Reissue of Defective Patents.  An inventor can apply to reissue a patent to correct a significant error. The error must be significant enough to render the patent partly or wholly inoperative or invalid.  The reissue may only claim “the same invention as the original patent” and may not seek to recapture substance given up during prosecution of the original patent application.

Costs.  A reissue application may be expected to cost about $6,000 though patent reissuance for most small entities, absent special costs of petitions and appeals.  Large entities should expect to pay about $9,500.  Costs through filing are composed of expected base filing costs of $1,770 and attorney application preparation fees of $2,000.   Design and plant reissue patent applications have marginally lower costs.  Later costs for patent prosecution constitute the remainder.

Small-entity government costs include fees of $1,900 for a small entity, (basic filing fee of $140 + search fee of $300 + examination fee of $380 + issue fee of $1080) and $3,800 for a large entity; and attorney fees for most small entities for preparing and filing the application of $4,000, or for everyone else of $6,000.  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.

Prosecution costs after filing are billed at $175 per hour for most small entities and $250 per hour for everyone else.

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 $1,350, including filing fee, currently $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. Effective 01-AUG-2011, a reissue may be sought simply for adding a claim that is narrower in scope than the existing patent claims.

• 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 $1,410.00) 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.