1402 Grounds for Filing [R-11.2013]

A reissue application is filed to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. An error in the patent arises out of an error in conduct which was made in the preparation and/or prosecution of the application which became the patent.

There must be at least one error in the patent to provide grounds for reissue of the patent. If there is no error in the patent, the patent will not be reissued. The present section provides a discussion of what may be considered an error in the patent upon which to base a reissue application.

In accordance with 35 U.S.C. 251, the error upon which a reissue is based must be one which causes the patent to be "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." Thus, an error under 35 U.S.C. 251 has not been presented where the correction to the patent is one of spelling, or grammar, or a typographical, editorial or clerical error which does not cause the patent to be deemed wholly or partly inoperative or invalid for the reasons specified in 35 U.S.C. 251. These corrections to a patent do not provide a basis for reissue (although these corrections may also be included in a reissue application, where a 35 U.S.C. 251 error is already present), and may be made via a certificate of correction; see MPEP § 1481.

The most common bases for filing a reissue application are:

(A) the claims are too narrow or too broad;
(B) the disclosure contains inaccuracies;
(C) applicant failed to or incorrectly claimed foreign priority; and
(D) applicant failed to make reference to or incorrectly made reference to prior copending applications.

I. ERROR BASED ON SCOPE OF CLAIMS

The reissue error may be directed solely to the failure to previously present narrower claims, which are being added by reissue. In re Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011) provides that "the omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law." This permits submission of additional claims that are narrower in scope than the preexisting patent claims, without any narrowing of the preexisting patent claims. For example, a reissue applicant can retain the broad independent claims of the patent while adding only new dependent claims.

A reissue applicant’s failure to timely file a divisional application covering the non-elected invention(s) following a restriction requirement is not considered to be error causing a patent granted on elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Thus, such applicant’s error is not correctable by reissue of the original patent under 35 U.S.C. 251. See MPEP § 1412.01.

An attorney’s failure to appreciate the full scope of the invention was held to be an error correctable through reissue in the decision of In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). In Medrad, Inc. v. Tyco Healthcare Group LP, 466 F.3d 1047, 80 USPQ2d 1526 (Fed. Cir. 2006), the court rejected an argument that a 35 U.S.C. 251 error was limited to defects in the specification, drawings, and claims. Instead, the court explained that the correctable error could be "any error that causes a patentee to claim more or less than he had a right to claim." 466 F.3d at 1052, 80 USPQ2d at 1529. In Medrad, the specific error was the failure to submit a supplemental reissue declaration during prosecution of a prior reissue patent.

II. INVENTORSHIP ERROR

The correction of misjoinder of inventors in divisional reissues has been held to be a ground for reissue. See Ex parte Scudder, 169 USPQ 814 (Bd. App. 1971). The Board of Appeals held in Ex parte Scudder, 169 USPQ at 815, that 35 U.S.C. 251 authorizes reissue applications to correct misjoinder of inventors where 35 U.S.C. 256 is inadequate.

If the only change being made in the patent is correction of the inventorship, this can be accomplished by filing a request for a certificate of correction under the provisions of 35 U.S.C. 256 and 37 CFR 1.324. See MPEP § 1412.04 and § 1481. A Certificate of Correction will be issued if all parties are in agreement and the inventorship issue is not contested. However, if applicant chooses to file a reissue application to correct the inventorship (as opposed to choosing the Certificate of Correction route), applicant may do so because misjoinder of inventors is an error that is correctable by reissue under 35 U.S.C. 251.

III. ERROR RELATED TO PRIORITY TO FOREIGN APPLICATION

A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a) -(d) before the patent was granted.

In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority. Reissue is also available to convert the "error" in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a) -(d) before the patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) ("a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application"). In a situation where it is necessary to submit for the first time both the claim for priority and the certified copy of the priority document in the reissue application, and the patent to be reissued resulted from a utility or plant application which became the patent to be reissued was filed on or after November 29, 2000, the reissue applicant must (where it is necessary to submit for the first time the claim for priority) also file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(c) (for applications filed on or after November 29, 2000 and before March 16, 2013) or under 37 CFR 1.55(e) (for applications filed on or after March 16, 2013) in addition to filing a reissue application. See MPEP § 214 et. seq.

