Reissue Patent – Fixing the past
What is a Reissue patent?
Under 35 U.S.C. 251, an unexpired patent can be re-issued by surrendering the original/first issue on the following grounds.
- cleanse the erroneous or defective specification or drawing
- failed to or incorrectly claim the priority
- correct inventorship
- narrow the scope of a claim
- enlarge the scope of a claim
For the grounds (a) – (d), a reissue application along with a prescribed fee can be filed anytime while the patent is in force.
But to enlarge the scope of a claim in a patent, a reissue application along with a prescribed fee has to be filed within two years from the original issue date. Adding new matter to the reissue application is not allowed. The term of a reissue patent is the unexpired part of the term of the original patent.
Here’s a detailed guide on how to file a reissue patent application by the USPTO
https://www.uspto.gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept2014.pdf
Challenges in Reissue
- Increased costs, the filing/examination fee of a reissue application is same as a normal application. It’s like paying twice the normal fee
- A reissue application reopens the patent prosecution of the claims, with an opportunity for the examiner to raise objections.
- A question on validity or allowance may rise during a reissue examination
- Extended examination
fig: Reissue Patent Bar Graph
References:
https://www.uspto.gov/web/offices/pac/mpep/s1410.html