35 U.S.C. · Part III · Chapter 25, Amendment and correction of patents

35 U.S.C. 251: Reissue of defective patents

In plain English

Reissue lets a patent owner fix an error that makes a patent wholly or partly inoperative or invalid, because of a defective specification or drawing, or because the patentee claimed more or less than they had a right to claim. The owner surrenders the original patent and the USPTO reissues it, corrected, for the rest of the original term. As in any application, no new matter can be added.

Reissue can narrow claims, add claims or, within limits, broaden them. A reissue that enlarges the scope of the claims must be applied for within 2 years of the original grant (section 251(d)). The assignee of the entire interest can file the reissue alone if it does not seek to broaden the claims, or if the original application was filed by that assignee (section 251(c)).

Reissue claims are examined like claims in a new application, and the whole patent is open to examination. The reissued patent takes effect from its issue for new causes of action. Under section 252, claims substantially identical to the original carry over without interruption, while third parties who began using what the original claims did not cover may have intervening rights.

Annotation by Raj Sutariya, Co-founder, PatentAssist.ai. General information, not legal advice; the statute below governs.

AIA and pre-AIA

The AIA struck the requirement that the error have arisen “without any deceptive intention”, for proceedings commenced on or after September 16, 2012. An error must still exist: a deliberate choice made during prosecution is not an error that reissue can correct.

Text of 35 U.S.C. 251

Current text, quoted from the official United States Code.

(a) In General.— Whenever any patent is, through error, 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, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) Multiple Reissued Patents.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) Applicability of This Title.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) Reissue Patent Enlarging Scope of Claims.— No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.

Key cases

In re Tanaka, 640 F.3d 1246 (Fed. Cir. 2011). Adding a narrower dependent claim while keeping all the original claims is a proper basis for reissue, because the omission of a narrower claim can render a patent partly inoperative.

Practical notes

The recapture rule limits broadening. You cannot use reissue to regain subject matter you surrendered during prosecution to get the claims allowed, such as a limitation added to overcome prior art (MPEP 1412.02). Claims to overlooked aspects of the invention are not barred by recapture.

Use the cheapest tool that fixes the problem. Clerical and typographical mistakes go through a certificate of correction under sections 254 and 255 (37 CFR 1.322 and 1.323); an invalid claim can be disclaimed under section 253; wrong inventorship is corrected under section 256. Reissue is for substantive errors in scope or disclosure.

Reissue reopens examination of the whole patent, and the examiner can reject original claims on new art. Before filing one on a patent that is being licensed or litigated, weigh that risk and the intervening rights that amended claims may create.

Related rules and guidance

37 CFR: § 1.171, § 1.172, § 1.173, § 1.175, § 1.176, § 1.178, § 1.322, § 1.323
MPEP: 1401, 1402, 1405, 1410, 1412, 1414