A patent may be corrected or amended in eight ways, namely by:
The first three ways are discussed in this chapter. The fourth way (reexamination) is discussed in MPEP Chapter 2200 for ex parte reexamination and MPEP Chapter 2600 for inter partes reexamination requests (as of September 16, 2012 no new requests may be filed). The fifth way (supplemental examination) is discussed in MPEP Chapter 2800. The sixth, seventh, and eighth ways (inter partes review, post grant review, and covered business method review) are discussed in the Office Patent Trial Practice Guide available at www.uspto.gov/patents/ptab/resources.
No new petitions for covered business method reviews can be filed on or after September 16, 2020. Proceedings instituted on covered business method review petitions filed before September 16, 2020 will continue after September 16, 2020 until the proceeding is concluded by issuance of a certificate or otherwise terminated.
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 than 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.
In this chapter, for reissue applications filed before September 16, 2012, all references to pre-AIA 35 U.S.C. 251 and 253 and pre-AIA 37 CFR 1.172, 1.175, 1.321, and 3.73 are to the law and rules in effect on September 15, 2012.
35 U.S.C. 251 and pre-AIA 35 U.S.C. 251 permit the reissue of a patent to correct an error in the patent and provide criteria for the reissue. Pre-AIA 35 U.S.C. 251 requires that any error to be corrected must have been made "without deceptive intention." Effective September 16, 2012, Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 251 to eliminate the "without deceptive intention" clause. This law as amended applies to reissue applications filed on or after September 16, 2012. 37 CFR 1.171 through 1.178 are rules directed to reissue.
An Office action in a reissue application should include form paragraph 14.01.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are "pre-AIA" provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
This paragraph should be used as a heading in all Office actions in reissue applications.
A reissue application is filed to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. An error in the patent arises out of an error in conduct which was made in the preparation and/or prosecution of the application which became the patent.
There must be at least one error in the patent to provide grounds for reissue of the patent. If there is no error in the patent, the patent will not be reissued. The present section provides a discussion of what may be considered an error in the patent upon which to base a reissue application.
In accordance with 35 U.S.C. 251, the error upon which a reissue is based must be one which causes the patent to 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." Thus, an error under 35 U.S.C. 251 has not been presented where the correction to the patent is one of spelling, or grammar, or a typographical, editorial or clerical error which does not cause the patent to be deemed wholly or partly inoperative or invalid for the reasons specified in 35 U.S.C. 251. These corrections to a patent do not provide a basis for reissue (although these corrections may also be included in a reissue application, where a 35 U.S.C. 251 error is already present), and may be made via a certificate of correction; see MPEP § 1481.
The most common bases for filing a reissue application are:
The reissue error may be directed solely to the failure to previously present narrower claims, which are being added by reissue. In re Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011) provides that "the omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law." This permits submission of additional claims that are narrower in scope than the preexisting patent claims, without any narrowing of the preexisting patent claims. For example, a reissue applicant can retain the broad independent claims of the patent while adding only new dependent claims.
A reissue applicant’s failure to timely file a divisional application covering the non-elected invention(s) following a restriction requirement is not considered to be error causing a patent granted on elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Thus, such applicant’s error is not correctable by reissue of the original patent under 35 U.S.C. 251. See MPEP § 1412.01.
An attorney’s failure to appreciate the full scope of the invention was held to be an error correctable through reissue in the decision of In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). In Medrad, Inc. v. Tyco Healthcare Group LP, 466 F.3d 1047, 80 USPQ2d 1526 (Fed. Cir. 2006), the court rejected an argument that a 35 U.S.C. 251 error was limited to defects in the specification, drawings, and claims. Instead, the court explained that the correctable error could be "any error that causes a patentee to claim more or less than he had a right to claim." 466 F.3d at 1052, 80 USPQ2d at 1529. In Medrad, the specific error was the failure to submit a supplemental reissue declaration during prosecution of a prior reissue patent. This error resulted in invalid claims, which meant the patentee claimed less than the patentee had a right to claim in the prior reissue patent.
The correction of misjoinder of inventors in reissues has been held to be a ground for reissue. See Ex parte Scudder, 169 USPQ 814 (Bd. App. 1971). The Board of Appeals held in Ex parte Scudder, 169 USPQ at 815, that 35 U.S.C. 251 authorizes reissue applications to correct misjoinder of inventors where 35 U.S.C. 256 is inadequate.
