1402 Grounds for Filing
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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.
The most common bases for filing a reissue application are:
- the claims are too narrow or too broad;
- the disclosure contains inaccuracies;
- applicant failed to or incorrectly claimed foreign priority; and
- applicant failed to make reference to or incorrectly made reference to prior copending applications.
I. ERROR BASED ON SCOPE OF CLAIMS
The reissue error may be directed solely to the failure to previously present narrower claims, which are being added by reissue.
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.
An attorney’s failure to appreciate the full scope of the invention was held to be an error correctable through reissue
II. INVENTORSHIP ERROR
The correction of misjoinder of inventors in divisional reissues has been held to be a ground for reissue.
III. ERROR RELATED TO PRIORITY TO FOREIGN APPLICATION
A reissue was granted 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 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).
IV. ERROR IN BENEFIT CLAIM TO DOMESTIC APPLICATION
The Patent Law Treaties Implementation Act of 2012 (PLTIA), amended 35 U.S.C. 119(e) by replacing “payment of a surcharge” with “payment of the fee” 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.
V. ERROR IN DRAWING
A reissue may be based on a drawing correction that is substantive in nature.
VI. ERROR IN FILING TERMINAL DISCLAIMER
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.
