REEXAMINATION & REISSUE PRACTICE GROUP

PATENT REISSUE
Frequently Asked Questions1

www.patentspostgrant.com
Stephen G. Kunin
Scott A. McKeown
W. Todd Baker
Vincent K. Shier

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This document is provided as an educational primer for patent reissue practice before the USPTO. This document
DOES NOT CONSTITUTE LEGAL ADVICE to any particular person/entity and should not be treated as such
by readers. The download of this document does not create an attorney client relationship with Oblon Spivak or
any individual attorney thereof. Always seek qualified patent counsel before taking action in reliance on the
contents of this document.
 Table Of Contents
DESCRIPTION PAGE

A. REMEDIAL STATUTE 35 U.S.C. § 251 ..................................................................................... 1

1. WHAT IS A REISSUE PATENT APPLICATION? ............................................................................... 1
2. AS A PATENT OWNER, WHY USE PATENT REISSUE RATHER THAN PATENT REEXAMINATION? . 1
3. WHEN IS A “BROADENING” REISSUE AVAILABLE?...................................................................... 2
4. IS THERE A LIMIT ON WHEN I CAN PRESENT BROADENED CLAIMS IN A REISSUE? HOW DO I
INDICATE THIS INTENT? ............................................................................................................... 2
5. WHAT DOES “BROADER” MEAN? ................................................................................................. 2
6. IS THERE A LIMIT ON WHEN I CAN FILE A NARROWING REISSUE?................................................ 2
7. FOR CASES IN WHICH I HAVE A CHOICE OF FILING A NARROWING REISSUE OR A PATENT
OWNER INITIATED EX PARTE REEXAMINATION WHAT ARE SOME OF THE CONSIDERATIONS THAT
IMPACT THE SELECTION OF ONE PROCEEDING OVER THE OTHER?............................................... 3
8. ARE THE TIME PERIODS FOR REISSUE RESPONSES THE SAME AS FOR NORMAL PROSECUTION? .. 3
9. WHO EXAMINES A REISSUE APPLICATION?.................................................................................. 3
10. IS THERE A SPECIAL FORMAT FOR MAKING AMENDMENTS? ........................................................ 3
11. HOW QUICKLY DOES AN EXAMINER ACT ON A REISSUE APPLICATION?...................................... 4
12. CAN I FILE A REISSUE APPLICATION TO PURSUE RESTRICTED CLAIMS I FORGOT TO PURSUE? ... 4
13. CAN A REISSUE APPLICATION BE FILED THAT ONLY PRESENTS DEPENDENT CLAIMS?................ 4
14. WHAT IS THE RECAPTURE DOCTRINE?......................................................................................... 5
15. DO SIGNATURES NECESSARY FOR REISSUE DECLARATIONS POSE ANY PROBLEMS? ................... 5
16. WHEN IS THE CONSENT OF THE ASSIGNEE NEEDED?.................................................................... 5
17. WHAT ARE EXAMPLES OF THE STATEMENT THAT THE APPLICANT BELIEVES THE ORIGINAL
PATENT TO BE WHOLLY OR PARTLY INOPERATIVE OR INVALID?................................................. 6
18. WHAT IS REQUIRED TO ESTABLISH THE BASIS FOR THE REISSUE?............................................... 6
19. DOES THE STATEMENT OF ERROR NEED TO INCLUDE ALL OF THE ERRORS UPON WHICH REISSUE
IS BASED?..................................................................................................................................... 6
20. HOW SPECIFIC DOES THE STATEMENT OF ERROR NEED TO BE? ................................................... 7
21. WHAT IS REQUIRED IN THE STATEMENT OF NO DECEPTIVE INTENT?........................................... 7
22. WHEN IS A SUPPLEMENTAL DECLARATION REQUIRED AND WHAT NEEDS TO BE IN IT? .............. 7
23. WHAT HAPPENS TO MY ORIGINAL PATENT IF I ABANDON THE REISSUE APPLICATION? .............. 8
B. MPEP TABLE OF CASES ........................................................................................................... 9
C. OBLON SPIVAK REEXAMINATION/REISSUE PRACTICE GROUP ............................. 21
D. BIOS.............................................................................................................................................. 23

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 Patent Reissue
A. Remedial Statute 35 U.S.C. § 251
1. What is a Reissue Patent Application?