If the only change being made in the patent is correction of the inventorship, this can be accomplished by filing a request for a certificate of correction under the provisions of 35 U.S.C. 256 and 37 CFR 1.324. See MPEP § 1412.04 and § 1481. A certificate of correction will be issued if all parties are in agreement and the inventorship issue is not contested. However, if applicant chooses to file a reissue application to correct the inventorship (as opposed to choosing the certificate of correction route), applicant may do so because misjoinder of inventors is an error that is correctable by reissue under 35 U.S.C. 251.
A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), 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(a) -(d) before the patent was granted.
In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority. Reissue is also available to correct the "error" in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a) -(d) before the patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) ("a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application"). In view of the changes to 37 CFR 1.55 that became effective May 13, 2015, the reissue applicant must also file a petition under 37 CFR 1.55(f) or (g), as appropriate, including a showing of good and sufficient cause for the delay in filing the certified copy. In a situation where it is necessary to make a priority claim in a reissue application that was not made in the original patent, the reissue applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e). See MPEP § 214 et seq.
Although reissue is an acceptable manner for an applicant to make or perfect a claim for foreign priority, in certain situations, the patent may also be corrected via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a petition under 37 CFR 1.55(f) or (g). See MPEP § 216.01. Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or (g), as appropriate, including a showing of good and sufficient cause for the delay in filing the certified copy. Furthermore, where a priority claim was not made in the original patent and the addition of the priority claim would not require further examination (e.g., grant of the petition would not cause the patent to be subject to a different statutory framework), the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
Regardless of whether a reissue application or a request for certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 is being filed along with a petition under 37 CFR 1.55(e), (f), or (g), the petition that would need to be filed and the petition requirements would be the same. Therefore, unless there is a need to file a reissue application, patentee should consider making such correction via a request for certificate of correction. See MPEP § 216.01. It is noted that a petition under 37 CFR 1.55(f) or (g) is not necessary when the certified copy is being submitted with a petition under 37 CFR 1.55(e). Similarly, a petition under 37 CFR 1.55(e) is not necessary when the certified copy is being submitted with a petition under 37 CFR 1.55(f) or (g).
Section 201(c)(1)(B)(i)(II) of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, amended 35 U.S.C. 119(e) by replacing "payment of a surcharge" with "payment of the fee specified in section 41(a)(7)" and deleting "during the pendency of the application." Specifically, the deletion of "during the pendency of the application" permits the acceptance of unintentionally delayed benefit claims to a provisional application after the patent was granted in a similar manner as provided for priority claims under 35 U.S.C. 119(a)-(d) and benefit claims under 35 U.S.C. 120. To implement this provision of the PLTIA, 37 CFR 1.78(c) was amended in the final rule "Changes to Implement the Patent Law Treaty", 78 FR 62368 (October 21, 2013), 1397 OG 42 (December 3, 2013). 37 CFR 1.78(c) was amended to provide that if the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) is presented in an application (either a nonprovisional application or an international application designating the United States) after the time period provided by 37 CFR 1.78(a)(4), including after the pendency of the application (e.g., after patent grant), the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. 37 CFR 1.78(c) further provides that a petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by: (1) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application, unless previously submitted; (2) the petition fee as set forth in 37 CFR 1.17(m); and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. 37 CFR 1.78(c) also provides that the Director may require additional information where there is a question whether the delay was unintentional.
See MPEP § 1481.03 for the procedure to seek to use a certificate of correction to add a benefit claim to the filing date of a prior-filed application.
Correction of failure to adequately claim a benefit under 35 U.S.C. 120 in an earlier-filed copending U.S. patent application was held to be a proper ground for reissue. Sampson v. Comm’r Pat., 195 USPQ 136, 137 (D.D.C. 1976). Similarly, correction of the failure to adequately claim a benefit under 35 U.S.C. 119(e) in an earlier-filed copending U.S. patent application is considered a proper ground for reissue. If adding a new benefit claim in a reissue application, the reissue applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.78(c) (for claiming the benefit under 35 U.S.C. 119(e) ) or under 37 CFR 1.78(e) (for claiming the benefit under 35 U.S.C. 120, 121, 365(c) or 386(c) ). See MPEP § 211.04. In addition, if an applicant fails to make a claim for benefit of a prior-filed utility or plant reissue application in a later-filed reissue application within the time period set forth in 37 CFR 1.78 (e.g., timely submit an ADS with the specific reference identifying the later-filed reissue application is a continuation of the prior-filed reissue application), then a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) along with the petition fee set forth in 37 CFR 1.17(m) would be required. For treatment of an error involving disclaimer of a benefit claim under 35 U.S.C. 120, see MPEP § 1405.
