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Reissue Applications – Procedure, Advantages, & Pitfalls

(A) Reasons for Filing Reissue
(B) Content
(C) The Reissue Declaration
(D) Recapture Doctrine
(E) “Original Patent” Rule
(F) Overlooked Aspects
(G) Other Limitations including Patent Owner Estoppel
(H) Intervening Rights

A patent owner may file a reissue application for a variety of reasons. Maybe there is newly discovered prior art never considered by the U.S. Patent Examiner, and thus the reissue application is one way to get that prior art considered.  Also, it is more common now that the patent owner will file a reissue application during the course of an inter partes review (IPR), post-grant review (PGR), or a post-grant review for a covered business method patent (CBM) trial, or after receiving an adverse judgment after completion of the trial.

A reissue application is filed when an issued patent, through error, is considered to be “wholly or partly inoperative or invalid.”[1]

Reissue, therefore, may be utilized to correct errors that are more substantive than those which may be corrected by simply requesting a certificate of correction. Only the owner of the issued patent (i.e., the patentee) may elect to file a reissue application. The statutory and regulatory requirements that there be an error precludes courts from ordering parties to seek reissue where the patent owner insists there is no error in his patent.[2]

Reissue application filings are announced in the USPTO Official Gazette (OG) to give interested parties an opportunity to submit to the Examiner information pertinent to the patentability of the reissue application. An OG announcement shall include (1) the date of the request (if not Director ordered), (2) the reexamination request control number or Director initiated control number; (3) the patent number; (4) the Title of the Invention; (5) the USPTO Classification System’s original Class and Subclass designation; (6) the name of the inventor; (7) the name of the patent owner of record; and (8) the examining group to which the reexamination is assigned (although, currently, most reexamination proceedings are handled by Examiners assigned to the Central Reexamination Unit (CRU)).

Prosecution of a reissue application is considered “special”, or expedited.  The patent owner will have certain deadlines to meet. But please note that RCE (request for continued examination) practice as well as divisional and continuation practice are allowed, like prosecution of a regular non-provisional application.

When the reissue patent is ultimately granted or the reissue application is otherwise terminated, an appropriate statement is also added to the file of the original patent.

On the surrender of the original patent and the payment of the appropriate fees, the USPTO grants a reissue patent for the unexpired part of term of the original patent.

The elements required for obtaining a reissue patent are as follows:

  • The specification, drawings or claims of the patent to be reissued must be wholly or partly inoperative or invalid;
  • If filed prior to implementation of the AIA, the error must have occurred without deceptive intent; otherwise this requirement of “without deceptive intent” has been deleted if under the AIA;
  • The original patent must be surrendered;
  • The appropriate fees must be paid (where the PTO Examination Fee is $2,200);
  • No new matter can be introduced into the application for reissue; and
  • Any reissue application enlarging the scope of the claims of the original patent must be filed within two years from the grant of the original patent.

With regard to filing a reissue application having claims of an enlarged or broadened scope, note that at least one broadened claim must be filed within two years of the patent grant date, regardless of when the reissue application was filed.[3]

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(A) Reasons for Filing Reissue

The most common bases for filing a reissue application are:

  1. the claims are too narrow or too broad;
  2. the drawings or disclosure of the specification contain inaccuracies;
  3. the applicant failed to claim or incorrectly claimed foreign priority; and
  4. the applicant failed to make reference to or incorrectly made reference to prior co-pending U.S. applications.

In general, a reissue application makes some change in the specification, drawings or the claims. Normally, an attempt to obtain a reissue patent without any change to the text is not proper (and is treated as merely a request for an advisory opinion).[4]  When a reissue application is filed, the entire application will be examined in the same manner as an original application. Thus, patent claims previously allowed can be subject to a (different) rejection.[5]  The Examiner can review the original claims and any claims added in the reissue application.

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(B) Content

Regarding content, the following items must be included in an application for a reissue:[6]

  • the specification, claims, and drawings as amended, including the entire original patent;
  • a “chain of title” signed by the assignee and written consent by the assignee; an offer to surrender the original patent;
  • a reissue declaration; and
  • a claim for the benefit of foreign priority, if appropriate.

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(C) The Reissue Declaration

A reissue declaration (or oath) must state that 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 claiming more or less than the patent owner had a right to claim. This is considered the “reissue error.” The reissue declaration must include at least one error relied upon as a basis for the reissue.[7] The America Invents Act has removed the requirement that the error be made without deceptive intention.[8]

To define a reissue error, simply filing one dependent claim can constitute a reissue error,[9] as does filing a claim that is broader in scope than the originally issue patent claims, since either situation would be considered claiming more or less than the patentee had a right to claim.

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(D) Recapture Doctrine

The reissue statute “is remedial in nature, based on fundamental principles of equity and fairness.”[10] But, the reissue statute has limits, and in particular the “recapture doctrine.”[11] The recapture rule or doctrine arises when an applicant for reissue attempts to obtain broader claims which have the same scope or a scope larger than claims cancelled or surrendered (given up) during prosecution of the original application.

For instance, if the applicant amends the claims to go from A+B+C to A+B+C’ during prosecution, and then the patent issues due to this claimed combination, a reissue application cannot be later filed (within 2 years) claiming A+B+C due to the recapture doctrine.  That is, C’ has to be a part of the claims.

