an "error" and proper grounds for filing a reissue application

the most common reasons for filing a reissue include:
too narrow or too broad of claims
inaccuracies in the disclosure
an incorrectly claimed foreign priority date
if the applicant failed to make reference to or incorrectly made reference to prior copending applications

in order to file for the reissue of an issued patent, an applicant must show that the mistakes made in the initial patent application were "unintentional", "unavoidable" and without "deceptive intent"
no new matter may be entered in a reissue

in the situation where it is necessary to submit for the first time both the claim for priority and the certified copy of the priority document in the reissue application, and the utility or plant application which became the patent to be reissued was filed on or after November 29, 2000, the reissue applicant will have to file a petition for unintentionally delayed priority claim under 37 CFR 1.55(c) in addition to filing a reissue application

1403 Diligence in filing
1. a reissue application can be granted a filing date without an oath or declaration, or without the payment of the filing fee, search fee, or examination fee
2. when a patent is requested to be reissued:
a. the rights to the original patent are given up
b. the physical surrender of the original patent is no longer necessary
c. the new application is treated as entirely new, therefore, all the fees will still apply
the written consent of all assignees is required
3. if the changes made to the patent are so extensive that reading and understanding the specification is difficult, a clear, typed copy of the specification may be submitted if accompanied by a petition under 37 C.F.R. 1.183

1410 Content of reissue application

§ 1.171 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 provided, and in addition, must comply with the requirements of the rules relating to reissue applications.

an application for reissue must contain the same parts required for an original patent application
it must comply with all the rules relating thereto except as otherwise
provided, and in addition, must comply with the requirements of the rules relating to reissue applications

the reissue oath must be signed and sworn to by all the inventors, or a declaration made by all the inventors

when a patent is requested to be reissued:
the rights to the original patent are given up
the new application is treated as entirely new, therefore, all the fees will still apply
the written consent of all assignees is required

where the reissue application does not seek to enlarge the scope of any claims of the original patent, the reissue oath may be made and sworn to by the assignee of the entire interest

a retyped specification is not acceptable in a reissue application
the full copy of the printed patent in double column format must be used

Assignees:
in regards to reissues, it will be presumed that an assignee does exist unless otherwise stated
if all the assignees cannot give consent for the filing of the reissue, a petition may be sent to the Office of petitions

if the patent is not assigned, the reissue applicant should affirmatively state that the patent is not assigned

a reissue will be examined upon acceptance of the petition, but it will neither be allowed or issued until the consent of all the assignees is given

an assignee must establish ownership by:
filing evidence of a chain of title from the original owner to the assignee in the reissue application
specifying where such evidence is recorded in the Office

where the submission establishes the assignee's ownership to the patent, ownership to the reissue application will be presumed

1411 Form of specification
1. amendments may be made by physically incorporating the changes within the specification or by providing a separate amendment paper
2. a broadened claim can be presented in a reissue application after the two year period even though the broadened claim presented after the two years is different than the broadened claim presented within the two year period

1412 Content of claims
Recapture of claims:
A reissue application will not be granted in order to "recapture" claimed subject matter which was surrendered in the original application to obtain the original patent.

an example to help clear this up:
if an inventor wrote claim 1 broadly in the original application and then subsequently narrowed the scope of patent protection through an amendment which added the limitations of claim 2 during the original prosecution, that inventor cannot later enlarge the claims back to the scope of original claim 1 in a reissue application

the recapture doctrine prevents claims from being recaptured:
a reissue application may not be filed in order to broaden claims back to their original form where the claims were mistakenly narrowed during the original prosecution to avoid the prior art

impermissible recapture in an application exists:
if the limitation now being omitted or broadened in the present reissue was originally presented/argued/stated in the original application to make the claims allowable over a rejection or objection made in the original application

facts about recapture:
recapture occurs when a claim is broadened, adding limitations narrows claims
recapture does not apply to continuation applications
the twoyear date relates to the broadening of reissue applications, not the issue of recapture