Note that a patentee cannot obtain the safe harbor protection of 35 U.S.C. 121 against nonstatutory double patenting by amending a patent that issued from a continuation-in-part application to recite only subject matter disclosed in the parent application and changing the relationship to a divisional of the parent application. G.D. Searle LLC v. Lupin Pharm., Inc., 790 F.3d 1349, 1355, 115 USPQ2d 1326, 1330 (Fed. Cir. 2015)("Simply deleting that new matter from the reissue patent does not retroactively alter the nature of the [CIP] application.").
A reissue may be based on a drawing correction that is substantive in nature, because such a correction qualifies as correcting an error under 35 U.S.C. 251 that may properly be deemed to render the patent wholly or partly inoperative. A reissue application cannot be based on a non-substantive drawing change, such as a reference numeral correction or addition, the addition of shading, or even the addition of an additional figure merely to clarify the disclosure. Non-substantive drawing changes may, however, be included in a reissue application that corrects at least one substantive error under 35 U.S.C. 251.
In In re Dinsmore, 757 F.3d 1343, 111 USPQ2d 1229 (Fed. Cir. 2014), the Federal Circuit held that the filing of a terminal disclaimer to obviate a double patenting rejection over a prior patent, when the prior patent and the patent sought to be reissued were never commonly owned, was not an error within the meaning of the reissue statute. In rejecting applicants' argument, the Dinsmore court noted that the applicants had not shown a mistaken belief that the two patents at issue were commonly owned, and stated that the applicants were ultimately seeking to revise a choice they made, not to remedy the result of a mistaken belief.
When a reissue application is filed within 2 years from the date of the original patent, a rejection on the grounds of lack of diligence or delay in filing the reissue should not normally be made. Ex parte Lafferty, 190 USPQ 202 (Bd. App. 1975); but see Rohm & Haas Co. v. Roberts Chemical Inc., 142 F. Supp. 499, 110 USPQ 93 (S.W. Va. 1956), rev’d on other grounds, 245 F.2d 693, 113 USPQ 423 (4th Cir. 1957).
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35 U.S.C. 251(d) corresponds to the provisions of pre-AIA 35 U.S.C. 251, fourth paragraph.
Where any broadening reissue application is filed within two years from the date of the original patent, 35 U.S.C. 251 presumes diligence, and the examiner should not inquire why applicant failed to file the reissue application earlier within the two year period.
See MPEP § 1412.03 for broadening reissue practice. See also In re Graff, 111 F.3d 874, 42 USPQ2d 1471 (Fed. Cir. 1997); In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985); In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985).
A reissue application that is filed on the 2-year anniversary date of the patent grant is considered as being filed within 2 years. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) (a similar rule in interferences).
A reissue application can be granted a filing date without an oath or declaration, or without the basic filing fee, search fee, or examination fee being present. See 37 CFR 1.53(f). Applicant will be given a period of time to provide the missing parts and to pay the surcharge under 37 CFR 1.16(f).
While examiners should not make rejections based on lack of diligence (which does not include rejections under 35 U.S.C. 251 for a broadening reissue that is impermissibly filed outside of the two year time period set in 35 U.S.C. 251 ), courts have looked to see if a reissue applicant was diligent in correcting the error(s) in the patent. At least one recent decision from the U.S. Court of Appeals for the Federal Circuit discussed a diligence requirement for filing reissue applications, even narrowing reissues. See In re Rosuvastatin Calcium Patent Litigation, 703 F.3d 511, 526, 105 USPQ2d 1437, 1447 (Fed. Cir. 2012). In this case, the majority found the reissue applicant diligent, but the dissent (J. Mayer) believed that the patentee was not diligent in filing the narrowing reissue application because the applicant was aware of an invalidating reference for over six years and had received a rejection in a counterpart foreign application based on the same reference over two years prior to filing the reissue application. See 703 F.3d at 537-38, 105 USPQ2d at 1455-56.
Marking of envelope: Applicants and protestors (see MPEP § 1901.03) submitting papers for entry in reissue applications of patents involved in litigation are requested to mark the outside envelope and the top right-hand portion of the papers with the words "REISSUE LITIGATION" and with the art unit or other area of the United States Patent and Trademark Office in which the reissue application is located, e.g., Commissioner for Patents, Patent Trial and Appeal Board, Office of Patent Legal Administration, Office of Data Management, etc.
