A reissue application is filed when an issued patent, through error, is considered to be “wholly or partly inoperative or invalid."1 Reissue, therefore, may be utilized to correct errors that are more substantive than those which may be corrected by simply requesting a certificate of correction. Only the owner of the issued patent (i.e., the patentee) may elect to file a reissue application. The statutory and regulatory requirements that there be an error precludes courts from ordering parties to seek reissue where the patent owner insists there is no error in his patent.2
Reissue application filings are announced in the USPTO Official Gazette (OG) to give interested parties an opportunity to submit to the Examiner information pertinent to the patentability of the reissue application. An OG announcement shall include (1) the date of the request (if not Director ordered), (2) the reexamination request control number or Director initiated control number; (3) the patent number; (4) the Title of the Invention; (5) the USPTO Classification System’s original Class and Subclass designation; (6) the name of the inventor; (7) the name of the patent owner of record; and (8) the examining group to which the reexamination is assigned (although, currently, most reexamination proceedings are handled by Examiners assigned to the Central Reexamination Unit (CRU)).
When the reissue patent is ultimately granted or the reissue application is otherwise terminated, an appropriate statement is also added to the file of the original patent.
On the surrender of the original patent and the payment of the appropriate fees, the USPTO grants a reissue patent for the unexpired part of term of the original patent.
The elements required for obtaining a reissue patent are as follows:
- The specification, drawings or claims of the patent to be reissued must be wholly or partly inoperative or invalid;
- The error must have occurred without deceptive intent (if filed prior to implementation of the AIA; this requirement has been deleted if under the AIA);
- The original patent must be surrendered;
- The appropriate fee must be paid;
- No new matter can be introduced into the application for reissue; and
- 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.
With regard to filing a reissue application having claims of an enlarged or broadened scope, note that at least one broadened claim must be filed within two years of the patent grant date, regardless of when the reissue application was filed.3
1. the claims are too narrow or too broad;
2. the drawings or disclosure of the specification contain inaccuracies;
3. the applicant failed to claim or incorrectly claimed foreign priority; and
4. the applicant failed to make reference to or incorrectly made reference to prior co-pending U.S. applications.
In general, a reissue application makes some change in the specification or the claims. Normally, an attempt to obtain a reissue patent without any change to the text is not proper (and is treated as merely a request for an advisory opinion).4 When a reissue application is filed, the entire application will be examined in the same manner as an original application. Thus, the Examiner can review the original claims and any claims added in the reissue application.
Regarding content, the following items must be included in an application for a reissue:5
- the specification, claims, and drawings as amended, including the entire original patent;
- a “chain of title” signed by the assignee and written consent by the assignee; an offer to surrender the original patent;
- a reissue declaration; and
- a claim for the benefit of foreign priority, if appropriate.
A reissue declaration (or oath) must state that 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 claiming more or less than the patent owner had a right to claim. The reissue declaration must include at least one error relied upon as a basis for the reissue.6 The America Invents Act has removed the requirement that the error be made without deceptive intention.7
The reissue statute “is remedial in nature, based on fundamental principles of equity and fairness.”8 But, the reissue statute has limits, namely the recapture doctrine. The recapture rule or doctrine arises when an applicant for reissue attempts to obtain broader claims which have the same scope or a scope larger than claims cancelled or surrendered (given up) during prosecution of the original application.
Changes to claims in a reissue application may create “intervening rights” on the part of potential infringers who infringe the claims between the time of the issuance of the original patent and the issuance of the reissue patent. 9 The effect of the intervening rights doctrine is that an infringer who infringes any claims in the reissue patent which recite subject matter falling within the scope of claims in the original patent, is subject to an infringement action just as if the original patent had continued.
On the other hand, if the infringer only infringes subject matter subsequently added to the claims of the reissue patent, then the alleged infringer has so-called “intervening rights.” As a basic principle, to determine whether intervening rights exist, “the standard applied is that of whether a particular change to the claims is substantive, such that the scope of the claims is no longer substantially identical."10
Intervening rights provide that the party cannot be found guilty of past infringements since the infringed claims were changed through the reissue process. If intervening rights do exist, then the court in its equity power must determine how to fashion a remedy with respect to continued infringing activity.11 The court makes this decision based upon “such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue."12 As a guiding principle, if the infringer has made significant investment prior to issuance of the reissue, then the court may permit the “infringer” to continue infringing activity based upon this large prior investment. The court may, however, provide that the infringer not further expand its activity, but continue at the same level. Alternatively, if the court finds that no significant investment has been made, the court may fashion various other remedies, such as permitting the infringer to sell off current stock but not produce any additional products.
- 35 U.S.C. § 251 and 37 Code of Federal Regulations (“C.F.R.”) §§ 1.171-1.178.
- Green v. Rich Iron Co., Inc., 944 F.2d 852, 20 U.S.P.Q.2d 1075 (Fed. Cir. 1991).
- In re Graf, 42 U.S.P.Q.2d 1471, 1473 (Fed. Cir. 1997).
- In re Dien, 214 U.S.P.Q. 10 (C.C.P.A. 1982).
- 37 C.F.R. §§ 1.171-1.175.
- 37 C.F.R. § 1.175(a).
- Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (codified as amended at 35 U.S.C § 251 (2011)).
- In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986).
- 35 U.S.C. § 252.
- Slimfold Mfg. Co. v. Kinkead Industries, Inc., 1 U.S.P.Q.2d 1563 (Fed. Cir. 1987).
- Seattle Box Company, Inc. v. Industrial Crating and Packing, Inc., 221 U.S.P.Q. 568, 574 (citing 35 U.S.C. § 252) (Fed. Cir. 1984).
- 35 U.S.C. § 252.