Chapter 1400: Correction of Patents
A reissue application may be filed to correct an error made without any deceptive intent in the original patent. In order to qualify for reissue, the patent must be deemed wholly or partly inoperative or invalid as a result of the error.
The most common reasons for filing a reissue include; too narrow or too broad of claims, inaccuracies in the disclosure, an incorrectly claimed foreign priority, or a failure to make reference to or an incorrectly made reference to prior copending applications. Reissues may not be filed for minor typing errors.
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The Executive Summaries from the main chapter sections have been copied here for your convenience (subsections are not included here). They will help you remember what each main section of the Guidebook (MPEP) covers as you answer the questions from the quizzes above.
The provisions of 35 U.S.C. 251 which discusses the reissue of defective patents, permit the reissue of a patent in order to correct an error in the patent made without any deceptive intention and provide the criteria for the reissue patent.
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.
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, if the reissue application is filed within two years of the issue date of the patent. A reissue filed on the 2-year anniversary date is considered as filed within 2 years.
A reissue application can be granted a filing date without an oath or declaration, or without the basic filing fee, search fee, or examination fee being present.
The maximum term of the original patent is fixed at the time the patent is granted. While the term may be subsequently shortened, e.g., through the filing of a terminal disclaimer, it cannot be extended through the filing of a reissue.
Accordingly, a deletion in a reissue application of an earlier-obtained benefit claim will not lengthen the term of the patent to be reissued.
In a reissue application, the examiner will consider all references that have been cited during the original prosecution of the patent, and list any reference again cited/applied in the reissue application.
Should applicants wish to ensure that all of the references which were cited in the original patent are considered and cited in the reissue application, an information disclosure statement (IDS) in compliance should be filed in the reissue application.
This section includes coverage of the content and formatting of a reissue application. Essentially, the specification (including the claims and any drawings) of the reissue application is the copy of the printed patent for which reissue is requested that is submitted by applicant as part of the initial application papers. This section also discusses amendments submitted at the time of the filing of a reissue application.
This section covers the form of the reissue specification. A full copy of the printed patent should be used to provide the abstract, drawings, specification and claims of the patent for the reissue application. Each page must be one-sided, two-sided copies are improper.
This section covers the content of the claims. Topics discussed include how reissue claims must be for the same general invention, the recapture of canceled subject matter, and broadening of reissue claims. In addition, the correction of inventorship by reissue and the correction of inventorship in a broadening reissue application are both also covered.
If there are no changes to the drawing of an original patent, the same drawings may be used for the reissue application. A letter should be written requesting the transfer and copy of original drawings. A new drawing sheet must be provided for reissues.
In addition, the prior reissue practice of transferring drawings from the patent file has been eliminated, since clean photocopies of the printed patent drawings are acceptable for use in the printing of the reissue patent.
This section covers the content of a reissue oath/declaration. A reissue oath or declaration must contain a statement that the 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 patentee claiming more or less than patentee had the right to claim in the patent. In addition, it must contain a statement of at least one error which is relied upon to support the reissue application, i.e. as the basis for the reissue.
This section covers the reissue application filing, search, and examination fees. In addition, it also briefly touches on the application size fee and excess claims fees along with potential refunds.
Surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required.
A claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. No additional certified copy of the foreign application is necessary.
A patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”).
A reissue application is subject to the same duty of disclosure requirements as is any other nonprovisional application.
A reissue application is subject to the same duty of disclosure requirements as is any other nonprovisional application.
This section covers the examination of a reissue application including the determination of patentability over the prior art along with an example.
Reissue applications will be acted on by the examiner in advance of other applications, i.e., “special.” Generally, a reissue application will not be acted on sooner than 2 months after announcement of the filing of the reissue has appeared in the Official Gazette. The 2-month delay is provided in order that members of the public may have time to review the reissue application and submit pertinent information to the Office before the examiner’s action.
