Reissue? What’s That?
I recently prepared a U.S. reissue application—a rare but powerful tool for fixing issues in an issued patent. Fewer than 50,000 reissue patents have been granted, compared to over 11 million U.S. utility patents. Many patent practitioners never even file one!
Why File a Reissue?
If you’ve received a granted U.S. patent but later discover a mistake—like:
- Claims that are too narrow or too broad (broad claims can be invalid),
- An inventorship error,
- A specification or drawing error, or
- A missed or incorrect priority claim—
A reissue application lets you correct it, as long as it wasn’t intentional.
Timing Matters
To broaden the scope of your claims, you must file within 2 years of the patent’s grant date. Other types of corrections (like inventorship or narrowing claims) aren’t subject to this deadline.
What’s Involved?
Reissues require:
- Filing, search, and examination fees (see https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule.),
- Submission of the original patent, specifically, in double-column versions of the original claims, drawings, and text, and
- Forms like PTO/AIA/05, PTO/AIA/53, and PTO/AIA/96 (depending on assignees and inventors).
Watch Out for Pitfalls
Reissues have unique challenges:
- Broadened claims may trigger or re-trigger Restriction Requirements.
- You can’t recapture subject matter surrendered in earlier prosecution of the entire family.
- If you get an Office Action, your Response must include a statement explaining how your claims differ from the issued patent and previous amendments.
For more on common reissue pitfalls, see this helpful article: https://www.sternekessler.com/news-insights/publications/four-pitfalls-to-understand-in-reissues/.
Bottom line: Reissue applications are complex, but they can rescue a patent that would otherwise fall short. Good to have this tool in your IP toolbox.