A reissue application is an application for a patent to take the place
of an unexpired patent that is defective in some aspect. The Manual of
Patent Examining Procedure, generally referred to as the MPEP, states
"[w]henever 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." While this statement may seem extremely broad and flexible,
it is not. The primary restriction on reissue applications is the fact
that no new matter may be introduced in the reissue application.
Therefore, reissue applications are commonly filed when, (a) claims
are too broad or too narrow, (b) the patent contains inaccuracies, and
(c) errors in referencing a prior copending application(s) needs to be
corrected. Alternatively, there are a number of situations when a
reissue application may not be required. For instance, a Certificate
of Correction may be used to change or correct inventorship, correct
errors introduced by the Patent & Trademark Office (PTO), and to
correct good faith clerical or typographical errors caused by the
applicant. Similarly, a patentee may disclaim any claims that they may
believe to be invalid without affecting the validity of the remaining
claims by simply filing the appropriate disclaimer.
The contents of a reissue application are the same as other
nonprovisional applications. Of course, any disclosure that is added
or deleted must by identified using bracketing and underlining in
accordance with the PTO Rules. Patentees must always keep in mind that
added disclosure must not constitute new matter. Similarly, any claims
added in the reissue application must be for matter that the applicant
had a right to claim in the original patent.
Another caveat of a reissue application is that it cannot be used to
recapture subject matter that was intentionally cancelled from the
original application during prosecution. In other words, broad claims
that were voluntarily cancelled from the original application cannot
be resubmitted in a reissue application. Review of the original patent
application's prosecution file for potentially limiting amendments and
arguments is an essential step in the preparation of a reissue
application. The real beauty of reissue applications is that a
patentee can add claims that are broader than the original claims,
provided the new claims are supported by the original disclosure and
the new claims don't overlap claims that were intentionally cancelled
from the original application.
The 24 Month Deadline
A patentee may only file a reissue application that broadens the
claims within two years after issuance of the original patent.
Therefore, all patent owners should review their patents approximately
twenty months after issuance to determine if a reissue application may
enlarge the scope of their protection. This review should include
analysis of competitors' activity and technological advances that may
be relevant to the patent.
Examination of Reissue Applications
Once a reissue application is filed, the Official Gazette publishes a
notice identifying the original patent and the fact that a reissue
application has been filed. The reissue application is then granted
"special" status thereby expediting the examination.
The examination is performed in the same fashion as an original
application. Therefore, the claims in a reissue application are
subject to any and all rejections which the examiner deems
appropriate. This position has been upheld in a number of cases
clearly establishing that it does not matter whether the claims are
identical to those of the patent, nor does not matter that a rejection
was not made in the prosecution of the patent, or could have been
made, or was in fact made and dropped during prosecution of the
patent. Prior action in the prosecution of the patent does not prevent
a rejection from being made in the reissue application. Further,
claims in a reissue application enjoy no "presumption of validity."
As one can imagine, examination of a reissue application is a risky
proposition. While a patentee may potentially broaden claims via a
reissue application, they may also lose protections afforded by the
original patent. If a reissue application is found to be allowable, a
reissue patent will be granted upon payment of the appropriate fees.
Be Aware of Intervening Rights Risks
Lastly, patentees should note that a third party who makes, uses, or
sells a non-infringing device prior to the reissuance may, under
certain circumstances, continue to make, use, and sell the device
after reissuance, even if it then infringes the reissue patent. First,
there are absolute intervening rights established in 35 USC S 252
whereby third parties are granted non-exclusive, royalty-free rights
in "anything patented by the reissued patent" that was made or
acquired before the granting of the reissue and that did not infringe
any claim in the reissued patent that was also in the original patent.
Alternatively, there are even more forgiving equitable intervening
rights potentially available in situations where a manufacturer has
expended substantial funds to make or use the device or process now
covered in the reissue claims.
In summary, all patent owners should review their patents
approximately twenty months after issuance to determine if a reissue
application may potentially broaden their scope of protection.
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