Answer: A reissue application is filed to correct an error in an issued patent2.

The most common bases for filing a reissue application are inter alia:

(A) the original patent claims are too narrow or too broad;

(B) the disclosure contains inaccuracies;

(C) applicant failed to or incorrectly claimed foreign priority; and

(D) applicant failed to make reference to or incorrectly made reference to prior copending
applications.

The error must have be made without any deceptive intention, where, as a result of the error,
the patent is deemed wholly or partly inoperative or invalid. An error in the patent arises out
of an error in conduct which was made in the preparation and/or prosecution of the
application which became the patent. See MPEP § 1401.

There must be at least one error in the patent to provide grounds for reissue of the patent. If
there is no error in the patent, the patent will not be reissued.

2. As a Patent Owner, why use Patent Reissue rather than Patent

Reexamination?

Answer: The original patent claims may be wholly or partly inoperative for reasons other
than lack of novelty and obviousness. Since reexamination can only be based on patents and
printed publications, reissue is the only way for applicants to correct their patents for errors
of the specification and for claim defects relating to subject matter eligibility, utility, written
description, enablement and clarity.

2
35 U.S.C. 254 & 255 provide for the correction of a clerical, typographical or minor character
error of a patent via a Certificate of Correction. Corrections impacting claim
scope/enforceability are outside of the purview of this statute.

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Additionally, reexamination does not allow broadening of claims. If filed within a certain
limited time, a broadening reissue may be filed to pursue an enlarged claim scope.
Otherwise, a reissue, like a reexamination can only be “narrowing” with respect to claim
scope.

3. When is a “Broadening” Reissue available?

Answer: Under 35 U.S.C. § 251, a broadened reissue must be filed within two years of the
original patent grant.

4. Is there a limit on when I can present broadened claims in a Reissue? How

do I indicate this intent?

Answer: Applicant should manifest his/her intent to file a broadened reissue in the reissue
oath or declaration. Once a broadened reissue is timely filed applicant can seek to add new
broadened claims outside the two year limit.

Applicant cannot file a narrowing reissue application within two years of the original patent
grant, then seek to file broadened claims outside the two year limit. Applicant can file a
broadened continuation reissue outside the two year limit when the broadened parent reissue
was filed within the two year limit. See MPEP § 1412.03.

5. What does “broader” mean?

Answer: Within the context of reissue patent law, a claim is considered to be broadened
when it has been broadened in any respect even if it may have been narrowed in other
respects. See MPEP § 1412.03. Generally speaking, the word “broader” means that
something will now infringe the claim in its new form which would not have infringed the
original patent claim.

6. Is there a limit on when I can file a narrowing reissue?

Answer: Once a patent has expired, the Director of the USPTO no longer has the authority
to reissue the patent. See MPEP §§ 1415.01 and 1443. If the patent has not expired
applicant may file for a narrowing reissue where the original patent was granted through
error and without deceptive intent. In contrast, a request for reexamination can be filed at
any time during the period of enforceability of the patent. The period of enforceability is
determined by adding 6 years to the date on which the patent expires. See 37 C.F.R. §
1.510(a).

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7. For cases in which I have a choice of filing a narrowing reissue or a Patent
Owner initiated ex parte reexamination what are some of the considerations
that impact the selection of one proceeding over the other?

