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1402    Grounds for Filing

MPEP SECTION SUMMARY

This section covers the grounds for filing a reissue application. Essentially, they are 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. The following types of errors are briefly mentioned and explained in this section; errors based on the scope of claims, inventorship errors, errors related to priority of a foreign application, errors in the benefit claim to a domestic application, and errors in drawings.

  Section Frequency Chart

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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.


IV.   ERROR IN BENEFIT CLAIM TO DOMESTIC APPLICATION

Where the application, which became the patent to be reissued, was filed on or after November 29, 2000, reissue may be employed to correct an applicant’s mistake by adding or correcting a benefit claim under 35 U.S.C. 119(e).


V.   ERROR IN DRAWING

A reissue may be based on a drawing correction that is substantive in nature.

 

» 1403  Diligence in Filing