Chapter §21.03 Reissue

JurisdictionUnited States

§21.03 Reissue

[A] Overview

For errors not remediable by a certificate of correction as discussed above, the patentee may need to consider whether to seek reissuance of his defective patent. Reissue is an administrative procedure conducted within the USPTO for correcting an issued patent that suffers from certain enumerated errors. Reissue is governed by 35 U.S.C. §§251–252. Prior to the America Invents Act, reissue error had to have occurred "without any deceptive intention."16 The AIA removed the intent requirement,17 effective for "proceedings commenced on or after" September 16, 2012.18

Reissue involves an offer by the patentee to surrender the original patent,19 submission of a reissue application with an oath setting forth the asserted errors, and a reprosecution of the patent's claims. During the reprosecution, all claims of the reissue application are subject to rejection on any statutory ground.20 The possible results of this procedure are reissue of the patent in original or amended form for the remaining term of the original patent, or if no error is found, a refusal by the agency to reissue the patent. Unless and until a reissued patent is granted, the original patent remains in effect.21

The USPTO assigns reissued patents a new patent number that begins with the abbreviation "RE"—for example, "US RE 43,804."22 The specification of the reissued patent will be printed by the agency "in such a manner as to show the changes over the original patent text by enclosing any material omitted by the reissue in heavy brackets [] and printing material added by the reissue in italics."23 Although it has been corrected in the USPTO, a reissued patent nevertheless remains subject to the possibility of invalidation in federal court litigation, just as an original patent.

[B] Historical Development

The practice of reissuing defective patents was first approved by the U.S. Supreme Court in 183224 and legislatively codified in the Patent Act of 1836.25 Reissue was conceived as a validity-saving mechanism, available when by an innocent mistake, "the instrument introduced to secure this privilege [the patentee's right to exclude] fails in its object. . . ."26 In other words, reissue was available when the patentee had innocently made an inadequate exchange.

The possibility of reissue recognizes the need for fairness to inventors, given the difficulty of drafting patents.27 As a remedial provision based on fundamental notions of equity and fairness, reissue is intended to "bail applicants out of difficult situations into which they get 'without any deceptive intention.' "28 Accordingly, the reissue statute "should be construed liberally."29

The 19th century saw extensive abuses of the reissue procedure.30 For example, in Miller v. Brass Co.,31 the Supreme Court held that an application for reissue should be denied because the patent owner delayed in seeking to broaden its claims for 15 years after issuance of the original patent. The Court recognized that reissue might be permitted to broaden claims, even though the statute at that time did not expressly provide for broadening reissues, if the reissue was sought within two years of the original grant (two years being the prefiling grace period at that time). But in Miller, the patentee's prolonged delay was unreasonable, and permitting reissue would have had unjust consequences: "Every independent inventor, every mechanic, every citizen, is affected by such delay, and by the issue of a new patent with a broader and more comprehensive claim. The granting of a reissue for such a purpose, after an unreasonable delay, is clearly an abuse of the power to grant reissues, and may justly be declared illegal and void."32

The reissue provisions of the Patent Act were subsequently amended in the 1952 Act to make explicit that broadening reissues must be sought within a two-year window after the grant of the original patent. This and other amendments, as well as a series of Supreme Court decisions on reissue patents, curbed the earlier abuses. Today, less than one percent of the U.S. patents granted annually are reissued patents.33 However, many reissued patents are involved in pending or contemplated litigation over infringement and/or validity. Thus, even though the absolute number of reissue proceedings is very low, the relative value or worth of the patents involved may be quite high.

[C] Statutory Basis: 35 U.S.C. §251

The statutory provision governing patent reissues is 35 U.S.C. §251, which provides in part that:

(a) In general.—Whenever any patent is, through error, 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 the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue. . . .
(d) Reissue patent enlarging scope of claims.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent. 34

The basic criteria for reissue are identified by parsing this statutory text.

[1] "Inoperative or Invalid"

In order to qualify for reissue, a patent must be "wholly or partly inoperative or invalid," meaning that the patent is "ineffective to protect the invention adequately or it is a nullity. . . ."35 Importantly, this inoperativeness or invalidity must have been caused by "error." Thus, reissue cannot be used to rehabilitate a patent that was procured through inequitable conduct,36 which by definition involves intent to deceive the USPTO.37 Types of reissue error specifically mentioned in the statute are "a defective specification or drawing,"38 or "the patentee claiming more or less than he had a right to claim in the patent."39 Reissue error is further examined infra.40

[2] Timing

If a patent is reissued, the reissued patent will expire on the same date that the original patent would have, so that reissue in no way extends the term of the original patent.41

The statute provides that the USPTO Director may reissue a patent only "for the unexpired part of the term of the original patent."42 Accordingly, even if a reissue application is already pending in the USPTO, once the original patent expires, no reissue is possible.43

[3] New Matter Prohibition

The statute provides that no new matter can be introduced in a reissue application.44 This requirement "restricts applicants' abilities to modify the specification, rather than the claims. . . ."45

For example, after a district court had invalidated two original patents for failure to satisfy the best mode requirement of 35 U.S.C. §112, first paragraph and that decision was affirmed by the U.S. Court of Appeals for the First Circuit in 1973, the applicant in Application of Hay46 filed reissue applications in which he attempted to insert best mode information into the patents' specifications. A USPTO examiner rejected the reissue applications for violating the "new matter" prohibition of 35 U.S.C. §251. The USPTO Board affirmed the rejections because the proposed insertions "were more than mere clarification of matter already disclosed in the patents and that the erroneous failure to disclose the matter originally was not manifest to those skilled in the art or caused by drafting errors or the unfamiliarity of the inventor with official forms."47

The Court of Customs and Patent Appeals (CCPA) in Hay affirmed the §251 new matter rejections:

[T]he invention was not properly disclosed in either patent, and the insertions proposed by appellant are necessary, as appellant effectively admits in the reissue oaths, to bring the disclosures into compliance with s[ection] 112. This is not a case in which the specification may be properly amended to disclose functions, properties, theories, or advantages inherent in what was originally disclosed. See In re Smythe, 480 F.2d 1376, 178 USPQ 279 (CCPA 1973). Nor is this a case like In re Oda, [443 F.2d 1200 (CCPA 1971),] in which the error in disclosure sought to be corrected was found to be manifest to those skilled in the art. The whole point of the determination of invalidity by the district court and the court of appeals was that the original disclosures were deficient in a way not apparent, whether explicitly, implicitly, or inherently, to those skilled in the pertinent art. . . . Here appellant admitted before the district court that he had not originally complied with the best mode requirement of s[ection] 112. . . . Where a patent is fatally defective, e. g., invalid for inadequate disclosure, such a defect cannot be cured by reissue seeking to put into the specification something required to be there when the patent application was originally filed. See In re Nelson, 280 F.2d 172, 187–88, 47 CCPA 1031, 1053, 126 USPQ 242, 256 (1960). 48

Although the CCPA in Hay recognized that "the reissue provisions of the Patent Act should be construed liberally in light of their remedial purpose," this liberality could not be extended to permit "insertion of new matter in contravention of the s[ection] 251 proscription thereof."49

[4] "Invention Disclosed in the Original Patent"

Although subsection (d) of the 35 U.S.C. §25150 allows reissue within a two-year window for the purpose of enlarging the scope of the claims of the original patent, the patent nevertheless must be reissued "for the invention disclosed in the original patent. . . ."51 This limitation has traditionally been referred to as the "same invention" requirement.52

In turn, the "same invention" requirement has traditionally been understood to allow broadened claims only to the extent that they are supported...

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