Answer: The filing for reissue exposes all issued claims to a second examination. Thus, if
only a single, or subset of claims of an issued patent are in question, a reexamination request
will generally allow a patent holder to limit the USPTO review to these specific claims only.
See MPEP §2243 (“The Office's determination in both the order for reexamination and the
examination stage of the reexamination will generally be limited solely to a review of the
claim(s) for which reexamination was requested”). On the other hand, a benefit of reissue
proceedings is that extensions of time, and requests for continued examination or
continuations may be filed; this is not so in reexamination proceedings. Finally, all claims
will be examined with respect to compliance with 35 U.S.C. §§ 102, 103, 112, 251 and 101
as well as obviousness-type double patenting in reissue. In reexamination claims are
evaluated based on their novelty, nonobviousness and obviousness-type double patenting
over prior art patents and printed publications. In reexamination proceedings section 112 is
available to the USPTO in the analysis of amended claims and newly added claims. 37 CFR
§ 1.552(a). 35 U.S.C. § 101 is not applied in reexamination outside of double patenting
issues.

8. Are the time periods for reissue responses the same as for normal
prosecution?

Answer: In most circumstances, yes. See MPEP § 1440 and 37 C.F.R. § 1.176(a) (“A
reissue application will be examined in the same manner as a non-reissue, non-provisional
application, and will be subject to all the requirements of the rules related to non-reissue
applications.”). However, when the original patent is in a litigation that is stayed, applicants
are given a one-month or thirty day shortened statutory period (“SSP”) whichever is longer
for reply.

9. Who examines a reissue application?

Answer: Reissue applications are normally examined by the same examiner who issued
the patent for which reissue is requested. See MPEP § 1440. This is quite different from
patent reexamination. In patent reexamination, a special unit of the USPTO, the Central
Reexamination Unit performs examination and the examiner of the original patent is
precluded from participating in the reexamination proceeding.

10. Is there a special format for making amendments?

Answer: Yes, the manner of making amendments to a reissue specification, drawings and
claims is set forth in 37 C.F.R. § 1.173. See MPEP § 1453.

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11. How quickly does an Examiner act on a reissue application?

Answer: Officially, Applications for reissue will be acted on by the examiner in advance
of other applications. 37 C.F.R. § 1.176(a). Reissue applications with related litigation will
be acted on by the examiner before any other special applications, and will be acted on
immediately by the examiner, subject only to a 2-month delay after notice of the filing of the
reissue application has been published in the Official Gazette for examining reissue
applications. See MPEP §§ 1440, 1441 and 1442.

In practice, reissue applications tend to be treated by Examiners as any other application,

turning the order of examination. Reexamination cases are treated with “special dispatch” as
explained in the ex parte and inter partes Reexamination FAQ.

12. Can I file a Reissue Application to pursue restricted claims I forgot to

pursue?

Answer: A reissue applicant's failure to timely file a divisional application covering the
non-elected invention(s) following a restriction requirement is not considered to be error
causing a patent granted on elected claims to be partially inoperative by reason of claiming
less than the applicant had a right to claim. See MPEP § 1412.01. Thus, such an error is not
correctable by reissue of the original patent under 35 U.S.C. § 251. Cf., In re Doyle, 482
F.2d 1385 (Fed. Cir. 2002)( Reissue was permitted to add linking claims).

13. Can a Reissue application be filed that only presents dependent claims?

Answer: The USPTO currently advises that an error under 35 U.S.C. § 251 has not been
presented where a reissue application only adds one or more claims that is/are narrower than
one or more broader existing patent claims without either narrowing the broader patent claim
by amendment or canceling the broader patent claim. See MPEP § 1402. A reissue
application in which the only error specified to support reissue is the failure to include one or
more claims that is/are narrower than at least one of the existing patent claim(s) without an
allegation that one or more of the broader patent claim(s) is/are too broad together with an
amendment to such claim(s), does not meet the requirements of 35 U.S.C. § 251.

Although a reissue applicant may regard the absence of certain narrower claims to be "an
error," the original patent is simply not wholly or partly inoperative to protect the invention
due to the absence of a narrow claim when the invention to which that narrow claim is
directed is covered by one or more broader existing patent claims that the reissue applicant
does not propose to either narrow or cancel. The original patent is also not wholly or partly
invalid by reason of one or more claims being too broad if the reissue applicant does not
propose to either narrow such claims by amendment or cancel them. The allegation that the
patent is defective for "claiming less than patentee had a right to claim" does not mean that
there are too few claims, but rather that the patent claims are not broad enough to protect the
invention (and the patent is thereby inoperative to protect the disclosed invention).
Therefore, where no broadening claims are presented, such an allegation does not correctly
set forth a 35 U.S.C. § 251 error.

