Reissue Applications: Procedure, Advantages and Pitfalls

A reissue application is the patent owner’s most flexible tool for repairing an issued patent. It can fix claims, the specification or the drawings, and it is examined much like a new application. That flexibility comes at a price: the owner gives up the original patent, reopens every claim to examination and creates a new public record.

This article walks through the procedure and then weighs what reissue offers against its traps. For a shorter overview, see the reissue applications guide.

The legal basis

Under 35 U.S.C. § 251, the Director reissues a patent for the unexpired part of its term when, through error, the patent is deemed wholly or partly inoperative or invalid. Typical errors include a defective specification or drawing, or claiming more or less than the patentee had a right to claim. No new matter may be added.

Before the America Invents Act, § 251 also required that the error arise “without any deceptive intention.” That phrase was removed for proceedings commenced on or after September 16, 2012. The implementing rules are 37 C.F.R. §§ 1.171–1.179, and the examining guidance is in MPEP Chapter 1400.

Filing requirements

A reissue filing has several parts that do not appear in an ordinary application:

• Reissue oath or declaration (37 C.F.R. § 1.175). It must identify at least one error that supports reissue. A general statement that “errors exist” is not enough.
• Consent of assignees (§ 1.172). Every assignee of an undivided interest must consent to the reissue.
• Offer to surrender (§ 1.178). The applicant offers to surrender the original patent. The surrender takes effect when the reissue issues.
• Markings showing changes (§ 1.173). Amendments are shown relative to the original patent, with deleted text in brackets and added text underlined, so the public can see exactly what changed.

The specification and claims are presented as they stand in the patent, and new claims are numbered after the highest original claim.

How examination works

A reissue application is examined under the same standards as a new application. The examiner can reject any claim, including unchanged original claims, on any ground that applies to applications, not only prior art. That is a key difference from ex parte reexamination, which is limited to patents and printed publications.

Reissue applications are publicly available, and the filing is announced in the Official Gazette. Members of the public can review the file and may file a protest, which the Office considers within the limits of its rules.

Advantages

Reissue can do things no other post-grant tool can:

• Narrow claims that are too broad, for example to avoid newly discovered prior art.
• Broaden claims that are too narrow, if the application is filed within two years of the original grant (§ 251(d)).
• Add dependent claims as a hedge while keeping the original claims, an approach confirmed in In re Tanaka (Fed. Cir. 2011).
• Correct the specification or drawings where the error is more than clerical.

For purely clerical or typographical errors, a certificate of correction is usually simpler. To have new information considered, supplemental examination may fit better; the trade-offs are discussed in reissue versus supplemental examination.

Pitfalls

The recapture rule

A reissue cannot regain subject matter the applicant surrendered during original prosecution to get the patent allowed. Broadening a claim by removing a limitation added to overcome prior art is a classic recapture problem. See the discussion of In re Youman for how the analysis works.

Intervening rights

Under 35 U.S.C. § 252, a reissued patent with changed claims can give third parties absolute or equitable intervening rights for activities that began before the reissue. Even a successful reissue may therefore leave some past and continuing conduct beyond reach. See the article on intervening rights after Marine Polymer.

Every claim reopened

Filing a reissue invites a fresh look at the whole patent. Original claims the owner was happy with can be rejected, and the owner may end up with narrower claims than before.

New prosecution history

Arguments and amendments made during reissue become part of the record. They can be used later in claim construction, prosecution history estoppel or inequitable conduct allegations.

The “original patent” requirement

Section 251 allows reissue only for “the invention disclosed in the original patent.” Reissue claims must be directed to the invention the original disclosure shows as the patentee’s invention, not merely to subject matter that could be pieced together from it.

Comparing reissue with other tools

Feature	Reissue	Ex parte reexamination	Certificate of correction
Who starts it	Patent owner	Anyone	Owner (or Office for its own mistakes)
Grounds examined	All patentability grounds	Patents and printed publications	Clerical or minor errors only
Broadening	Within two years	Never	Not if broadening is unclear from the record
Original patent surrendered	Yes	No	No

Key takeaways

• Reissue requires a declaration identifying an error, assignee consent, an offer to surrender and marked changes.
• It can narrow, broaden (within two years), add dependent claims or fix the disclosure.
• Every claim is re-examined on all grounds, and the file is public.
• Recapture, intervening rights and new prosecution history limit what reissue achieves.
• Since September 16, 2012, § 251 no longer requires showing an absence of deceptive intent.