1412.03 Broadening Reissue Claims
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| 1412.03 |
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—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.
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I. MEANING OF “BROADENED REISSUE CLAIM”
A broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent
The addition of combination claims in a reissue application where only subcombination claims were present in the original patent could be a broadening of the invention.
II. SCOPE OF DEPENDENT CLAIM ENLARGED - NOT BROADENING
A claim will be considered a broadened reissue claim when it is greater in scope than each and every claim of the patent to be reissued.
A corollary of this is that a claim which 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.
A common example of this is where dependent claim 2 is broadened via the reissue (other than the addition of a process step to convert an intermediate to a final product), but independent claim 1 on which it is based is not broadened. Because a dependent claim is construed to contain all the limitations of the claim upon which it depends, claim 2 must be at least as narrow as claim 1 and is thus not a broadened reissue claim.
III. NEW CATEGORY OF INVENTION ADDED IN REISSUE - GENERALLY IS BROADENING
The addition of process claims as a new category of invention to be claimed in the patent (i.e., where there were no method claims present in the original patent) is generally considered as being a broadening of the invention.
A situation may arise, however, where the reissue application adds a limitation (or limitations) to process A of making the product A claimed in the original patent claims. For example:
- (1) a process of using the product A (made by the process of the original patent) to make a product B, disclosed but not claimed in the original patent; or
- (2) a process of using the product A to carry out a process B disclosed but not claimed in the original patent.
Although this amendment of the claims adds a method of making product B or adds a method of using product A, this is not broadening (i.e., this is not an enlargement of the scope of the original patent) because the "newly claimed invention" contains all the limitations of the original patent claim(s).
IV. WHEN A BROADENED CLAIM CAN BE PRESENTED
A broadened claim can be presented within two years from the grant of the original patent in a reissue application.
- In addition, a broadened claim can be presented after two years from the grant of the original patent in a broadening reissue application which was filed within two years from the grant.
Where any intent to broaden is unequivocally indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. (Note: A statement that “the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim” is NOT an unequivocal statement of an intent to broaden.)
- Thus, a broadened claim may be presented in a reissue application after the two years, even though the broadened claim presented after the two years is different than the broadened claim presented within the two years.
- Finally, if intent to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing (continuation or divisional) reissue application after the two year period.
V. BROADENING REISSUE - OATH/DECLARATION REQUIREMENTS
A. Reissue Application Filed On or After September 16, 2012
Any reissue application filed on or after September 16, 2012 must be applied for by all of the patentees.
- However, in a broadening reissue application filed on or after September 16, 2012, the original reissue oath or declaration must be signed by all of the inventors, unless the application for the patent (for which reissue is requested) was filed under 37 CFR 1.46 by the assignee of the entire interest
A supplemental oath or declaration to account for errors corrected subsequent to the original oath or declaration is not needed for the application; however, a replacement oath or declaration would still be required where there is a failure to identify any error, or a failure to identify at least one error of the type that would support a reissue.
- Such a replacement oath or declaration must be signed by all of the inventors, unless the application for the patent (for which reissue is requested) was filed under 37 CFR 1.46 by the assignee of the entire interest.
For any broadening reissue application filed on or after September 16, 2012, the inventor’s oath or declaration must identify a specific claim that the application seeks to broaden. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement.
B. Reissue Application Filed Before September 16, 2012
A broadening reissue application filed before September 16, 2012 must be applied for by all of the inventors (patentees), that is, the original reissue oath or declaration must be signed by all of the inventors.
- The error in not presenting broader claims must have been made without deceptive intent. If a supplemental oath or declaration in a broadening reissue application is needed in the application in order to fulfill the requirements of 37 CFR 1.175, the supplemental reissue oath or declaration must be signed by all of the inventors.