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14. What is the recapture doctrine?

Answer: A reissue will not be granted to "recapture" claimed subject matter which was
surrendered in an application to obtain the original patent. See MPEP § 1412.02. In In re
Clement, the Court of Appeals for the Federal Circuit set forth a three step test for recapture
analysis. In re Clement, 131 F.3d 1464, 1468-70, 45 USPQ2d 1167, 1164-65, (Fed. Cir.
1997). In North American Container, Inc. v. Plastipak Packaging, Inc., the court restated
this test as follows:

We apply the recapture rule as a three-step process:

(1) first, we determine whether, and in what respect, the reissue claims are broader in
scope than the original patent claims;

(2) next, we determine whether the broader aspects of the reissue claims relate to
subject matter surrendered in the original prosecution; and

(3) finally, we determine whether the reissue claims were materially narrowed in
other respects, so that the claims may not have been enlarged, and hence avoid the
recapture rule.

Regarding step (2), if the original patent claim limitation being omitted or broadened in the
reissue application was originally relied upon by applicant in the original application to make
the claims allowable over the applied art, the omitted limitation relates to subject matter
previously surrendered by applicant. The recapture doctrine does not apply to non-art related
amendments.

15. Do signatures necessary for reissue declarations pose any problems?

Answer: In a narrowing reissue, the assignee may sign the reissue declaration. However,
in a broadening reissue, the inventors must sign, unless one or more of the inventors cannot
be located or refuse to sign the reissue declaration. 37 C.F.R. § 1.172(a).; See also MPEP §
1410.01. In such case, a petition must be filed under 37 C.F.R. § 1.47.

16. When is the consent of the assignee needed?

Answer: The reissue oath or declaration must be accompanied by a written consent of all
assignees. See MPEP § 1410.01(I). The consent of assignee must be signed by a party
authorized to act on behalf of the assignee. Where the written consent of all the assignees
cannot be obtained, applicant may under appropriate circumstances petition to the Office of
Petitions (MPEP § 1002.02(b)) for a waiver under 37 C.F.R. § 1.183 of the requirement of 37
C.F.R. § 1.172, to permit the acceptance of the filing of the reissue application. The petition
fee under 37 C.F.R. 1.17(f) must be included with the petition. The assignee must establish
its ownership in accordance with 37 C.F.R. § 3.73(b).

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 17. What are examples of the statement that the applicant believes the original
patent to be wholly or partly inoperative or invalid?

Answer: In order to satisfy this requirement, a declaration can state for example:
1. "Applicant believes the original patent to be partly inoperative or invalid by
reason of a defective specification or drawing."

2. "Applicant believes the original patent to be partly inoperative or invalid by

reason of the patentee claiming more than patentee had a right to claim in the
patent."

3. "Applicant believes the original patent to be partly inoperative or invalid by

reason of the patentee claiming less than patentee had a right to claim in the
patent."

A statement that "Applicant believes the original patent to be partly inoperative or invalid by
reason of the patentee claiming more or less than patentee had a right to claim in the patent"
will not satisfy 37 C.F.R. § 1.175. See MPEP § 1414.

18. What is required to establish the basis for the reissue?

Answer: The reissue oath or declaration must include a statement of at least one error
made without deceptive intent, which is relied upon to support the reissue application. The
reissue focuses on two separate errors: an error in the patent, and an error in conduct that
caused the error in the patent.3 With regard to the error in conduct, see question (21) below.
As to the error in the patent, a reissue applicant must acknowledge the existence of an error
in the specification, drawings, or claims, which error causes the original patent to be
defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). See MPEP §
1414(II).

