CORRECTING ERROR IN ISSUED
PATENTS - REISSUE REQUEST
 Reissue of Defective Patents. An inventor
can apply to reissue a patent to correct a significant error, as long as
the error was made without any deceptive intention. The error must
be significant enough to render the patent
partly or wholly inoperative or invalid.
Costs. The expected base costs for a
reissue utility application are about $3,400 for most small entities and $5,600 for everyone else.
Design and plant reissue patent applications have marginally lower costs.
The expected base costs include the current patent office (government)
fees of $1,400 for a small entity and $2,100 for a large entity; and
attorney fees for most small entities of $2,000, or for everyone else of
$4,000. Prosecution costs after filing are billed at $150 per hour
for most small entities and $250 per hour for everyone else. Note
that government fees may vary and additional government fees may be
required for various conditions, such as petitions and claims in excess of
20, etc.
Significant Errors. Not qualifying as significant are errors in spelling and grammar, as
well as typographical, editorial or clerical errors, which do not cause
the patent to be deemed wholly or partly inoperative. A reissue
application cannot be based on a non-substantive drawing change, such as a
reference numeral correction or addition, the addition of shading, or even
the addition of an additional figure merely to "clarify" the
disclosure.
While significant, errors in inventorship
can instead be corrected by filing a request for a certificate of
correction, which is a much less expensive (total cost for most small
entities about are $1,500, including filing fee, currently $130, the
certificate fee ($100) and attorney fees for small entity, $1,250).
Note that government filing fees may vary.
The most common significant errors for
filing a reissue application are:
- Claims. The claims are too
narrow or too broad. However, enlarging the scope of the claims
of the original patent based upon unclaimed disclosure in the patent
may only be granted within two years from the grant of the original
patent. An attorney's failure to appreciate the full scope of
the invention is an error correctable by reissue. No new matter
may be introduced into the application for reissue. This means
that one cannot add new components or process steps to the
patent. Any changes must be based on the disclosure in the
original application.
- Specification. The disclosure
contains inaccuracies.
- Foreign Priority. Applicant
failed to claim, or incorrectly claimed, foreign priority. Such
failure could lead to invalidating a patent based on prior art.
So, for example, the reissue process can be used to correct a failure
to file a certified copy of the original foreign application. A
certified copy is needed prior to the grant of a patent in order to
obtain the right of foreign priority.
- Domestic Priority. Applicant
failed to make reference to, or incorrectly made reference to, prior
co-pending applications. For original patent applications filed
after November 29, 2000, a petition and additional fee (currently
$1,370.00) for an unintentionally delayed priority claim will be
required.
Cannot Correct by Reissue a Failure to File a
Divisional. If the patent office required a restriction and
election to one set of claims in the original application, and applicant
fails to file a divisional application to claim the invention described by
the other claims in the original application, then that other invention is
lost and cannot be reclaimed in a reissue application. This error is
not correctable by reissue.
How it Is Done. A reissue application is
filed. The application is considered an offer to
"surrender" the original ribbon copy of the patent to the Patent
Office. The actual surrender takes effect upon reissue of the
patent. Until a reissue application is granted, the original patent
remains in effect.
In the reissue application, the inventor submits a new specification,
drawings and claims. A new declaration is made, and the payment of
the reissue fee. If there is an assignee, proof of assignment and
the assignee's written consent are required. The reissue application
is essentially a new application that is examined in the same manner as a
non-reissue, non-provisional application. The application is subject
to all the requirements of the rules related to non-reissue applications,
except that it is given priority over regular non-provisional
applications.
The Term of the Reissued Patent. The
reissue patent is issued for the unexpired part of the term of the
original patent. The original patent term may not be extended
through reissue.
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This file last modified 05/23/07.
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