How do I fix a mistake in my patent after it is issued?

How do I fix a mistake in my patent after it is issued?

A patent is a set of exclusive rights granted by a government to the inventor of a new invention.  An inventor gains a patent in the Untied States by filing a patent application with the United States Patent and Trademark Office.  A patent application is a complex document that has a precise form which must be followed. A patent application may be written in English, but the definition of a word in a patent application may be different than the ordinary dictionary meaning of the word. An inventor may submit a patent application on their own, or they may hire a patent attorney to write the patent application and communicate with the United States Patent and Trademark Office.  The Untied States Patent and Trademark Office has their own staff of patent attorneys to review patent applications which have been submitted.

Despite the scrutiny that patent applications receive by both the applicants and the United States Patent and Trademark Office, sometimes a patent is granted with  mistake. When the mistake is minor, and does not affect the claims of a patent, the mistake can be corrected with a Certificate of Correction.  But when a mistake is discovered in a patent that renders the patent wholly or impartially invalid, a reissue application must be filed to correct an error in the patent.

The most common reasons for filing a reissue application are:

  1. the claims are too narrow or too broad;
  2. the disclosure contains inaccuracies;
  3. applicant failed to or incorrectly claimed foreign priority; and
  4. applicant failed to make reference to or incorrectly made reference to prior copending applications.

The text of the statute that enables reissue applications reads as follows:  35 U.S.C. 251 Reissue of defective patents (a) IN GENERAL.—Whenever any patent is, through error, 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, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

What constitutes new matter in a reissue application is an important question.  Like the rest of the patent application process, simple phrases can have very specific meaning.  To learn how the statutory requirement of “No new matter” has been interpreted, it is helpful to study case precedent.

A case which relates to the “No new matter”  IN RE: GLOBAL IP HOLDINGS LLC, 2018-1426 (C.A.F.C. 2019).  Global owns U.S. Patent No. 8,690,233, which claims carpeted automotive vehicle load floors having sandwich type composite panels with cellular cores. Several features of claimed features of the ‘233 patent include thermoplastic.  Global filed a reissue application, seeking to broaden its claims in the ’233 patent. In particular, it replaced the term “thermoplastic” with “plastic” in the independent claims.  After finding that the specification only supports thermoplastics, the patent examiner determined that Global cannot claim the full range of plastics. The examiner claimed that by changing the term “thermoplastic” to “plastic,” Global introduced new matter.  The Patent Trial and Appeal Board affirmed the examiner’s rejection of reissue claims.  The Board found that the ’233 patent’s specification was insufficient “regardless of the predictability of results of substituting alternatives, or the actual criticality of thermoplastics in the overall invention.” Global appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit held that the Patent Trial and Appeal board erred in its analysis.   The Federal Circuit held that the test for sufficiency is whether the specification reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.  The predictability of substituting generic plastics for thermoplastics in the patent claim is relevant to the written description inquiry.  The Federal Circuit remanded the case back the Patent Trial and Appeal Board to  address the relevant factors, including predictability and criticality, based on the record evidence and determine whether the written description requirement has been satisfied under the proper legal standard.

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