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Patent Mistakes Happen. A Patent Reissue Application Can Fix Them.

Nobody’s perfect, and neither are many issued patents. Often, errors and defects in a patent may threaten its validity and make it wholly or partly inoperative. In such cases, a reissue application is a valuable tool for correcting defects and ensuring the ongoing protection of a patent.

What Is a Patent Reissue Application?

As described in the U.S. Patent and Trademark Office’s (USPTO) Manual of Patent Examining Procedure (MPEP), a patent holder can file a reissue application “to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. 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.”

What Types of Errors Can Be the Basis for a Patent Reissue?

As explained in the MPEP, an error that sufficiently supports a reissue must cause the patent to be “deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.” Therefore, only substantive errors can justify a reissue. Patent corrections related to spelling, grammatical, typographical, editorial, or clerical errors are not sufficient unless such an error renders the patent wholly or partly inoperative or invalid.

According to the USPTO, the most common reasons for filing a reissue application are:

  • The claims are too narrow or broad.
  • The disclosure contains inaccuracies.
  • The applicant failed to or incorrectly claimed foreign priority.
  • The applicant failed to refer to or incorrectly referred to prior co-pending applications.

What Are the Requirements for Submitting a Patent Reissue Application?

The following elements are all required to obtain a reissue patent:

  • The patent’s specification, claims, or drawings must be wholly or partly inoperative or invalid.
  • The error was made without deceptive intent (this requirement was removed for patent reissue applications filed under the AIA).
  • The patent owner must surrender the original patent.
  • The patent owner must pay the appropriate fee.
  • The application for reissue cannot contain any new matter.
  • If the reissue application enlarges the scope of the claims in the original patent, it must be filed within two years from the grant of the original patent.

A patent holder must include each of the following items in their reissue application:

  • The specification, drawings, and claims as amended, including the entire original patent.
  • Where applicable, a “chain of title” signed by an assignee and written consent by the assignee.
  • An offer to surrender the original patent.
  • A reissue declaration stating that the applicant believes the original patent to be “wholly or partly inoperative or invalid” because of a defective specification or drawing or because of claiming more or less than the owner had a right to claim.
  • A claim for the benefit of foreign priority, if appropriate.

Reissue Risks

Filing a reissue application is not without some risk. Since the Examiner will review the application as it would an original patent application, it reopens the patent prosecution of the claims, allowing the Examiner to raise objections or questions regarding validity or allowance.

The reissue declaration that the patent holder must submit with their application also poses some potential dangers that require consideration before seeking a patent reissue. Most patent owners seek reissue due to litigation and want to amend the claims to specifically cover the alleged infringing product. In such circumstances, the declaration, made under oath, is an admission by the patent owner that they have claimed less than they are entitled to. However, at that point they may have a valid claim that seems to read on the alleged infringing product and may lose it all during the re-examination process Additionally, the claims may be narrower, and the oath is an admission in court that the patent is invalid.

Accordingly, patent owners must tread carefully when seeking reissue related to litigation as the inventor’s oath or declaration for a reissue application must also state 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 the patentee claiming more or less than the patentee had a right to claim in the patent.

If you have questions about patent reissue applications or concerns that an existing patent may contain errors needing correction, please contact the attorneys at The Dobrusin Law Firm.

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