IV. ERROR IN BENEFIT CLAIM TO DOMESTIC APPLICATION

The courts have not addressed the question of correction of the failure to adequately claim benefit under 35 U.S.C. 119(e) in the application (which became the patent to be reissued) via reissue. If the application which became the patent to be reissued was filed before November 29, 2000, correction as to benefit under 35 U.S.C. 119(e) would be permitted in a manner somewhat analogous to that of the priority correction discussed above. Where the application, which became the patent to be reissued, was filed on or after November 29, 2000, reissue may be employed to correct an applicant’s mistake by adding or correcting a benefit claim under 35 U.S.C. 119(e). A petition under 37 CFR 1.78(a)(6) for an unintentionally delayed claim under 35 U.S.C. 119(e) would not be required in addition to filing a reissue application.

35 U.S.C. 119(e)(1) to states in part that:

No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section during the pendency of the application . (Emphasis added.)

As discussed in subsection III above, the court in Fontijn held that 35 U.S.C. 251 was sufficiently broad to correct a patent where the applicant failed to assert or failed to perfect a claim for foreign priority during the prosecution of the original application even though 35 U.S.C. 119(b) at that time required a claim and a certified copy of the foreign application to be filed before the patent is granted. Similarly, the Office may grant a reissue for adding or correcting a benefit claim under 35 U.S.C. 119(e) that requires the benefit claim to a provisional application be submitted during the pendency of the application.

Correction of failure to adequately claim benefit under 35 U.S.C. 120 in an earlier filed copending U.S. patent application was held a proper ground for reissue. Sampson v. Comm’r Pat., 195 USPQ 136, 137 (D.D.C. 1976). If the utility or plant application which became the patent to be reissued was filed on or after November 29, 2000, the reissue applicant must file a petition for an unintentionally delayed priority claim under pre-AIA 37 CFR 1.78(a)(3) (for applications filed on or after November 29, 2000 and before March 16, 2013) or under 37 CFR 1.78(d) (for applications filed on or after March 16, 2013) in addition to filing a reissue application. See MPEP § 211.04 For treatment of an error involving disclaimer of a benefit claim under 35 U.S.C. 120, see MPEP § 1405.

If the utility or plant application which became the patent to be reissued was filed before November 29, 2000 and therefore, not subject to eighteen-month publication, a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(a)(3) would not be required to add/correct the benefit claim in the reissue application. This is so, even if the reissue application was filed on or after November 29, 2000. On the other hand, if applicant fails to file an amendment to add a claim for benefit of a utility or plant reissue application filed on or after November 29, 2000 in a later-filed reissue application within the time period set forth in 37 CFR 1.78, then a petition for an unintentionally delayed benefit claim under pre-AIA 37 CFR 1.78(a)(3) (for applications filed on or after November 29, 2000 and before March 16, 2013) or under 37 CFR 1.78(d) (for applications filed on or after March 16, 2013) along with the surcharge set forth in 37 CFR 1.17(t) would be required. This is so even if the original application which became the original patent was filed before November 29, 2000. This is because the benefit claim is between the later-filed reissue application and the prior-filed reissue application and the benefit claim is not being added to make a correction as to a benefit of the original patent.

V. ERROR IN DRAWING

A reissue may be based on a drawing correction that is substantive in nature, because such a correction qualifies as correcting an "error" under 35 U.S.C. 251 that may properly be deemed to render the patent wholly or partly inoperative. A reissue application cannot be based on a non-substantive drawing change, such as a reference numeral correction or addition, the addition of shading, or even the addition of an additional figure merely to "clarify" the disclosure. Non-substantive drawing changes may, however, be included in a reissue application that corrects at least one substantive "error " under 35 U.S.C. 251.