Reissue Applications: Patent Application Types and Strategies – Part 11

Regardless of whether any new prior art references exist, a patent owner may request that the patent owner’s patent be reissued with different claims.  If the patent owner makes this request within two (2) years of the patent’s first issue date, the patent owner may even broaden the claims to cover things not covered by the original patent claims (“broadening reissue”).  In any case, however, a patent owner may not amend any claims to remove parts of the patent claims (“limitations”) that were added to the claims during previous examiner negotiations to get the claims allowed.  Such attempts to recapture claim coverage that was forfeited during prosecution is not permitted and violates a doctrine called the “Recapture Doctrine.”  Occasionally, however, a patent owner wants to have the patent issue with narrower claims to reduce the possibility of conflict with a possible new prior art reference, or wants particular minor changes to be made in the application or claims.  This can be done with a reissue application.  A reissued patent expires 20 years from its previous priority filing date.

Be aware, however, that many minor changes and corrections to the patent, such as typographical errors and other changes that do not affect the claims, can be made using a Certificate of Correction rather than the more lengthy patent reissue process and should be considered first.

During a patent reissue process, the patent is not forfeited and does not become forfeited until another reissue application is issued to replace it (37 CFR 1.178).  This means that if the Patent Office refuses to reissue the patent or the reissue application is abandoned during the process, the original patent remains in place and is enforceable.  Remember, however, that all reissue examination proceedings are of public record.  So anyone reviewing the patent prosecution history will be able to see what happened and if the results were unfavorable will certainly make the same negative arguments against the patent in the future.

A patent owner may consider a reissue application if: 1) the owner is aware of a competitor that is possibly infringing the claims and would like the case to be stronger before actually filing the law suit; 2) the owner would like the patent claims to be more directed to the patent owner’s actual product; or 3) the owner realizes that the claims that issued could have been broader, or should have been narrower.