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(E) “Original Patent” Rule

A patent owner cannot claim an invention that was not adequately disclosed in the original patent.[12]  While a claimed invention in a regular patent application must have sufficient written description, the reissue statute also requires that the claimed invention must be clearly and unequivocally disclosed in the original patent to justify the grant of broadened claims. The patent’s original specification must “fully describe” the invention covered by any new claim in a reissue patent.[13]

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(F) Overlooked Aspects

One doctrine that may be of concern to a member of the public is the overlooked aspect.  Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects.[14]

For example, if all the claims were drawn to species A in the original application, reissue claims drawn to species B are considered claims to overlooked aspects, assuming that there was not a generic claim that covered both species A and B in the original application.

Claims to overlooked aspects are not subject to recapture because the claims, by definition, are unrelated subject matter.[15]

All overlooked aspects reissues are broadening reissues and must be filed within 2 years from issuance of original patent.

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(G) Other Limitations Including Patent Owner Estoppel

Deliberate acts such as failing to filing a divisional application for non-elected claims due to a restriction requirement do not serve as a basis for a reissue application.[16]

Also, a Reissue Application is not a basis to withdraw a previously filed Terminal Disclaimer (filed during prosecution of application).[17]

If the patent owner goes through an inter partes review (IPR), post-grant review (PGR), or a post-grant review for a covered business method patent (CBM), patent owner should be aware of the estoppel imposed by the USPTO as defined in 37 C.F.R. § 42.73(d)(3):

(3) Patent applicant or owner: A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:

(i) A claim that is not patentably distinct from a finally refused or canceled claim; …”

The language “finally canceled claim” refers to the claim that was canceled (via the issued certificate) stemming from the Final Written Decision of the IPR/PGR/CBM trial.

The language “finally refused claim” refers to the claim that was proposed in a Motion to Amend (MTA), but the Motion was denied as stated in the Final Written Decision of the IPR/PGR/CBM trial, or perhaps as indicated by the Board during the course of the trial under the revised MTA procedure.

Thus, the reissue claim must be “patentably distinct” from any prior art (of course), but also from any such claim that was canceled or refused as presented/contested during the IPR/PGR/CBM trial.

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(H) Intervening Rights

Changes to claims in a reissue application may create “intervening rights” on the part of potential infringers who infringe the claims between the time of the issuance of the original patent and the issuance of the reissue patent.[18]  There are two types of intervening rights – – absolute and equitable. The effect of the intervening rights doctrine is that an infringer who infringes any claims in the reissue patent which recite subject matter falling within the scope of claims in the original patent, is subject to an infringement action just as if the original patent had continued.

On the other hand, if the infringer only infringes subject matter subsequently added to the claims of the reissue patent, then the alleged infringer has so-called “intervening rights.” As a basic principle, to determine whether intervening rights exist, “the standard applied is that of whether a particular change to the claims is substantive, such that the scope of the claims is no longer substantially identical.”[19]

Intervening rights provide that the party cannot be found guilty of past infringements since the infringed claims were changed through the reissue process. If intervening rights do exist, then the court in its equity power must determine how to fashion a remedy with respect to continued infringing activity.[20] The court makes this decision based upon “such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.”[21]  As a guiding principle, if the infringer has made significant investment prior to issuance of the reissue, then the court may permit the “infringer” to continue infringing activity based upon this large prior investment. The court may, however, provide that the infringer not further expand its activity, but continue at the same level. Alternatively, if the court finds that no significant investment has been made, the court may fashion various other remedies, such as permitting the infringer to sell off current stock but not produce any additional products.

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[1] 35 U.S.C. § 251 and 37 Code of Federal Regulations (“C.F.R.”) §§ 1.171-1.178.
[2] Green v. Rich Iron Co., Inc., 944 F.2d 852, 20 U.S.P.Q.2d 1075 (Fed. Cir. 1991).
[3] In re Graf, 42 U.S.P.Q.2d 1471, 1473 (Fed. Cir. 1997).
[4] In re Dien, 214 U.S.P.Q. 10 (C.C.P.A. 1982); In re Keil, 1 USPQ2d 1427 (Fed. Cir. 1987) (patent owner filed reissue application without any change to claims to provoke interference against another patent).
[5] M.P.E.P. § 1440.
[6] 37 C.F.R. §§ 1.171-1.175.
[7] 35 U.S.C. § 251; 37 C.F.R. § 1.175(a).
[8] Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (codified as amended at 35 U.S.C § 251 (2011)).
[9] In re Tanaka, 98 U.S.P.Q.2d 1331 (Fed. Cir. 2011).
[10] In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986).
[11] MBO Laboratories v. Becton, Dickinson & Company, 94 U.S.P.Q.2d 1598 (Fed. Cir. 2010).
[12] Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014).
[13] Antares Pharma; Id.; see also Forum U.S, Inc. v. Flow Valve, LLC (Fed. Cir., Jun. 17, 2019) (the original patent did not disclose an embodiment of the invention without an arbor as recited in the reissue claims)
[14] MBO Labs v. Becton, Dickinson & Co., 94 USPQ2d 1598 (Fed. Cir. 2010).
[15] In re Youman, 679 F.3d 1335 (Fed. Cir. 2012).
[16] In re Orita, 550 F.2d 1277 (CCPA 1977).
[17] In re Shunpei Yamazaki, 702 F.3d 1327 (Fed. Cir. 2012).
[18] 35 U.S.C. § 252.
[19] Slimfold Mfg. Co. v. Kinkead Industries, Inc., 1 U.S.P.Q.2d 1563 (Fed. Cir. 1987).
[20] Seattle Box Company, Inc. v. Industrial Crating and Packing, Inc., 221 U.S.P.Q. 568, 574 (citing 35 U.S.C. § 252) (Fed. Cir. 1984).
[21] 35 U.S.C. § 252.