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Intellectual Property: Post-Issuance: Reissue

LeClairRyan’s Intellectual Property team has substantial experience in post-issuance practice, including evaluation, filing, and prosecuting reissue patent applications.

Often after a patent is obtained, information becomes available that raises questions about the validity of that patent or the adequacy of the protection that it provides. In such cases, patentees must decide whether to argue their positions in District Court or before the U.S. Patent and Trademark Office in a post-issuance proceeding. Should the patentee elect the latter option, it is necessary to decide whether to file a reissue application, a request for ex parte reexamination, or a request for supplemental examination. The evaluation of this decision is as important as the prosecution of the subsequent proceeding.

Reissue proceedings permit U.S. patent holders to correct errors in their patents. Generally, this involves narrowing the claims of a patent that is believed to be invalid or broadening the claims of a patent that does not fully protect an invention. Importantly, reissue proceedings can also be used to add only dependent claims as a hedge against possible invalidity of an independent claim. Our attorneys not only represent clients in such proceedings but also advise them on how best to use these procedures to maximize the benefit of a reissue application and achieve their strategic objectives.

Reissue can be used not only to correct errors in claiming, as noted above, but to correct a number of errors, such as failure to perfect claims for priority, improper inventorship, and defects in the specification and/or drawings. This makes reissue an important tool not only for adjusting claim scope but also for consideration of non-reference based validity. Moreover, multiple reissue applications can be filed based on a single original patent to achieve certain strategic objectives.

A reissue application includes many of the same components as the original application: a specification, claims, drawings, and, naturally, a fee are all required. In addition, a reissue application requires a declaration specifying at least one error that is being corrected. Written assent of all assignees must be included in the application for reissue as well. The application for reissue constitutes an offer to surrender the original patent, and the surrender takes effect upon reissue of the patent; however, until a reissue application is granted, the original patent remains in effect. Accordingly, a reissue application can be abandoned while the original patent remains in effect as long as the original claims are not rejected at the time of abandonment.

While reissue procedures are useful for many purposes, they do have several key limitations. For example, certain errors, such as failure to file a divisional application, may not be corrected with a reissue. Claiming subject matter not disclosed in the original application is also not permitted; however, this should not be confused with broadening the issued claims. A reissue application may be filed with broadened claims if there is support in the original application and the broadening reissue application is filed within two years of issue of the original patent. However, a broadening reissue application may only be filed when the subject matter has not been surrendered in prosecution of the original patent. Another important limitation of reissue, which is also a key distinction between reissue and ex parte reexamination, is that reissue may only be applied for by the patent owner or assignee. A patentee also needs to consider carefully how a reissue application will affect later litigation and the implications under the doctrine of equivalents.

Facing a host of possible benefits and potential pitfalls, patentees must carefully consider whether to file a reissue application. LeClairRyan’s attorneys are well equipped to investigate whether a concern truly exists, and, if a problem lies in wait, are able to provide guidance on whether reissue is the appropriate corrective action.