Marking of papers: Any "Reissue Litigation" documents submitted to the Office should be clearly marked as such. Papers marked "REISSUE LITIGATION" will be given special attention. See MPEP § 1442.01 through § 1442.04 for examination of litigation-related reissue applications. Protestor’s participation, including the submission of papers, is limited in accordance with 37 CFR 1.291(c). See MPEP § 1901.07 for information on protestor’s participation.
35 U.S.C. 251 prescribes the effect of reissue on the patent term by stating that "the Director shall… reissue the patent… for the unexpired term of the original patent."
The maximum term of the original patent is fixed at the time the patent is granted, subject to any adjustments to the number of days of extension or adjustment. See MPEP § 2720 and § 2734. While the term may be subsequently shortened, e.g., through the filing of a terminal disclaimer, it cannot be extended through the filing of a reissue. Accordingly, a deletion in a reissue application of an earlier-obtained benefit claim under 35 U.S.C. 120 will not operate to lengthen the term of the patent to be reissued.
When a reissue application has been filed in an attempt to delete an earlier-obtained benefit claim under 35 U.S.C. 120, it should be treated as follows:
If one of the errors identified is the presence of the claim for 35 U.S.C. 120 benefit in the patent, and patentee (1) states a belief that this error renders the original patent wholly or partly inoperative or invalid, and (2) is seeking to eliminate this error via the reissue proceeding, the Office will permit deletion of the benefit claim in the continuity data and will not object to or reject the reissue declaration on these grounds. For applications filed on or after September 16, 2012, applicant may do so by including an application data sheet that does not list the benefit claim with the filing of the reissue application or by filing a corrected application data sheet in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application in a pending reissue application. For applications filed prior to September 16, 2012, applicant may do so by amending the specification (if the benefit claim is in the specification) or by submitting a supplemental application data sheet in compliance with pre-AIA 37 CFR 1.76(c) (no supplemental declaration is necessary) to delete any references to prior applications. See MPEP § 601.05(b), subsection II, for more information on supplemental application data sheets. If the benefit claim is in the specification, the specification should be amended to reflect the correction even if a supplemental or corrected application data sheet is filed. Assuming the reissue declaration appropriately identifies or describes at least one other error being corrected, the reissue declaration would not be objected to for failure to comply with the requirements of 37 CFR 1.175.
Where the reissue declaration states that the patentee is making this correction in order to extend the term of the original patent, the examiner’s Office action will merely refer to the statement in the declaration and then point out with respect to such statement that 35 U.S.C. 251 only permits reissue "... for the unexpired part of the term of the original patent."
In a reissue application, the examiner should consider all references that have been cited during the original prosecution of the patent, and list on a PTO-892 form any reference again cited/applied in the reissue application. See MPEP § 1455. It is noted that a reference cited in the original patent may no longer be relevant, e.g., in view of a narrowing of the claim scope in the reissue application, and therefore may not need to be listed on the PTO-892 form.
Should applicants wish to ensure that all of the references which were cited in the original patent are considered and cited in the reissue application, an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and 1.98 should be filed in the reissue application. See MPEP § 609. The requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS has been eliminated, unless required by the Office. 37 CFR 1.98(a)(2) requires a legible copy of:
See MPEP § 609.04(a). The Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the references cited in the patent for which reissue is sought. Rather, applicant has a continuing duty under 37 CFR 1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in the reissue application. See MPEP § 1418.
Where a copy of a reference other than a U.S. patent or U.S. patent application publication that was cited in the original patent is not available and cannot be obtained through any source other than the reissue applicant (who has not submitted the copy), the examiner will not consider that reference and therefore, will not list that reference on the PTO-892 form. If that reference was listed by the reissue applicant on a PTO/SB/08 form but a copy has not been provided, the examiner will line-through the reference to indicate that the reference has not been considered.
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.
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The specification (including the claims and any drawings) of the reissue application is the copy of the printed patent for which reissue is requested that is submitted by applicant as part of the initial application papers. The copy of the printed patent must be submitted in double column format, each page of double column format being on only one side of the piece of paper. It should be noted that a re-typed specification is not acceptable in a reissue application; the full copy of the printed patent must be used. In addition, an applicant for reissue is required to file a reissue oath or declaration which, in addition to complying with 37 CFR 1.63, must comply with 37 CFR 1.175. Where the patent has been assigned, the reissue applicant must also provide a consent of assignee to the reissue and evidence of ownership. Where the patent has not been assigned, the reissue applicant should affirmatively state that the patent is not assigned.
An amendment may be submitted at the time of filing of a reissue application. The amendment may be made either by:
