Reissue vs. Supplemental Examination: Choosing a Patent-Owner Tool

After a patent issues, its owner sometimes discovers a problem: a claim that is too narrow, a claim that reads on prior art the examiner never saw, a mistaken statement in a declaration, or a reference that should have been cited. The patent statute gives the owner several ways to respond. Two of the most important are reissue under 35 U.S.C. § 251 and supplemental examination under 35 U.S.C. § 257.

They are often mentioned together, but they solve different problems. Reissue changes the patent. Supplemental examination primarily changes the record, so that information the Office has considered cannot later be used to have the patent held unenforceable.

Reissue in brief

Under § 251, when a patent is wholly or partly inoperative or invalid because of an error, such as a defective specification or drawing, or claiming more or less than the patentee had a right to claim, the Director reissues the patent for the unexpired part of its term. The owner surrenders the original patent and files a reissue application with a declaration identifying the error (37 C.F.R. § 1.175).

Key features:

• The reissue application is examined much like a new application, and every claim can be rejected on any ground that applies in examination.
• New matter cannot be added.
• Claims may be broadened only if the reissue is applied for within two years of the original grant (§ 251(d)).
• The recapture rule bars regaining subject matter surrendered to obtain allowance.
• Under § 252, changed claims can give third parties intervening rights. For more, see reissue procedure, advantages and pitfalls.

Supplemental examination in brief

Supplemental examination was created by the America Invents Act and has been available since September 16, 2012. Only the patent owner may request it. The request asks the Office to consider, reconsider or correct information believed to be relevant to the patent, which is not limited to patents and printed publications (§ 257(a)).

Within three months, the Office decides whether the information raises a substantial new question of patentability. If not, it issues a certificate and the process ends. If so, it orders ex parte reexamination (§ 257(b)), in which the owner may amend claims, but not broaden them.

The central benefit is § 257(c)(1): a patent may not be held unenforceable on the basis of conduct relating to information that was considered, reconsidered or corrected during supplemental examination. That protection has statutory exceptions, discussed below.

Side-by-side comparison

Feature	Reissue (§ 251)	Supplemental examination (§ 257)
Who may file	Patent owner (assignee of entire interest must consent)	Patent owner only
What it addresses	An error making the patent wholly or partly inoperative or invalid	Information relevant to patentability that the owner wants considered, reconsidered or corrected
Kind of information	Any error, including claim scope, specification or drawings	Any information, not limited to patents and printed publications
Claim amendments	Yes, including new claims; broadening only within two years of grant	Only if reexamination is ordered; no broadening
Timing	During the unexpired term; broadening within two years	Generally any time while the patent is enforceable
Examination	Full examination of the reissue application	SNQ decision within three months; reexamination if ordered
Effect on inequitable conduct	No statutory cure	Protection under § 257(c), subject to exceptions
Effect on third parties	Intervening rights for changed claims (§ 252)	Intervening rights for claims amended in any resulting reexamination
Main risks	All claims reopened; recapture; intervening rights	Reexamination may narrow or cancel claims; public record; high fees

Inequitable conduct: the key difference

If a patent owner’s concern is that a court might hold the patent unenforceable for inequitable conduct, supplemental examination is the tool designed for that problem. Reissue was not built for it, and owners should not assume that a reissue would remove an inequitable-conduct defense based on the original prosecution.

The § 257 protection is limited in important ways:

• It does not apply to an allegation pled with particularity in a civil action, or set out in certain notices (including a Paragraph IV notice under the Federal Food, Drug, and Cosmetic Act), before the date of the request (§ 257(c)(2)(A)).
• In an infringement action under § 281 or an ITC investigation under section 337, it does not apply to a defense unless the supplemental examination, and any resulting reexamination, concluded before the action was brought (§ 257(c)(2)(B)).
• If the Office becomes aware of material fraud, the Director must refer the matter to the Attorney General (§ 257(e)).

The value of this protection also depends on the inequitable-conduct standard itself, which became much harder to meet after Therasense, Inc. v. Becton, Dickinson & Co. (Fed. Cir. 2011) (en banc). See after Therasense: is supplemental examination worth it?

Cost and risk considerations

Both procedures carry risk because both invite the Office to look again. A reissue reopens every claim, and an owner who sought only a small correction can end up with narrower claims. Supplemental examination fees are high, particularly when reexamination is ordered, and the rules cap the number of items of information in a single request (37 C.F.R. § 1.605). Check the USPTO’s current fee schedule for amounts. In either case, the filing becomes part of the public record and may be noticed by potential infringers or challengers.

The procedures can also be used together or in sequence. An owner might use supplemental examination to have new information considered and reissue to correct claims, depending on the problem. Which approach fits depends on the facts, the stage of any litigation and the owner’s goals.

Key takeaways

• Reissue fixes errors in the patent itself and is the only route to broader claims, within two years of grant.
• Supplemental examination has the Office consider information, mainly to limit later inequitable-conduct challenges under § 257(c).
• Supplemental examination allows claim amendments only through an ordered reexamination, and never broadening.
• Both reopen the patent to scrutiny; the § 257 protection has important exceptions for earlier-pled allegations and later-filed actions.