Reissue and Patent Term

35 U.S.C.

251

prescribes the effect of reissue on the patent term by stating

that

"the Director shall… reissue the patent… for the

unexpired term of the original patent."

The maximum term of the original patent is fixed at the time the patent is

granted, subject to any adjustments to the number of days of extension or adjustment. See

MPEP §

2720

and

§ 2734

. While the term may be subsequently

shortened, e.g., through the filing of a terminal disclaimer, it cannot be extended through

the filing of a reissue. Accordingly, a deletion in a reissue application of an

earlier-obtained benefit claim under

35 U.S.C. 120

will

not

operate to lengthen the term of the patent to be

reissued.

When a reissue application has been filed in an attempt to delete an

earlier-obtained benefit claim under

35 U.S.C. 120

, it should be treated as

follows:

(A) More than one

"error"

(as defined by

35 U.S.C. 251

) is described in a

reissue declaration, and one of the errors identified is the failure to delete a

35 U.S.C.

120

benefit claim in the original patent, or the erroneous

making of a claim for

35 U.S.C. 120

benefit.

If one of the errors identified is the presence of the

claim for

35

U.S.C. 120

benefit in the patent, and patentee (1) states a

belief that this error renders the original patent wholly or partly inoperative or

invalid, and (2) is seeking to eliminate this error via the reissue proceeding, the

Office will permit deletion of the benefit claim in the continuity data and will not

object to or reject the reissue declaration on these grounds. For applications filed

on or after September 16, 2012, applicant may do so by including an application data

sheet that does not list the benefit claim with the filing of the reissue application

or by filing a corrected application data sheet in compliance with

37 CFR

1.76(c)

that deletes the reference to the prior-filed

application in a pending reissue application

sue declaration on these grounds. For applications filed

on or after September 16, 2012, applicant may do so by including an application data

sheet that does not list the benefit claim with the filing of the reissue application

or by filing a corrected application data sheet in compliance with

37 CFR

1.76(c)

that deletes the reference to the prior-filed

application in a pending reissue application. For applications filed prior to

September 16, 2012, applicant may do so by amending the specification (if the benefit

claim is in the specification) or by submitting a supplemental application data sheet

in compliance with

pre-AIA 37 CFR 1.76(c)

(no supplemental declaration is

necessary) to delete any references to prior applications. See

MPEP §

601.05(b)

, subsection II, for more information on

supplemental application data sheets. If the benefit claim is in the specification,

the specification should be amended to reflect the correction even if a supplemental

or corrected application data sheet is filed. Assuming the reissue declaration

appropriately identifies or describes at least one

other error

being corrected, the reissue declaration would not be objected to for failure to

comply with the requirements of

37 CFR 1.175

.

Where the reissue declaration states that the patentee is making

this correction in order to extend the term of the original patent, the examiner’s

Office action will merely refer to the statement in the declaration and then point

out with respect to such statement that

35 U.S.C. 251

only permits

reissue

"... for the unexpired part of the term

of the original patent."

(B) Only one

"error"

(as defined by

35 U.S.C. 251

) is described in a

reissue declaration, and that error is the failure to delete a

35 U.S.C.

120

benefit claim in the original patent, or the erroneous

making of a

35

U.S.C. 120

benefit claim:

n and then point

out with respect to such statement that

35 U.S.C. 251

only permits

reissue

"... for the unexpired part of the term

of the original patent."

(B) Only one

"error"

(as defined by

35 U.S.C. 251

) is described in a

reissue declaration, and that error is the failure to delete a

35 U.S.C.

120

benefit claim in the original patent, or the erroneous

making of a

35

U.S.C. 120

benefit claim:

(1) If the only error identified in the reissue declaration is

stated to be the correction or adjustment of the patent term by deleting the

35

U.S.C. 120

benefit claim, a rejection under

35 U.S.C.

251

should be made, based on the lack of an appropriate

error for reissue and failure to comply with

37 CFR

1.175

.

(2) If the only error identified in the reissue declaration is the

need to delete a

35 U.S.C. 120

benefit

claim, which the patentee seeks to now delete in the reissue application, (and

no reference is made as to increasing the term of the patent), the examiner

should not make a rejection under

35 U.S.C. 251

based on lack

of an appropriate error for reissue and failure to comply with

37 CFR

1.175

. The examiner should examine the reissue

application in accordance with

37 CFR 1.176

(

MPEP §

1440

). A statement should, however, be made in an

Office action pointing out the lack of effect (of the change in the patent) on

the patent term because

35 U.S.C. 251

only permits

reissue

"... for the unexpired part of the

term of the original patent."

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