1402 Grounds for Filing [R-10.2019]

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. 251has 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. This error resulted in invalid claims, which meant the patentee claimed less than the patentee had a right to claim in the prior reissue patent.

II. INVENTORSHIP ERROR

The correction of misjoinder of inventors in 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 correct 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 view of the changes to 37 CFR 1.55 that became effective May 13, 2015, the reissue applicant must also file a petition under 37 CFR 1.55(f) or (g), as appropriate, including a showing of good and sufficient cause for the delay in filing the certified copy. In a situation where it is necessary to make a priority claim in a reissue application that was not made in the original patent, the reissue applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e). See MPEP § 214et seq.

Although reissue is an acceptable manner for an applicant to make or perfect a claim for foreign priority, in certain situations, the patent may also be corrected via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a petition under 37 CFR 1.55(f) or (g). See MPEP § 216.01. Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or (g), as appropriate, including a showing of good and sufficient cause for the delay in filing the certified copy. Furthermore, where a priority claim was not made in the original patent and the addition of the priority claim would not require further examination (e.g., grant of the petition would not cause the patent to be subject to a different statutory framework), the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.

Regardless of whether a reissue application or a request for certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 is being filed along with a petition under 37 CFR 1.55(e), (f), or (g), the petition that would need to be filed and the petition requirements would be the same. Therefore, unless there is a need to file a reissue application, patentee should consider making such correction via a request for certificate of correction. See MPEP § 216.01. It is noted that a petition under 37 CFR 1.55(f) or (g) is not necessary when the certified copy is being submitted with a petition under 37 CFR 1.55(e). Similarly, a petition under 37 CFR 1.55(e) is not necessary when the certified copy is being submitted with a petition under 37 CFR 1.55(f) or (g).

IV. ERROR IN BENEFIT CLAIM TO DOMESTIC APPLICATION

Section 201(c)(1)(B)(i)(II) of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, amended 35 U.S.C. 119(e) by replacing “payment of a surcharge” with “payment of the fee specified in section 41(a)(7)” and deleting “during the pendency of the application.” Specifically, the deletion of “during the pendency of the application” permits the acceptance of unintentionally delayed benefit claims to a provisional application after the patent was granted in a similar manner as provided for priority claims under 35 U.S.C. 119(a)-(d) and benefit claims under 35 U.S.C. 120. To implement this provision of the PLTIA, 37 CFR 1.78(c) was amended in the final rule “Changes to Implement the Patent Law Treaty”, 78 FR 62368 (October 21, 2013), 1397 OG 42 (December 3, 2013). 37 CFR 1.78(c) was amended to provide that if the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) is presented in an application (either a nonprovisional application or an international application designating the United States) after the time period provided by 37 CFR 1.78(a)(4), including after the pendency of the application (e.g., after patent grant), the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. 37 CFR 1.78(c) further provides that a petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by: (1) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application, unless previously submitted; (2) the petition fee as set forth in 37 CFR 1.17(m); and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. 37 CFR 1.78(c) also provides that the Director may require additional information where there is a question whether the delay was unintentional.

See MPEP § 1481.03 for the procedure to seek to use a certificate of correction to add a benefit claim to the filing date of a prior-filed application.

Correction of failure to adequately claim a benefit under 35 U.S.C. 120 in an earlier-filed copending U.S. patent application was held to be a proper ground for reissue. Sampson v. Comm’r Pat., 195 USPQ 136, 137 (D.D.C. 1976). Similarly, correction of the failure to adequately claim a benefit under 35 U.S.C. 119(e) in an earlier-filed copending U.S. patent application is considered a proper ground for reissue. If adding a new benefit claim in a reissue application, the reissue applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.78(c) (for claiming the benefit under 35 U.S.C. 119(e)) or under 37 CFR 1.78(e) (for claiming the benefit under 35 U.S.C. 120, 121, 365(c) or 386(c)). See MPEP § 211.04. In addition, if an applicant fails to make a claim for benefit of a prior-filed utility or plant reissue application in a later-filed reissue application within the time period set forth in 37 CFR 1.78 (e.g., timely submit an ADS with the specific reference identifying the later-filed reissue application is a continuation of the prior-filed reissue application), then a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) along with the petition fee set forth in 37 CFR 1.17(m) would be required. For treatment of an error involving disclaimer of a benefit claim under 35 U.S.C. 120, see MPEP § 1405.

Note that a patentee cannot obtain the safe harbor protection of 35 U.S.C. 121 against nonstatutory double patenting by amending a patent that issued from a continuation-in-part application to recite only subject matter disclosed in the parent application and changing the relationship to a divisional of the parent application. G.D. Searle LLC v. Lupin Pharm., Inc., 790 F.3d 1349, 1355, 115 USPQ2d 1326, 1330 (Fed. Cir. 2015)(“Simply deleting that new matter from the reissue patent does not retroactively alter the nature of the [CIP] application.”).

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.

VI. ERROR IN FILING TERMINAL DISCLAIMER

In In re Dinsmore, 757 F.3d 1343, 111 USPQ2d 1229 (Fed. Cir. 2014), the Federal Circuit held that the filing of a terminal disclaimer to obviate a double patenting rejection over a prior patent, when the prior patent and the patent sought to be reissued were never commonly owned, was not an error within the meaning of the reissue statute. In rejecting applicants' argument, the Dinsmore court noted that the applicants had not shown a mistaken belief that the two patents at issue were commonly owned, and stated that the applicants were ultimately seeking to revise a choice they made, not to remedy the result of a mistaken belief.

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