What is an application for the reissue of a patent in the United States?

What is an application for the reissue of a patent in the United States?

Acquiring a patent is a long and expensive process.  The owner of the patent, the patent attorney who is representing the owner and the patent examiner at the United States Patent and Trademark Office all expend a significant amount of effort in the patent application process.  Every effort should be made to avoid mistakes in a patent application and to correct mistakes while the patent is being examined.  But sometimes mistakes happen and a patent is granted which has a mistake in it.  If a patent is granted with a mistake and the mistake is bad enough to make the patent invalid, than the owner of the patent can file a reissue application.  A reissue application asks the United States Patent and Trademark Office to fix a mistake in a granted patent.

For a mistake to be deemed bad enough to justify a reissue application, the mistake must be an error which causes 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.”  A mistake that is merely related to spelling, or grammar, or a typographical, editorial or clerical mistake which does not cause the patent to be deemed wholly or partly inoperative or invalid can be fixed with a certificate of correction.  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.  A reissue application cannot be granted if there is not at least one error in the granted patent.  A reissue application can only be filed at the request of the patent owner, a court cannot order a patent owner to file a reissue application if the patent owner feels there are no errors in the patent.

The most common bases 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.

For a reissue application to be granted all of the following conditions must be met:

  1. The specification, drawings or claims of the patent to be reissued must be wholly or partly inoperative or invalid;
  2. The original patent must be surrendered;
  3. The appropriate fee must be paid;
  4. No new matter can be introduced into the application for reissue; and
  5. Any reissue application enlarging the scope of the claims of the original patent must be filed within two years from the grant of the original patent.

Two important things to keep in mind when filing a reissue application to broaden the scope of claims are the Recapture Doctrine and Intervening Rights.

The Recapture Doctrine is relevant when a reissue application seeks to broaden the scope of the patent claims.  A patentee is allowed to broaden the scope of the claims in a reissue application, but if the scope of the claims are the same or broader than claims given up or canceled during the prosecution of the original patent application than the reissue application will not be granted.  The idea behind the recapture doctrine is that a patantee cannot revisit issues already dealt with in the original patent application with a reissue application.

Intervening Rights are relevant when the patent owner sues another party for patent infringement.  If the claims of the original patent did not cover the alleged patent infringement than the alleged infringer may not be held liable for the infringement that happened before the reissue application is granted.  Whether or not an alleged infringer has intervening rights is a question to be determined by the courts.  The courts may or may not allow infringing activity, that began before the reissue application is granted, to continue depending on how much of an investment the alleged infringer has made in the infringing activity.  The remedies that the court may provide when it is shown that there are intervening rights, are dependent on the facts of the case.

If you are thinking about filing for a reissue application or you feel there is an error in your patent which justifies a reissue application, it is best to consult with a patent attorney to review all the facts and determine the best course of action.