All reissue applications are taken up "special," and remain "special" even if applicant does not respond promptly.
All reissue applications, except those under suspension because of litigation, will be taken up for action ahead of other "special" applications; this means that all issues not deferred will be treated and responded to immediately. Furthermore, reissue applications involved in litigation will be taken up for action in advance of other reissue applications.
This section covers the requirements of a reissue oath or declaration along with the review of the reissue oath or declaration. For instance, for reissue applications filed on or after September 16, 2012 a supplemental reissue oath or declaration is not required where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue.
This section also covers when a supplemental reissue oath or declaration is required in applications filed before September 16, 2012.
A reissue application, including all the claims therein, is subject to “be examined in the same manner as a non-reissue, non-provisional application.” Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the reissue application differs from that applied to the original application, the overall examination of the reissue application is conducted in the same manner as was the parent.
This section covers fraud, inequitable conduct, and duty of disclosure issues. The Office will not comment upon duty of disclosure issues which are brought to the attention of the Office in reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer considered by the Office during its examination of patent applications.
This section provides coverage of protests filed in reissues where the patent is involved in an interference or a contested case. It specifically discusses concurrent Office proceedings, interference in reissue, and reissue applications in derivation proceedings.
This section covers restrictions and election of species in reissue applications. A restriction will be required in a reissue application if the claims newly added in a reissue application are directed to an invention that is separate and distinct from the invention defined in the original patent claims.
Continuations and divisionals of reissue applications, to the extent possible, are treated in the same manner as continuations and divisionals of non-reissue applications. This section covers divisional reissue applications and continuation reissue applications.
A request for continued examination (RCE) is available for a reissue application for reissue of a utility or plant patent. Effective May 29, 2000, an applicant in a reissue application may file a request for continued examination of the reissue application, if the reissue application was filed on or after June 8, 1995.
This section covers making amendments to reissue applications. Essentially, no amendment in a reissue application may enlarge the scope of the claims, unless “applied for within two years from the grant of the original patent.”
The requirements for an appeal brief apply to a reissue application in the same manner that they apply to a non-reissue application. However, the claims on appeal presented in an appeal brief for a reissue application should include all underlining and bracketing necessary to reflect the changes made to the patent claims during the prosecution of the reissue application. In addition, any new claims added in the reissue application should be completely underlined.
This section covers allowance and issue including changes to the original patent and claim numbering. Renumbering of the original patent claims is never permitted. In addition, at least one claim of an allowable reissue application must be designated for printing in the Official Gazette.
This section also discusses parent application data on the bibliographic data sheet of the original patent file and examiner's amendments and it briefly touches on reissue oaths or declarations.
A reissue application can be filed for a design patent in the same manner that a reissue application is filed for a utility patent. This section provides further coverage of design reissue applications and patents. Included is a discussion on the expedited examination procedure, design reissue fees, multiple design reissue applications, and using reissue to convert patent types.
The reissued patent will be viewed as if the original patent had been originally granted in the amended form provided by the reissue.
37 CFR 1.11(b) opens all reissue applications to inspection by the general public and provides for announcement of the filings of reissue applications in the Official Gazette (except for continued prosecution applications).
This section discusses Certificates of correction when the Office made the mistake. Certificates of correction are used for minor mistakes (like typos) in issued patents. It includes additional information on when to use a Certificate of correction.
This section discusses Certificates of correction which were not the fault of the Office. It covers the two separate statutory requirements that must be made before a Certificate of correction for an applicant's mistake may issue.
Certificates of correction will not be issued for patents involved in interferences.
This section covers disclaimers. A disclaimer is a statement filed by an owner (in part or in entirety) of a patent or of a patent to be granted (i.e., an application), in which said owner relinquishes certain legal rights to the patent. There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer. This section provides coverage of both types of disclaimers as well as signing and supporting a disclaimer, processing in a Certificate of correction branch, withdrawing a recorded terminal disclaimer and other matters directed to terminal disclaimers.
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