The patent document is carefully crafted, given that it delineates an Applicant’s rights and reduces to a document the technology of the Applicant. It goes through strict scrutiny before it is granted by the respective patent Offices and the USPTO is one of the Offices with stringent rules. Therefore, in the case of an error which may be more substantive rather a simple clerical error, USPTO allows for the correction of the same through the Reissue proceedings. In addition to reissue, the other ways in which a patent may be corrected are by way of a certificate of correction, a disclaimer or through reexamination.
When should it be sought?
A reissue is sought when the claims are too narrow or too broad when the disclosure has certain deficiencies, the applicant has failed to claim a foreign priority or has made a reference incorrectly to co-pending applications. However, a reissue is not available for correcting a clerical error, a non-substantive defect in a drawing or failure to file a divisional.
As long as the newly reissued patent has substantially identical to the initially issued patent, the reissued patent will have the same effect as that of the original patent.
The filing requirements include mentioning any proceedings in which the present patent is or was the subject matter along with an oath or declaration. In this oath, the applicant must declare at least one error in order to elicit how the patent was deemed inoperative or invalid as stated in the statute. A reissue application is just a modified version of the regular application. Therefore, same fees that are applicable to a regular patent application would apply to reissues. A pertinent point while considering reissue proceedings is keeping in mind that the same amounts to an offer to surrender that patent by the applicant. It takes effect as soon as a request is made. However, during the pendency of the proceedings, the original patents remain in effect.
Once the patent expires, a reissue cannot be obtained. Therefore, if a patent has lapsed for failure to pay the maintenance fee, the Applicant may have to first revive the patent and then pursue reissue.
So if the Applicant wishes to broaden a claim which initially was claimed narrowly or was claimed with a different subject matter, or would be interested in adding new dependent claims, narrow overly broad claims to prevent the same being struck down in case of any proceedings or cancel an unwanted claim the Applicant may choose to proceed with reissue proceedings through which the same can be achieved.
Certain less substantive errors which may also be corrected using these proceedings are established a priority claim which was initially missing or was entered incorrectly, incorrect inventorship, certain deficiency in the drawings and specification, translational errors etc.
The deadline for filing a broadening reissue is the second anniversary of the patent grant. If the first broadening reissue if filed within the specified deadline, further broadening reissues may be filed even after the said deadline.
Requirements for filing include all requirements for a regular utility patent application and additionally the Reissue oath or declaration. Also, a written consent of all assignees is required or a written confirmation of the absence of an assignee is required. An Assignee(s) can file if non-broadening or original patent was filed by the assignee under AIA. Otherwise, the inventor(s) must file.
Certain aspects of the law, an Applicant needs to be aware of while considering a Reissue Application is the rule against recapture. The general statement of the rule is that a patentee is prevented from the patentee should not be able to reclaim what was explicitly not claimed by the patentee during the initial prosecution. The rule is a judicial construct which results from a balance of the Remedial aspects of the reissue statute available to the patentee as to the equitable aspects.
We at OutsourceIP are equipped to help you with correction of errors by drafting the new claims in view of the Specification and the rules of the USPTO and in any other documentation and support that is required with the initiation of the reissue proceedings.