35 U.S.C. 251 prescribes a 2 year limit for filing applications for broadening reissues:
no reissue patent shall be granted that enlarges the scope of the original patent unless it is applied for within two years from the grant of the original patent

the proper test to determine if reissue claims are for the same invention as that in the original patent is "an essentially factual inquiry confined to the objective intent manifested by the original patent"

reissue claims satisfy the appropriate criteria if:
the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification
nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application

a patentee may file a reissue application to permit consideration of process claims which qualify for 35 U.S.C. 103(b) treatment if a patent is granted on an application entitled to the benefit of 35 U.S.C. 103(b)

although recapture rule and prosecution history estoppel are similar, prosecution history estoppel relates to efforts by a patentee to expand the effective scope of an issued patent through the doctrine of equivalents
arguments alone can cause a surrender of subject matter that may not be recaptured in a reissue
"late claiming" was long ago discredited, particularly in the context of reissue applications

Broadening of claims:
A broadened claim may be presented within two years from the grant of the original patent in a reissue application. Claims reading on subject matter not covered by the original claims are broader.

an applicant may not enlarge the scope of the claims in a patent during reexamination:
however, since a dependent claim is construed to contain all the limitations of the claim from which it depends, the dependent claim must be at least as narrow as the independent claim from which it depends and thus does not broaden the patent

broadening of claims is not permitted
a claim would be considered broadened if the patent owner would be able to sue any party for infringement who previously could not have been sued for infringement

the inclusion of an additional step in a chemical process claim would generally appear to narrow the scope of that claim

a claim that has been broadened in a reissue as compared to its scope in the patent is not a broadened reissue claim if it is narrower than, or equal in scope to, any other claim which appears in the patent
dependent claim 2 is broadened via the reissue, but independent claim 1 on which it is based is not broadened
claim 2 must be at least as narrow as claim 1 and is thus not a broadened reissue claim

intervening rights:
if the claims are broadened, entities that were carrying out acts or planning to carry out acts that would otherwise be infringement may have the right to continue those acts
any prior liability for past infringement may be wiped out

a broadened claim can be presented after two years from the grant in a broadening reissue which was filed within two years form the grant

where any intention to broaden is indicated in the reissue application within the two years, a broadened claim can subsequently be presented in the reissue after two years

if an intention to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing reissue application after two years

reissue:
it is appropriate to apply for a broadening reissue if within a 2 year time limit
an amendment presenting further broadened claims after 2year period is appropriate if laterpresented claims are supported by the original reissue oath broadening of a reissue does not preclude the presentation of narrower claims

a patentee may file a reissue application to permit the consideration of article of manufacture claims which are functional descriptive material stored on a computerreadable medium, where these article claims correspond to the process or machine claims which have been patented

an unusual type of broadening may arise where the patent owner adds a limitation to patent claims which are to a process of making an intermediate so as to now claim a process of making a final product

Correcting inventorship:
correction of the misjoinder of inventors has been held to be a ground for reissue

it is appropriate to use a certificate of correction when:
the only change being made in the patent is to correct the inventorship
all parties are in agreement and the inventorship issue is not contested

where a reissue application seeks to correct inventorship in the patent and the inventors sign the reissue oath or declaration, the correct inventive entity must sign the reissue oath or declaration

to correct inventorship through a reissue application when the provisions of 35 U.S.C. 256 and 37 C.F.R. 1.324 do not apply, you should correct the inventorship through 35 U.S.C. 251

an assignee of partial interest in a patent may not file a reissue application to correct inventorship where the other coowner did not join in the reissue application and has not consented to the reissue proceeding

where a reissue to correct inventorship also changes the claims to enlarge the scope of the patent claims, the signature of the correct inventive entity is needed
the reissue application can still be filed with a petition under 37 C.F.R. 1.47 without a particular inventor's signature, as the assignee controls correction of inventorship 1413 Drawings

if there are no changes to the drawing of an original patent, the same drawings may be
used for the reissue application
a letter should be written requesting the transfer and copy of original drawings
a new drawing sheet must be provided for reissues
the prior reissue practice of transferring drawings from the patent file has been eliminated, since clean photocopies of the printed patent drawings are acceptable for use in the printing of the reissue patent

