The reissue process has continued to rise in popularity. At the same time, the process has continued to remain slow — with an average reissue pendency of just under 5 years.
A patent holder can initiate the reissue process in order to correct a defect in an issued patent. 35 USC 251 indicates that the types of defects that may be corrected include defects in the specification; defects in the drawings; errors in claiming too much; and errors in claiming too little. A major statutory limit on the reissue process is that "[n]o 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." The limit on improper broadening of reissues is strict and applies when claims are "broader in any respect." Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298 (Fed. Cir. 2008).
Since 2006, the prosecution pendency of reissue applications has hovered at an average of around 5 years based upon an analysis of all reissues issued each year.
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I looked particularly at a sample of 439 recently completed reissue applications. In that sample, 88% received an initial non-final rejection; 46% then received a final rejection; 23% filed a request for continued examination (RCE); and only 1% completed the BPAI appeal process. As you might expect, each layer of processing added additional time to the prosecution. Thus, for example, applications with a notice-of-appeal in the file history had an average pendency of well over 8 years.
There is remarkably little variation in pendency across technology areas. Over the past five years, reissues in Technology Center 1600 (Biotechnology and Organic Chemistry) took an average of 4.92 years to complete while those in Technology Center 2800 (Semiconductors, Electrical and Optical Systems) took 4.86 years. The slowest Technology Center was 2600 (Communications) where reissue prosecution took 5.14 years on average. Of those applications with an initial rejection, the first rejection was mailed 1.8 years (on average) after the reissue request was filed (median of 1.5 years after filing). The relative parity (in terms of prosecution pendency) amongst the various technology centers suggests that the reissue prosecution timeline is driven by an overarching USPTO approach to reissue examination.
In 2010, the USPTO reissued 947 patents — more patents than any year in history. The prior records were established in 2008 (647 reissues) and 1875 (630 reissues). In 1875, 630 reissued patents represented about 5% of all patents issued that year. However, the 2010 record represents fewer than one-half of one percent. Although long application pendency is usually a two-way street — caused by both the USPTO and applicant delays, the relatively small reissue docket suggests that the PTO could be doing much more to speed the process.
Notes:
- The Patent Post Grant blog, run by the Oblon firm, has several interesting posts on reissue practice. [Link]
- In an e-mail, Hal Wegner noted that the recent rise in the number of reissue patents can be attributed to the efforts by Director Kappos in “removing internal bottlenecks to grant deserving reissues.”
Everything at the PTO would probably be processed quicker if this website would shut down the comment section. Alternatively, the PTO could block access to this website from 8-6 eastern time.
That could be addressed in the legislation.
If actual notice is required for the patent, the same should be required for the amended claim.
To the contrary, if no notice is required, no notice of the amendment should be required.
Just a couple of thoughts.
Ned-o how does abatement figure on actual notice? on constructive notice?
The delay wouldn’t be so intolerable if the courts or Congress would fix one little thing: abatement. Even if the claims are narrowed, damages should still be available from the date of amendment. The infringer infringed both before an after limitation of the claim; so the only excuse for the infringement is some sort of reliance interest on the infringer that he acted in reliance that the patent was invalid. But this reliance interest is diminished a great deal once the PO amends the claim to define over the art and the infringer still infringes.
I’d like to see a chart looking at the ratio of narrowing reissue versus broadening reissues applied for each year over the past 20-50 years.
Also the number of non-Bauman continuation reissues filed over the same period.
The delay wouldn’t be so intolerable if the courts or Congress would fix one little thing: abatement. Even if the claims are narrowed, damages should still be available from the date of amendment. The infringer infringed both before an after limitation of the claim; so the only excuse for the infringement is some sort of reliance interest on the infringer that he acted in reliance that the patent was invalid. But this reliance interest is diminished a great deal once the PO amends the claim to define over the art and the infringer still infringes.
Red or blue does not define who you are. It is just a deposit that can be withdrawn. So whatever you are today, tomorrow may be different.
I think there are a lot of reasons to expect reissue pendency to be higher than patent pendency. The manner of making amendments, examination of the reissue oath, issues relating to “recapture” and the like (unclear how much attention Examiners pay to this particular issue)… all of it would be expected to slow the ordinary process of pre-Exam, Exam, and post-Exam down.
The significant rises in the Reissue Patent Grant chart seems to follow the significant economic downturns in the United States:
1. Panic of 1873 and the Long Depression: Oct 1873 – Mar 1879.
2. Great Depression 1929: Aug 1929 – 1933
3. Great Recession 2007: Dec 2007 –
the relatively small reissue docket suggests that the PTO could be doing much more to speed the process.
The linen closet is too hot inside, but since it’s such a small percentage of the house (which is also too hot inside) there must be something we can do to cool it down. Maybe put in a fan or something.
Or we could address the actual underlying problem with the entire house by calling the fire department.
“Each time, stronger intervening rights against reissue patents”
Hmmm, are you saying that strong activist (read that anti-patent) Supreme Court decisions led to less people pursuing their rights?
Shockers I tell ya.
I suspect the dual tier narure, Examiner + Special Programs, yields this result.
Interesting that the ~1880 and ~1940 drops in the reissue trend appear to correspond to Supreme Court decisions in Miller v. Bridgeport Brass and Sontag v. Nat’l Nut, respectively. Each time, stronger intervening rights against reissue patents appears to have led to sharp declines in the number of reissues.
The post grant blog explored this issue last Fall, here is the break down for broadening
link to patentspostgrant.com
and narrowing
link to patentspostgrant.com
I would note that, after briefing is complete, reissue appeals tend to get decided by the Board within six months or so. Not great, but better than the typical utility wait (years) at the Board.
link to des.uspto.gov
No excuse, PTO. Fix this problem!
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