As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that was made without deceptive intent that renders an issued patent wholly, or partly, inoperative.
Patent owners seeking reissue within two years of patent issuance are permitted the additional opportunity to broaden the issued claims, subject to intervening rights. Reissue applications filed outside this two year window may not broaden issued claim scope.
Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution. Important limits are placed on patent reissue with respect to the scope of claim changes. For example, a patent owner may not surrender claims scope during the original application prosecution, then seek to recover this same scope via reissue. The prohibition against this practice is known as the recapture doctrine (an earlier post on this topic is found here)
Other prohibitions less commonly appreciated relate to the types of claims that may form the basis of the reissue application.
Ex Parte Tanaka, decided last December by the Board of Patent Appeals and Interferences (BPAI), (now on appeal to the CAFC) held that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims. The Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent.
This same reasoning is also utilized in another under appreciated aspect of reissue application practice, namely the pursuit of non-elected claims. In other words, if claims are restricted during original prosecution of the application, and those claims are not pursued in a divisional application, such claims cannot be obtained by patent reissue (very limited exceptions for linking claims in a genus/species sense). For example, let us assume that in prosecuting your original application method claims are elected and pursued. Restricted apparatus claims are canceled, and a divisional application is not filed to pursue the non-elected apparatus claims. In such a case, based on current USPTO and CAFC interpretation of 35 U.S.C. § 251 the apparatus claims are lost (MPEP 1412.01).
Of course, a broadening reissue could be pursued to enlarge claim scope to recover claims that were not canceled based on the prior art (i.e., no recapture) Yet, when attempting to add canceled, non-elected claims, the error is not a defect in the issued patent. Instead, this defect is one of portfolio management; simply stated, the issued patent is operative for the method claims.
With Ex Parte Tanaka on appeal to the CAFC, perhaps the statute will be revisited and defined more liberally by the court to embrace errors in prosecution having a wider impact on patent portfolios. Until such time, practitioners should recognize that patent reissue is a tool to correct mistakes of an issued patent, not a tool to resurrect disregarded claims of the original prosecution.