Grounds for Filing

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

) 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

drad,

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)

-

nder 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 §

214

et 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

ant must file a petition for an unintentionally

delayed priority claim under

37 CFR 1.55(e)

. See

MPEP §

214

et 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

R 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

3).

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

f 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

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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