1414 Content of reissue oath/declaration

§ 1.175 Reissue oath or declaration.
(a) The reissue oath or declaration in addition to complying with the requirements of § 1.63, must also state that:
(1) The applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent, stating at least one error being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue application up to the time of filing of the oath or declaration under this paragraph arose without any deceptive intention on the part of the applicant.
(b) (1) For any error corrected, which is not covered by the oath or declaration submitted under paragraph (a) of this section, applicant must submit a supplemental oath or declaration stating that every such error arose without any deceptive intention on the part of the applicant. Any supplemental oath or declaration required by this paragraph must be submitted before allowance and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 U.S.C. 251 made by the examiner where it is indicated that the submission of a supplemental oath or declaration as required by this paragraph will overcome the rejection.
(2) For any error sought to be corrected after allowance, a supplemental oath or declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant.
Having once stated an error upon which the reissue is based, as set forth in paragraph (a)(1), unless all errors previously stated in the oath or declaration are no longer being corrected, a subsequent oath or declaration under paragraph (b) of this section need not specifically identify any other error or errors being corrected.
(d) The oath or declaration required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f).
(e) The filing of any continuing reissue application which does not replace its parent reissue application must include an oath or declaration which, pursuant to paragraph (a)(1) of this section, identifies at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application. All other requirements relating to oaths or declarations must also be met.

1415 Reissue application and issue fees
1. the Consolidated Appropriations Act, 2005, effective December 8, 2004, provides for a
separate:
a. application filing fee
b. search fee
c. examination fee, and
if applicable, an application size fee (applications exceeding 100 sheets of paper) and excess claims fees

1416 No physical surrender of original patent

§ 1.178 Original patent; continuing duty of applicant.
(a) The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.
(b) In any reissue application before the Office, the applicant must call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences, reissues, reexaminations, or litigations and the results of such proceedings (see also § 1.173(a)(1)).

1. the amended 37 C.F.R. 1.178(a) applies retroactively to all pending applications
2. an application for a reissue must be accompanied by an offer to surrender the original patent:
a. effective October 21, 2004, the requirement for physical surrender of the original letters patent in a reissue application has been eliminated
b. the surrender of the original patent is automatic upon the grant of the reissue patent

1417 Claim for benefit under 35 U.S.C. 119(a)(d)
a claim for the benefit of an earlier filing date in a foreign country under 35 U.S.C. 119(a)(d) must be made in a reissue application

any application in which a claim for foreign priority is made must specify:
the application number of the foreign application
the foreign country
the day, month, and year of the filing of the foreign application

in order to claim the benefit of priority for a reissue when a claim for the benefit of an earlier filing date under 35 U.S.C. 119(a)(d) was made
it is necessary to make (state) such a claim in the reissue application
in addition, the oath or declaration must ID the foreign application on which priority is claimed, and it must ID any foreign applications having a filing date before that of the application on which priority is claimed

no additional certified copy of the foreign application is necessary if a claim for the benefit of an earlier filing date in a foreign country under 35 U.S.C. 119(a)(d) is made in a reissue application as well as in the application on which the original patent was granted

1418 Information disclosure statement and other information
a reissue application is subject to the same duty of disclosure requirements as is any other nonprovisional application

1430 Reissue files open to the public and notice of filing reissue announced in Official Gazette
all reissue applications are open to inspection by the public

the filing of a continued prosecution application (CPA) of a reissue application will not be announced in the Official Gazette

the filing of all reissue applications, except for CPA's filed under 37 C.F.R. 1.53(d) will be announced in the Official Gazette

