question about patern reissue?

[Weng Tianxiang]

Hi,

Based on the advice given by EvilLost, MYK, and others, I will ask an experienced patent professional to polish claim language in my 3 issued patents to make the issued patents as robust as possible.

Especially the case mentioned by MYK to invalidate a originally valid patent solely based on the claim language greatly strikes me. 

Here is the principle of patent reissue from MPEP:

1401 Reissue [R-08.2017]
35 U.S.C. 251    Reissue of defective patents
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.

(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.

(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.

What should I pay attention to in regard of the patent reissue?

Thank you.

[lazyexaminer]

Hi,

Based on the advice given by EvilLost, MYK, and others, I will ask an experienced patent professional to polish claim language in my 3 issued patents to make the issued patents as robust as possible.

Especially the case mentioned by MYK to invalidate a originally valid patent solely based on the claim language greatly strikes me. 

Here is the principle of patent reissue from MPEP:

1401 Reissue [R-08.2017]
35 U.S.C. 251    Reissue of defective patents
*251 snipped*

What should I pay attention to in regard of the patent reissue?

Thank you.

The point of reissue is to correct patents that are defective, that have some kind of error. The vast majority are to correct claims that are too narrow or too broad. People usually want to broaden their claims.

If the scope of the claims will be broadened at all you MUST file for reissue AND indicate an intent to broaden the claims within 2 years of the issuance of your patent. The way that you can broaden your claims is not unlimited, and depends on what happened during the original prosecution.

Many things, even minor things, are different than they are in regular prosecution. Even attorneys mess up all the time if they don't regularly do reissues. There are different things you need to file, the way you amend is different, the declaration is different...most of these aren't a big deal but the declaration is very important and causes a rejection in a significant number of reissue applications.

Those are some generalities...

[Weng Tianxiang]

Hi lazyexaminer,

Thank you for your response.

In my situation I just want to correct claiming language to make it as robust as possible, not to extend the scope.

I am the 100% owner (assignee), I think the declaration for the reissue seems to me is not a problem.

I am curious about what would happen to the original issued patent if a reissue application is denied.

Your comment is welcome.

[lazyexaminer]

Hi Weng,

In my situation I just want to correct claiming language to make it as robust as possible, not to extend the scope.

Correcting claim language is probably going to be fine. But it is possible that even a simple correction will in effect broaden the claim scope, it just depends. You have to look at whether the reissue claim covers anything that the patent did not cover originally. Basically, can someone be infringing now when they weren't  infringing before? Changing words here and there can change the claim scope even if you didn't really mean to. Just be careful to file within 2 years if you think that might be the case.

If the correction is more minor in nature you may be able to do a certificate of correction instead, see MPEP 1481 for discussion of when that may be appropriate instead of reissue. Again, it just depends what exactly you're doing.

Sometimes people like to leave their original claims and just present new claims with the correction. Once again, it just depends on what exactly you are trying to do, this might not make sense in your situation.

I am curious about what would happen to the original issued patent if a reissue application is denied.

The original patent is surrendered when the reissue application issues. So if a reissue application goes abandoned the original patent is not surrendered and remains in force.

Of course, the reason why it became abandoned would be important. If you abandoned the reissue because the examiner found great 102 art for your original claims then you are probably going to have difficulty asserting the patent. On the other hand, if you abandon after the examiner allows your original claims but rejects your new broader reissue claims, then maybe that doesn't hurt you much and your original patent is still fine.

I am the 100% owner (assignee), I think the declaration for the reissue seems to me is not a problem.

The declaration could just be a problem because you need to adequately explain what the error is that you are correcting, but you don't want to hurt yourself later. You might not want to come out and say "Claim 1 as patented is invalid" because what if you end up abandoning the reissue...now you still have claim 1 but you said it was invalid. In the same vein you don't want to imply that either. At the same time you have to say what the error is. This may be easy, it may be walking a tightrope, again it all depends on what you're doing.

Additional disclaimer: I said a few times that it depends on what you're doing. I work on reissues. I will discuss general reissue topics, such as those presented so far, but not specifics.

[Weng Tianxiang]

Hi lazyexaminer,

Your replies are very informative, concise, clear and simple in such a way that I don't have to read all materials related to reissue applications and I know key points!!!

thank you very much!