Reissue Patent

A reissue patent is a new patent that replaces the original patent after the USPTO reexamines it at the patent owner's request. LEGAL BASIS: 35 U.S.C. § 251; 37 C.F.R. §§ 1.171–1.179; REQUIREMENTS: (1) the original patent must be 'wholly or partly inoperative or invalid' by reason of a defective specification or drawing, or by claiming more or less than the applicant had a right to claim; (2) the error must have occurred without deceptive intent (deceptive intent would have been an inequitable conduct bar — pre-AIA doctrine; now the requirement is simply no deceptive intent at the time of filing reissue); (3) the patent owner (or assignee) must file the reissue application; (4) at least one claim must be amended or a new claim added (or a claim cancelled + a new claim substituted); TYPES OF CORRECTABLE ERRORS: (1) CLAIM ERRORS: claims too narrow (inventor failed to claim the full scope of the invention) → broadening reissue; claims too broad (claims would be invalid over prior art) → narrowing reissue; (2) SPECIFICATION ERRORS: inadequate written description, enablement issues, drawing errors, disclosure of incorrect or missing embodiments; (3) PRIORITY ERRORS: failure to claim priority to an earlier provisional or foreign application; correction adds the priority claim and adjusts the patent term accordingly; (4) INEQUITABLE CONDUCT DEFENSES: reissue cannot 'cure' inequitable conduct — the 'without deceptive intent' requirement bars this; a separate doctrine (Therasense) governs inequitable conduct.

Broadening reissue — a reissue that presents claims broader in scope than any claim in the original patent — must be applied for within 2 years of the grant of the original patent. STATUTORY BASIS: 35 U.S.C. § 251(d); WHAT COUNTS AS BROADENING: a reissue claim is 'broader' if it encompasses subject matter not covered by the original claims in any respect — even if narrower in some limitations and broader in others, the claim is considered broad if it covers additional subject matter; Tillotson, Ltd. v. Walbro Corp. (Fed. Cir. 1989): a claim that merely corrects an obvious drafting error (substituting a clearly intended term) is not broadening; STRATEGIC IMPORTANCE: the 2-year window is often missed by patent owners who don't realize their original claims were too narrow until after litigation begins or until a competitor designs around the original claims; patent counsel should advise clients at grant whether the claims could be broadened and whether a broadening reissue application is warranted; MONITORING COMPETITORS: after observing a competitor's product, if the original patent claims don't cover it and the patent was granted within 2 years, a broadening reissue may be the best option to restore coverage; INTERACTION WITH PTA: patent term adjustment (PTA) from the original prosecution is preserved in the reissue patent — the reissue does not restart the patent term.

The recapture rule prevents a patent owner from using reissue to reclaim subject matter that was surrendered during the original prosecution to overcome a rejection. RULE: if a patent applicant narrowed claims during prosecution (by claim amendment or argument) to distinguish prior art, and then seeks reissue to reclaim the surrendered subject matter, the USPTO will reject the reissue claim as improper under the recapture rule; POLICY: the recapture rule is the reissue equivalent of prosecution history estoppel for DOE infringement — both prevent inventors from getting back through the back door what they gave up at the front door; THREE-STEP RECAPTURE ANALYSIS: (1) Does the reissue claim broaden the original claims? (2) Was there a surrender of subject matter during prosecution — either by amendment or argument? (3) Does the reissue claim recapture the surrendered subject matter — wholly or partially? If yes to all three, recapture bars the reissue; PARTIAL RECAPTURE: a reissue claim that only partially recaptures surrendered subject matter may still be barred; EXCEPTIONS: recapture can be avoided if the reissue claim is materially narrowed in other respects — so the overall scope does not recapture what was surrendered; M.P.E.P. § 1412.02; COMPARE WITH DOE PROSECUTION HISTORY ESTOPPEL: prosecution history estoppel (Festo) bars DOE in litigation for claims narrowed by amendment; recapture rule bars the reissue claim itself before it ever becomes a basis for infringement.

When a reissue patent issues with broadened claims, third parties who began practicing the invention before the reissue filing date are protected by the intervening rights doctrine. STATUTORY BASIS: 35 U.S.C. § 252; TWO TYPES OF INTERVENING RIGHTS: (1) ABSOLUTE INTERVENING RIGHTS (§ 252, first paragraph): a third party who, before the reissue application filing date, made, purchased, or used specific articles (physical embodiments) has an absolute right to use, sell, or offer for sale those specific articles even if they infringe the reissue patent; the right covers only existing inventory/articles, not the right to make more; (2) EQUITABLE INTERVENING RIGHTS (§ 252, second paragraph): courts have discretion to permit a third party to continue making or using products that infringe the reissue claims, based on equitable considerations — if the party had made substantial preparations to practice the invention before the reissue filing date; EQUITABLE FACTORS: investment made; preparations undertaken before reissue; notice of the original patent claims; whether the broadened claims were foreseeable; THIRD-PARTY STRATEGY: competitors who know a reissue application has been filed should immediately (1) document their current activities and investments; (2) consider intervening rights if the reissue claims broaden to cover their product; (3) file prior art submissions in the reissue proceeding (any third party may submit prior art under 37 C.F.R. § 1.291); PROSECUTION OF REISSUE: the reissue application is re-examined by the USPTO; the patent owner must provide a declaration explaining the error, the corrections sought, and a statement that the error was made without deceptive intent.

Patent owners have several options for correcting issued patents — the right mechanism depends on the type and significance of the error: CERTIFICATE OF CORRECTION (§ 255): use for minor clerical or typographical errors (missing word, incorrect date, name misspelling); cannot change claim scope; USPTO issues automatically or on petition; cost = $150–300; no reexamination; REISSUE (§ 251): use when: (1) claims are too narrow and broadening reissue window is open; (2) claims need substantive narrowing (to overcome prior art found post-grant); (3) priority claim needs to be corrected; (4) specification has material errors affecting claim scope; involves full reexamination by an examiner; all original claims must be reproduced in the reissue; SUPPLEMENTAL EXAMINATION (§ 257): use when patent owner discovers information (prior art, prior public use, etc.) that was not considered during prosecution and wants to foreclose inequitable conduct allegations; does not require an 'error' in the same sense as reissue; REQUEST FOR CONTINUED EXAMINATION (RCE): available only during prosecution (before patent issues); cannot be used post-grant; REISSUE vs. EPR/IPR: reissue is a PATENT OWNER tool (not available to challengers); EPR/IPR are primarily challenger tools; PROSECUTION: reissue is conducted by a USPTO examiner (not PTAB); the examiner applies the same standards as original prosecution; prior art can be submitted by third parties under Rule 291; if the reissue application presents a substantial new question of patentability, the examiner may order reexamination of all original claims.