1441 Twomonth delay period; protest in reissue applications
1. the Office will entertain petitions under 37 C.F.R. 1.182 to act on a reissue without delaying for 2 months
2. a protest may be filed during the pendency of a reissue application, prior to the date of
the mailing of the Notice of Allowance
3. where a final rejection has been issued or the prosecution on the merits has been otherwise closed, a petition under 37 C.F.R. 1.182 along with the required fee for entry of the protest are required
4. if the protest is a "reissue litigation" protest, it is important that the protest be filed early if the protestor wishes the protest considered at the time the Office first acts on the reissue application

1442 Special status
An ex parte reexamination proceeding will not be stayed where there is litigation therefore, where a reissue application has been merged with an ex parte reexamination proceeding, the merged proceeding will not be stayed where there is litigation

1444 Review of reissue oath/declaration
a submission of a supplemental reissue oath/declaration to obviate a rejection cannot be deferred by an applicant until the application is otherwise in condition for allowance

a supplemental oath/declaration will be required where:
the application is otherwise in condition for allowance
amendments or other corrections of errors in the patent have been made subsequent to the last oath/declaration filed in the application
at least one of the amendments or other corrections fixes an error

1449 Protest filed in reissue where patent is in interference
An examiner may request a reissue applicant to add a claim to provoke an interference however, a reissue applicant cannot present added or amended claims to provoke an interference if the claims were deliberately omitted from the patent

1450 Restriction and election of species made in reissue application
restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required)

if restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.

1451 Divisional reissue applications; continuation reissue applications where the parent is pending
The same patent claim cannot be presented for examination in more than one of the divisional reissue application, as a pending claim, in either its original or amended versions

1453 Amendments to reissue application
1. all amendments which include any deletions or additions must be made by submission of the entire text of each added or rewritten paragraph with markings except that an entire paragraph of specification text may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph
2. all bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application

1454 Appeal brief
the claims on appeal in appeal brief should include underlining and brackets necessary to reflect any changes made to claims during the prosecution of the reissue application
any new claims added to the reissue application should be completely underlined

reissue:
no reissue application can enlarge the scope of the claims of the original patent unless the reissue is applied for within 2 years from the grant of the original patent
each amendment submission must set forth the status, on the date of the amendment, of all the patent claims and added claims

1455 Allowance and issue
no renumbering of original patent claims is allowed in a reissue
when a dependent claim depends on a claim that was canceled, and the dependent claim is not thereafter made dependent upon a pending claim, such a dependent claim must be rewritten in independent form

1460 Reissue
the reissued patent will be viewed as if the original patent had been originally granted in the amended form provided by the reissue

Certificates of Correction

Reasons for Certificates of correction:
Certificates of correction are used for minor mistakes (like typos) in issued patents on the part of the Patent Office or the applicant
a Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in the following situations:
to correct inventorship
a correction for failure to claim priority

1480 Certificates of correction office mistake
This law discusses how the PTO will handle mistakes that were their fault.

35 U.S.C. 254 Certificate of correction of Patent and Trademark Office mistake.
Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director 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 Director may issue a corrected patent without charge in lieu of and with like effect as a certificate of correction.

§ 1.322 Certificate of correction of Office mistake.
(a) (1) The Director may issue a certificate of correction pursuant to 35 U.S.C. 254 to correct a mistake in a patent, incurred through the fault of the Office, which mistake is clearly disclosed in the records of the Office:
(i) At the request of the patentee or the patentee' s assignee;
(ii) Acting sua sponte for mistakes that the Office discovers; or
(iii) Acting on information about a mistake supplied by a third party.
(2) (i) There is no obligation on the Office to act on or respond to a submission of information or request to issue a certificate of correction by a third party under paragraph (a)(1)(iii) of this section.
(ii) Papers submitted by a third party under this section will not be made of record in the file that they relate to nor be retained by the Office.
(3) If the request relates to a patent involved in an interference, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.
(4) The Office will not issue a certificate of correction under this section without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee 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 Director may issue a corrected patent in lieu thereof as a more appropriate form for certificate of correction, without expense to the patentee.

