What are Reissue Patents? Episode 73

What Is a Reissue Patent Application?

In this episode, I’m going to talk about a specific type of patent application called a reissue patent application. In my other podcasts, I’ve discussed common types of patent applications such as utility patents, continuation applications, continuation-in-part applications, and divisional patent applications. If you need a refresher on those, check out my previous episodes.

There’s another kind of application that isn’t used as often but is important to understand— the reissue application. Knowing when to use a reissue application is crucial.

Unlike other continuing applications, which must be filed while a previous application is still pending, a reissue application is different. Once your patent has been issued, you can’t file a continuing application claiming priority to the issued patent unless another related application is still pending. However, a reissue application allows you to make corrections to an already issued patent.

Why File a Reissue Application?

If you realize there is a mistake in your issued patent and you want the Patent Office to reissue it with corrections, a reissue application may be appropriate. However, not all errors require a reissue application. Some minor errors, such as typographical mistakes, can be corrected using a request for a certificate of correction. I’ll discuss that in another episode.

For more significant errors, a reissue application is necessary.

According to the Manual of Patent Examining Procedure (MPEP), there are four main reasons for filing a reissue application:

1. The claims are too narrow or too broad.

2. The disclosure contains inaccuracies.

3. The applicant failed to, or incorrectly, claimed foreign priority.

4. The applicant failed to reference or incorrectly referenced prior copending applications.

   
   

While I could dedicate an entire episode to each of these, the most common reason for filing a reissue application is the first— when the claims are too narrow or too broad.

The Legal Basis for a Reissue Application

The rules governing reissue applications are found in MPEP 1402. It states that errors must be based on a mistake that renders the patent “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 they had a right to claim.”

A common example of an error that justifies a reissue application involves patent claims that are too narrow. Suppose you invent a new type of luggage with features like temperature sensors, pressure sensors, a tampering alarm, and an air conditioning system. If your claims specifically require “a handle on top for carrying the luggage,” but you later realize that infringers can avoid liability by placing the handle on the side, then your claims may be too narrow. A broadening reissue application can fix this error.

However, you must file a broadening reissue application within two years of the patent's issuance.

Filing a Broadening Reissue Application

To file a broadening reissue application, you must:

1. Submit a new application.

2. Declare that there was an error in your issued patent and identify that error.

3. Amend the text, add new claims, or provide new drawings clarifying embodiments discussed in the original application.

   
   

You cannot add any new matter— meaning you can’t introduce anything that wasn’t originally disclosed. Additionally, if you previously narrowed your claims during prosecution, you can’t broaden them later through a reissue application.

Once filed, the reissue application is examined like any other application. If your broadening reissue application is rejected, your original patent remains valid. However, if the reissue application is granted, your original patent becomes void, and the new, broader patent replaces it.

Intervening Rights and Infringers

If infringers designed around your original claims, they have what are called intervening rights. If they developed and marketed a product that did not infringe your original patent but would infringe under your broader reissued claims, they are not liable for past damages. However, they may be liable for future infringement.

Filing a Narrowing Reissue Application

You can also file a narrowing reissue application. While it may seem counterintuitive to voluntarily narrow your patent’s scope, there are strategic reasons for doing so. Unlike broadening reissue applications, there is no time limit for filing a narrowing reissue application.

One reason to narrow claims is to strengthen your patent before enforcing it against infringers. If you discover prior art that could invalidate your broad claims, narrowing your patent via a reissue application can prevent competitors from challenging its validity in court.

For example, if your luggage patent included a claim for a bulletproof fabric but it wasn’t in your original independent claim, you may want to file a narrowing reissue to include it explicitly. This can help safeguard your patent against invalidation.

A recent case, In re Tanaka, affirmed that omitting a dependent claim can be considered an error that renders a patent partly inoperative, making it eligible for a reissue application.

What Happens After Filing a Narrowing Reissue Application?

Once submitted, the narrowing reissue application will be examined like any other application. If granted, it strengthens your patent by reducing the risk of invalidation. While this may limit the number of infringers, it ensures that your patent remains enforceable.

There are also post-grant procedures that can be used to fix patent issues, which I’ll discuss in future episodes. However, a reissue application is one option that inventors should consider, especially if they plan on enforcing their patent.

Conclusion

Aside from adjusting claim scope, reissue applications can also correct mistakes related to priority claims. However, the main takeaway is to ensure your claims are sufficiently broad while still maintaining validity. Since reissue applications have many legal intricacies, consult with your patent attorney and review MPEP 1402 to fully understand your options.

I’m Adam Diament, and until next time, keep on inventing!