A Reissue Is Not a Re-Issue and Other Patent Correction Procedures

Key Takeaways

• Reissue is a new original patent application and prosecution
• Be prepared to face new prior art and new rejections

From time to time, a patent owner may become aware of an error in her patent. Some errors may be minor, and the patent owner may seek correction of minor errors via a USPTO Certificate of Correction (CoC). With a CoC, the patent owner submits a form listing the requested patent corrections and the requisite fee. And, if the request is granted, the USPTO appends a certificate to the patent listing the corrections.

But some patent errors may be more problematic. When the patent is deemed wholly or partly inoperative or invalid due to the error, 35 U.S.C. § 251 sets for the mechanism through which the patent owner may correct the error.

35 U.S.C. § 251: Reissue of defect patents

(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.

Upon first read of the statute, those unfamiliar with the USPTO’s nuanced and specialized Reissue practice might believe that by surrendering the patent and paying the fee, the USPTO will re-issue the patent, including the corrections, for the unexpired part of the term of the original patent. What practitioners often overlook or misunderstand is the gravity of the statute’s language “in accordance with a new and amended application.”

A Reissue application can correct a great variety of errors. It is, in essence, the patent owner returning (surrendering) the original patent to the USPTO and saying “I’d like a Mulligan – a ‘do-over’ of the original prosecution.” The result is an entirely new patent application and new examination and prosecution. Thus, Reissue prosecution is a new original prosecution. Yet the standard of prosecution is heightened, and inexperienced Reissue practitioners quickly find themselves sinking in prosecution quicksand under the specialized Reissue rules. For example, there are additional requirements and additional potential rejections, such as recapture rejections, original invention rejections, and if not filed within two years from patent grant, broadening rejections. And amendment practice is vastly different in both form and substance and gets quite complex if one is filing a reissue of a previously reissued application.

The assigned Examiner will conduct a new (and more thorough) prior art search. Importantly, a team of three specialized Examiners in the CRU (Central Reexamination/Reissue Unit) will review the application and conduct the prosecution. These Examiners are deeply experienced and are not subject to the production pressures under which the original prosecution occurred. They also view the Reissue application as a Mulligan – they believe (rightly or wrongly) that this patent is back before the Office because the PTO did not do its job properly the first time. Thus, the Reissue examination is going to be exhaustive and thorough before any claims are issued again.

A Reissue application does not simply cause a re-issue of the patent without the previous errors. In fact, a Reissue application is the most thorough and comprehensive re-examination that any patent application endures.