Reissue
A Reissue Application may be filed to correct errors in an issued patent that are more substantive than those which may be corrected by simply requesting a certificate of correction. By law the a patent owner is able to correct errors that make the patent “wholly or partly inoperative or invalid”. In practice, these correctable errors may encompass errors in the specification or drawings or the fact that the issued patent claims cover more or less than the patentee had a right to claim. Reissue applications are most commonly filed to broaden or narrow claims, address inaccuracies in the specification or drawings, and add or correct a reference to a priority application. The resulting reissue patent will have a patent term of the unexpired portion of the original patent. However, a reissue application cannot contain new matter.
Perhaps the most important benefit of a reissue application is the ability to pursue patent claims that are broader than the issued claims of the original patent. A reissue application that seeks to broaden the claims must clearly indicate intent to broaden in the reissue application within two years from issuance of the original patent. A reissue claim is broader than the claims of the original patent if it enlarges the scope of the claims in at least one respect, even if it narrows other aspects of the claims. A reissue application can also present claims that are narrower in scope than the originally-issued claims. Narrower claims may be appropriate in circumstances where potentially invalidating prior art is uncovered after the patent has issued or where the language of the original claims is unclear. Regardless of whether they broadening or narrowing, the claims filed in a reissue application must claim the same invention disclosed as the invention in the original patent, which is determined by considering the entire disclosure in addition to the claims of the original patent.
One important caveat of a reissue application is that any newly submitted or amended claims may not recapture subject matter surrendered during prosecution to obtain the original patent or during prosecution of related patents within the patent family. This means that any amendments made to the claims during prosecution of the original patent cannot be removed through the reissue filing. However, separate embodiments disclosed in the original application which were not originally claimed do not trigger the recapture rule. Claims that were subject to a restriction that were not included in a divisional cannot be reclaimed in a reissue application, but a reissue application may be allowed to present a linking claim in order to include both the elected and non-elected inventions. The ramifications of the recapture rule highlight how important it is to carefully consider both the need for amendments to gain allowance of an application and the failure to file a divisional application after claims are canceled following a restriction requirement.