Reissue:
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Grounds for filing:
- Reissues are filed in order to correct errors in patents that were made without any deceptive intention, unavoidable and unintentional, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid.
- An error arises from an error in the preparation and/or prosecution of the application.
- There must be at least one error.
- Spelling, or grammatical errors do not count.
Common reasons for filing a reissue include:
- Too narrow or too broad of claims.
- Inaccuracies in the disclosure.
- An incorrectly claimed foreign priority.
- If an applicant failed to make reference to or incorrectly made reference to prior copending applications.
No reissued patent shall be granted enlarging the scope of the claims of the original patent unless it is applied for within two years from the grant of the original patent:
- Broader claims may be applied for in a reissue.
- The reissue application must be filed within two years of the issue date of the patent.
- A reissue filed on the 2 year anniversary date is considered filed within 2 years.
- The reissue application must be filed within two years of the issue date of the patent.
In a reissue application, any adding or deleting to the original patent should be made by underlining and bracketing, respectively, except for changes made in prior Certificate of corrections and disclaimers of claims under 37 C.F.R. 1.321(a).
Reissues:- Only a patent owner may file reissues.
- Any prior art will be considered.
- Broadening claims are allowed within the first 2 years.
- Mistakes in the original are required.
Recapturing:
- The recapture doctrine prevents claims from being recaptured.
- A reissue will not be granted to recapture claimed subject matter that was surrendered in the original application in order to obtain the original patent.
- A reissue application may not be filed in order to broaden claims back to their original form where the claims were mistakenly narrowed during the original prosecution to avoid the prior art.
Where any intention to broaden is indicated in the reissue application within the 2 years, a broadened claim can subsequently be presented in the reissue after 2 years.
Correction of the misjoinder of inventors has been held to be grounds for reissue:
- It is appropriate to use a Certification of correction when the only charges being made are to correct inventorship (this fact cannot be contested between parties).
Oaths in reissues:
- Reissue oaths/declarations must meet the requirements of 37 C.F.R. 1.63.
- A claim for the benefit of an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made again in a reissue application.
Amendments for reissue claims:
- For each claim being amended, the entire text of the claim must be presented with markings.
- A patent claim should be canceled by a direction to cancel that claim.
- There is no need to present a claim surrounded by brackets.
- A new claim (previously added in a reissue) should be canceled by a direction to cancel that claim.
- A new claim added by amendment must be presented with underlining throughout the claim.
- Each amendment submission must set forth the status, on the date of the amendment, of all patent claims and of all added claims.
- An entire paragraph in the specification other than the claims may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph.
- Hand entry of amendments to a claim are not allowed.
- When responding to an Official action, each amendment when originally submitted must be accompanied by an explanation of support in the disclosure for the amendment.
