Reissue Application

A reissue application is a USPTO proceeding under 35 U.S.C. § 251 by which the owner of an issued patent can seek to correct errors in that patent — including errors that caused the patent to be wholly or partly inoperative or invalid. STATUTORY BASIS: § 251 provides that whenever a patent is '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 surrender of the patent and payment of fees, reissue the patent for the unexpired term of the original patent. TWO CATEGORIES OF REISSUE: (1) BROADENING REISSUE — seeks claims broader than those in the original patent; CRITICALLY: must be filed within 2 YEARS of the original patent's GRANT DATE (§ 251(d)); this 2-year window is absolute — there is no extension and no petition procedure to extend it; (2) NARROWING REISSUE — seeks claims narrower than the original patent (or corrections to the specification/drawing without scope change); NO time limit; can be filed at any point during the patent's term; WHO CAN FILE: only the patent OWNER (not a licensee); the patentee must also file a declaration under 37 C.F.R. § 1.175 identifying the error that renders the patent wholly or partly inoperative/invalid and explaining why the error arose without deceptive intent.

The error in the issued patent must be one that renders the patent 'wholly or partly inoperative or invalid.' BROADENING ERRORS (correctable by broadening reissue): (1) CLAIMING TOO NARROWLY — the applicant's claims are narrower than they should have been due to a mistake in drafting; for example, the applicant added a limitation during prosecution that was not necessary to distinguish the prior art, resulting in claims that don't cover all embodiments of the invention; (2) FAILURE TO CLAIM SEPARATE INVENTIONS — the original application claimed only one aspect of a multi-aspect invention; through reissue, the patentee seeks claims to the other aspects; (3) INCORRECT CLAIM TYPE — the applicant only filed method claims but should have also filed apparatus claims (or vice versa). NARROWING ERRORS (correctable by narrowing reissue — no time limit): (1) OVERCLAIMING — the claims are broader than what the applicant had a right to claim; if the patent claims are invalid due to prior art or § 112 issues, the patentee can narrow them through reissue to preserve some coverage; (2) SPECIFICATION ERRORS — the specification is unclear, contains errors, or fails to properly support the claims; (3) FORMAL ERRORS — errors in drawings or the abstract that affect the patent's utility; ERRORS THAT CANNOT BE CORRECTED BY REISSUE: (1) DECEPTIVE INTENT — errors arising from deceptive intent cannot be corrected (the error must be without deceptive intent); (2) ADDING NEW MATTER — reissue cannot introduce new matter not in the original disclosure; (3) PROSECUTION HISTORY ESTOPPEL — reissue cannot be used to recapture claim scope surrendered during prosecution (the recapture rule, discussed below).

The recapture rule is the most important limitation on broadening reissue. THE RULE: a patentee cannot use a broadening reissue to reclaim subject matter that was deliberately surrendered during the original prosecution of the patent; if the patentee narrowed the claims to overcome a prior art rejection, that surrendered scope is unavailable through reissue. THE RATIONALE: if an applicant narrowed claims to get the patent allowed, the public is entitled to rely on that surrender; allowing the patentee to immediately 'undo' that surrender through reissue would undermine the quid pro quo of the patent bargain and harm competitors who designed around the narrowed claims. HOW RECAPTURE IS ANALYZED: courts and the USPTO apply a three-part test: (1) did the broadened reissue claims 'recapture' surrendered subject matter? (2) was the original claim narrowed to overcome a prior art objection? (3) is the broadened reissue claim 'materially the same' as the original pre-amendment claim? If the reissue claim is broader in a way that relates to the subject matter surrendered in prosecution, recapture bars the amendment. WHAT IS NOT RECAPTURE: if a claim is broadened in an aspect DIFFERENT from what was surrendered, recapture may not apply; for example, if limitation A was added to overcome prior art and limitation B was added for drafting clarity, broadening by removing limitation B (but not A) may not trigger recapture for the aspect of A. PROSECUTION HISTORY REVIEW: preparing a broadening reissue requires a careful review of the prosecution history to identify all claim narrowing amendments and the reasons stated for those amendments, to assess whether the desired broadening will be barred by recapture.

Intervening rights protect third parties who have, between the original patent grant and the reissue, made substantial investments in reliance on the original (narrower) patent claims: TWO TYPES OF INTERVENING RIGHTS: (1) ABSOLUTE INTERVENING RIGHTS — under 35 U.S.C. § 252, a product made, used, sold, or imported before the reissue grant that would NOT have infringed the original patent claims but WOULD infringe the broadened reissue claims is subject to ABSOLUTE intervening rights — meaning the third party can continue to use, sell, or import the specific items already made (not new ones); the reissue patent CANNOT reach back to cover those specific items; (2) EQUITABLE INTERVENING RIGHTS — even for NEW activities that would infringe the broadened reissue claims, courts may grant equitable intervening rights if the third party had made substantial preparation (investment, tooling, contractual commitments) before the reissue was filed; courts balance the patentee's rights against the third party's detrimental reliance. WHY INTERVENING RIGHTS MATTER: before filing a broadening reissue, the patentee should evaluate: who is already making products that fall outside the original claims but inside the desired broader claims? those parties may have absolute or equitable intervening rights, limiting the value of the reissue; DEFENSIVE USE: accused infringers in reissue patent litigation should always investigate whether their activities between the original grant and the reissue establish intervening rights; this can be a complete defense to damages for pre-reissue activities.

REISSUE vs. EX PARTE REEXAMINATION: (1) WHAT EACH ADDRESSES: reissue corrects errors in claim scope and specification; reexamination challenges validity based on prior art patents and printed publications; they address different issues — reissue is primarily for the patent OWNER to fix problems; reexamination is primarily to challenge validity (can be requested by anyone); (2) SCOPE OF CORRECTION: reissue can make any type of correction including non-prior-art § 112 corrections and can change claim scope; reexamination is limited to patentability over prior art under § 102/103; (3) NO REQUESTER ESTOPPEL: unlike IPR, reissue does not create estoppel for the patentee; a patentee can use reissue to cure § 112 problems or scope issues without estopping future challenges; (4) PROSECUTION HISTORY: reissue creates a new prosecution history that can affect future claim construction and DOE analysis. REISSUE vs. CONTINUATION: (1) TERM: a continuation application starts a new patent with a 20-year term from the ORIGINAL filing date — same as reissue; (2) NEW MATTER: continuations cannot add new matter; neither can reissue; (3) SCOPE: a continuation can claim the same or different scope within the original disclosure; reissue can broaden (2-year limit) or narrow; (4) WHEN REISSUE IS BETTER: the original patent already issued; broadening reissue is within 2 years; the patentee wants to keep the same patent number; (5) WHEN CONTINUATION IS BETTER: the patentee wants a fresh prosecution (no recapture risk); the original claims have significant prosecution history estoppel that would limit DOE; the patentee wants to claim subject matter not specifically covered by the original disclosure structure.