when to use a Certificate of correction:
through error and without deceptive intent, there is a failure to make reference to a prior copending application according to 37 C.F.R. 1.78 (claiming benefit of earlier filing date and crossreferences to other applications see Chapter 200), and the failure does not otherwise affect what is claimed, but the prior copending application is referenced in a record of the application
through error and without deceptive intent, a prior copending application is correctly identified elsewhere in the application file, and a petition under 37 C.F.R. 1.324 and fees are filed
through error and without deceptive intent, the inventor's name is omitted from an issued patent, and a petition under 37 C.F.R. 1.324 and fees are filed and a petition granted

a preferred embodiment materially affecting the scope of a patent omitted in an application is not minor enough to be corrected by a Certificate of correction, since it affects the scope and meaning of claims

1481 Certificates of correction applicant's mistake

35 U.S.C. 255 Certificate of correction of applicant's mistake.
Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination. Such patent, together 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.

§ 1.323 Certificate of correction of applicant's mistake.
The Office may issue a certificate of correction under the conditions specified in 35 U.S.C. 255 at the request of the patentee or the patentee's assignee, upon payment of the fee set forth in § 1.20(a). If the request relates to a patent involved in an interference, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.

mistakes in a patent that are not correctable by a Certificate of correction may be correctable via the filing of a reissue application

there are two statutory requirements that must be met for a Certificate of correction of applicant's mistake:
the mistake must be of clerical, typographical nature
the correction must not involve changes that constitute new matter or require a reexamination

a petition under 37 C.F.R. 1.48(a) is appropriate to request a correction of inventorship in a nonprovisional application while a petition under 37 C.F.R. 1.324 is the appropriate vehicle to correct inventorship in a patent

1485 Handling of request for Certificates of correction
Certificates of correction will not be issued for patents involved in interferences 1490 Disclaimers

a disclaimer is a statement filed by an owner (in part or in entirety) of a patent or of a patent to be granted, in which said owner relinquishes certain legal rights to the patents

there are two types of disclaimers:
statutory disclaimers:
when the applicant must disclaim or dedicate to the public the entire term
terminal disclaimers:
when the applicant must disclaim or dedicate to the public the terminal part of the term
result in the patent becoming invalid after a certain date which is less than the length of a typical patent term

it is possible to disclaim any complete claim or claims in a patent
claims in pending applications cannot be disclaimed, they may only be canceled

disclaimers must:
be signed by patentee, attorney or agent of record
identify the patent and claims or term being disclaimed
state the present extent of patentee's ownership interest in the patent include fee

a terminal disclaimer must be signed by: the applicant, or
the assignee of record, or
the attorney or agent of record

a terminal disclaimer must:
specify the portion of the term of the patent being disclaimed
state the present extent of the applicant's or assignee's ownership interest in the patent to be granted
include a fee

how to withdraw a terminal disclaimer:

if before issuance of patent:
may file a petition under 37 C.F.R. 1.182 to request a withdraw

if after issuance of patent:
no available method to withdraw

an applicant can cause the need for a disclaimer:
if the claims are made to suggest an interference (i.e., they were copied from another patent)
by failing to respond to a rejection or appeal a rejection of a claim copied for an interference

Difference between a reissue and reexamination.

Reissue
a continuation can be filed under rule
1.53(b) or 1.53(d)
only patent owner can file
any prior art will be considered
broadening claims are allowed
mistakes are required in original application in order for it to be appropriate to apply for a reissue

Reexamination
continuation filing does not apply
anyone can file
prior art limited to patents and printed publications
no broadening claims are allowed within the first two years
no mistakes in the original application are needed