14 thoughts on “Reissue Patents 2020 vs 1875

  1. 6

    Dennis, why is my contribution of just now held up in moderation? Perhaps because it includes a four letter word that is the antonym of pretty. If so, that seems to me somewhat over -cautious of your censor, no?

  2. 5

    How far back in time does the notion extend, always to “keep something pending” at the PTO? If one does, then does one ever need a reissue? Perhaps in times gone by, such insurance was not then so common. Perhaps that is one reason why more petitions for reissue were filed?

    Even at the EPO, the strategy to keep “something pending” throughout the life of the patent makes good sense. And not only for the patent owner. For the prosecuting patent law firm it is nice work if you can get it. Any nobody involved has any need ever to utter that ugly word “mistake”.

  3. 4

    For the latter situation, Lode_Runner, and I may be incorrect about this, the “prior art that wasn’t considered during prosecution” does not constitute a mistake, so you could not file a Reissue based on that.

    1. 4.1

      That is correct. In a large majority of reissues the mistake is that the patent holder claimed less than they were entitled. This has become a boilerplate admission that avoids significant prosecution history estoppel while still satisfying the requirements that a “mistake” was made in the issued patent.

    2. 4.2

      You may be technically correct, Lurker, but I’ve actually seen reissues filed on the basis that prior art wasn’t considered. I believe they used the reasoning that general statements in the specification about the prior art (i.e. what it supposedly failed to disclose), weren’t entirely accurate based on prior art that they had in their hands.

  4. 3

    I think Taranto’s decision on reissues might have something to do with the low number.

  5. 2

    I have to wonder if “reissue” is directly tied to times of economic uncertainty (as in, we don’t want to spend a lot of money, but we need to clean some things up so that we can try to enforce…)

  6. 1

    Thanks Dennis, only 581 reissues last year compared to 631 in 1875 confirms for me how underused reissue applications are now.*
    Can you separate them into the important and strict distinction between claim-broadening reissues and claim-narrowing reissues?
    *”Intervening rights”, “reissue recapture” and the statutory time limit for filing broadening reissues are reissue inhibitors. But I wonder how many patent owners would have been far better off improving their claims with reissues before suing on their patents? Especially now that I hear that they are handled in a special PTO examination group, presumably faster and more accurately as to reissue oaths and other special requirements?

    1. 1.1

      One other reason for little use of reissues [even though they are desirably ex parte proceedings] may be that relatively few patent attorneys have had any experience with reissues or their case law, and thus may not feel comfortable filing them? [As their very small number indicates.]
      Also, have some reissues now been replaced by patent owner ex parte reexaminations?

    2. 1.2

      Paul, I suspect one of the big reasons practitioners don’t bother with reissues is that you can often just file a continuation application instead. As long as you have at least one open con available, just prosecute your preferred or “corrected” claims through the continuation. It will likely be much faster than reissue and you don’t have to cop to a “mistake” in an earlier-issued patent as you would in a reissue application. Decades ago, applicants didn’t file continuations as a matter of course as they often do today, so may explain why reissue was more popular in the past.

      Another factor, if a patent owner is seeking to narrow its claims because of prior art that wasn’t considered during prosecution of the earlier patent, it often makes more sense for the patent owner to seek ex parte reexamination rather than reissue. Ex parte reexamination wasn’t even available until 1981, and historically about 30% of ex parte requests have been filed by patent owners. The availability of owner-initiated ex parte reexamination as an alternative to reissue no doubt also helped push down the number of reissue applications filed in more recent years.

      1. 1.2.1

        Thanks LR. Our last paragraphs above – on the ex parte reexam option – are in agreement, and keeping a continuation or divisional pending for much of the life of the parent patent as you and Max noted is indeed another popular tactic nowadays.* However, claims of the latter might risk “obviousness type double patenting” in some cases if too close and one patent is not abandoned?
        *Such very long continuation or divisional application prosecution delays are practical because of the failure of the USPTO to provide proper docket prosecution order control based on true [original] filing dates.


          Paul, I don’t think obviousness-type double patenting concerns provide a reason to pursue reissue. Don’t forget, a reissue does not extend the patent term, so a reissued patent will have the same expiration date as the original patent. And if you instead filed a continuation or divisional off the original patent, sure you might get a double patenting rejection but you can usually overcome it by just filing a terminal disclaimer giving up any term past the expiration of the original patent. That basically just puts puts you in the exact same position as reissue with respect to eventual expiration date of a later patent issuing from a continuation/divisional.

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