1412.04 Correction of Inventorship By Reissue
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I. CERTIFICATE OF CORRECTION AS A VEHICLE FOR CORRECTING INVENTORSHIP
While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected under the provisions of 35 U.S.C. 256 and 37 CFR 1.324 by filing a request for a Certificate of Correction if:
- the only change being made in the patent is to correct the inventorship; and
- all parties are in agreement and the inventorship issue is not contested.
II. REISSUE AS A VEHICLE FOR CORRECTING INVENTORSHIP
Where the provisions of 35 U.S.C. 256 and 37 CFR 1.324 do not apply, a reissue application is the appropriate vehicle to correct inventorship.
- The failure to name the correct inventive entity is an error in the patent which is correctable under 35 U.S.C. 251.
The correction of inventorship does not enlarge the scope of the patent claims, therefore a reissue application may be filed more than two years after the patent issued.
- Where a reissue application does not seek to enlarge the scope of the claims of the original patent, the reissue oath may be made and sworn to, or the declaration made, by the assignee of the entire interest under 37 CFR 1.172.
1412.05 Correction of Inventorship in a Broadening Reissue Application
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I. Reissue Application Filed On or After September 16, 2012
Where a reissue application to correct inventorship is filed on or after September 16, 2012, and the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest, the assignee may sign the inventor’s oath or declaration even where the application also seeks to enlarge the scope of the claims of the original patent. If the application for the original patent was not filed under 37 CFR 1.46 by the assignee of the entire interest, then the signature of all of the inventors is needed on the oath or declaration except as provided for in 37 CFR 1.64.
If an inventor is being deleted in a reissue application to correct inventorship in a patent and the inventors are required to sign the oath or declaration, the inventor being deleted need not sign the reissue oath or declaration.
For example, a reissue application is filed to correct inventorship from inventors A, B, and C (listed as inventors on the patent) to inventors A and B. Inventor C is being deleted as a named inventor. In such a case, A and B are the correct inventors, and accordingly, (in situations where the assignee is not permitted to sign) inventors A and B must sign the reissue oath or declaration but inventor C need not sign the reissue oath or declaration.
If an inventor is being added in a reissue application to correct inventorship in a patent, the inventor being added must sign the reissue oath or declaration together with the inventors previously designated on the patent.
For example, a reissue application is filed to correct the inventorship from inventors A and B (listed as inventors on the patent) to inventors A, B, and C. Inventor C is the inventor being added. In such a case, A, B, and C are the correct inventors, and accordingly, each of A, B, and C must sign the reissue oath or declaration. If inventor C refuses to sign, the assignee of the entire interest may sign a substitute statement under 37 CFR 1.64. Thus, even where an application changes the claims to enlarge the scope of the patent claims in addition to the inventorship change, and the application for the original patent was not filed under 37 CFR 1.46 by the assignee of the entire interest, the assignee can add an inventor who refuses to sign by making use of 37 CFR 1.64.
II. Reissue Application Filed Before September 16, 2012
Where a reissue application to correct inventorship is filed before September 16, 2012, and that application also changes the claims to enlarge the scope of the patent claims, the signature of all the inventors is needed. However, if an inventor refuses to sign the reissue oath or declaration because he or she believes the change in inventorship (to be effected) is not correct, the reissue application can still be filed with a petition under pre-AIA 37 CFR 1.47 without that inventor’s signature, provided the written consent of all owners/assignees as required by pre-AIA 37 CFR 1.172(a) is also submitted.
Where a patent to inventors X and Y has no assignee, a reissue application is filed by inventor Y to delete the name of inventor X as an inventor and to broaden the patent. Inventor X refuses to sign the reissue oath or declaration and refuses to provide the consent as required by pre-AIA 37 CFR 1.172(a). In this instance, a pre-AIA 37 CFR 1.47 petition would not be appropriate to permit the filing of the reissue application because the consent requirement of pre-AIA 37 CFR 1.172(a) for each owner/assignee is not met. Resort to the courts would be required to delete the name of inventor X as an inventor where X will not consent to the filing of a reissue application. As stated in the second paragraph of pre-AIA 35 U.S.C. 256, “[t]he court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.”