19. Does the statement of error need to include all of the errors upon which
reissue is based?

Answer: No. Applicant need only specify in the reissue oath/declaration one of the errors
upon which reissue is based. See MPEP § 1414(II). Where applicant specifies one such
error, this requirement of a reissue oath/declaration is satisfied. Applicant may specify more
than one error. Where more than one error is specified in the oath/declaration and some of
the designated "errors" are found not to be "errors" under 35 U.S.C. § 251, any remaining
error which is an error under 35 U.S.C. § 251 will still support the reissue. The "at least one
error" which is relied upon to support the reissue application must be set forth in the
oath/declaration.

3
See Hewlett-Packard Co. v. Bausch & Lomb Inc., 882 F.2d 1556 (Fed. Cir. 1989).

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 20. How specific does the statement of error need to be?

Answer: It is not sufficient for an oath/declaration to merely state "this application is being
filed to correct errors in the patent which may be noted from the changes made in the
disclosure." Rather, the oath/declaration must specifically identify an error. See MPEP §
1414(II). In addition, it is not sufficient to merely reproduce the claims with brackets and
underlining and state that such identifies the error. See In re Constant, 827 F.2d 728, 729, 3
USPQ2d 1479 (Fed. Cir.), cert. denied, 484 U.S. 894 (1987). Any error in the claims must
be identified by reference to the specific claim(s) and the specific claim language wherein
lies the error.

A statement of "failure to include a claim directed to" and then presenting a newly added
claim, would not be considered a sufficient "error" statement because applicant has not
pointed out what the other claims lacked that the newly added claim has, or vice versa. Such
a statement would be no better than saying in the reissue oath or declaration that "this
application is being filed to correct errors in the patent which may be noted from the change
made by adding new claim 10." In both cases, the error has not been identified.

Likewise, a statement of the error as "the inclusion of claims 3-5 which were unduly broad"
and then canceling claims 3-5, would not be considered a sufficient "error" statement because
applicant has not pointed out what the canceled claims lacked that the remaining claims
contain. The statement of what the remaining claims contain need not identify specific
limitations, but rather may provide a general identification, such as "Claims 3-5 did not
provide for any of the tracking mechanisms of claims 6-12, nor did they provide an
attachment mechanism such as those in claims 1-2 and 9-16."

21. What is required in the statement of no deceptive intent?

Answer: In order to satisfy this requirement, the following statement may be included in
an oath or declaration:

"All errors in the present reissue application up to the time of signing of this
oath/declaration, or errors which are being corrected by a paper filed concurrently with
this oath/declaration which correction of errors I/we have reviewed, arose without any
deceptive intention on the part of the applicant." See MPEP § 1414(III).

In principle, nothing more is required4. The examiner will determine only whether the reissue
oath/declaration contains the required averment.

22. When is a supplemental declaration required and what needs to be in it?

Answer: Whenever amendments are made during the course of prosecution to the reissue
application, after the submission of the original reissue declaration, a supplemental reissue
declaration must be filed before the reissue application is allowed. 37 C.F.R. § 1.175(b); See

4
Note the requirements of 37 CFR § 11.18(b) must also be satisfied by any person signing a paper submitted to the
USPTO.

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MPEP § 1414.01. Such supplemental reissue declaration may simply recite the standard
form paragraph 14.05.02 set forth in MPEP § 1444(II) where the original reissue declaration
has specified an error which is still being corrected in the reissue application. However,
where the error specified in the original reissue declaration is no longer applicable, the
supplemental reissue declaration must specify at least one error that is applicable to the
reissue application in its current form.

23. What happens to my original patent if I abandon the reissue application?

Answer: Until a reissue application is granted, the original patent shall remain in effect.
Consequently, the original patent will remain in effect when a reissue application is
abandoned. See 37 CFR § 1.178. The file history of the abandoned reissue application will
remain publicly available.

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 B. MPEP TABLE OF CASES

Case Name Citation Subject Matter Description of

Significance

North American Container, Inc. v. 415 F.3d 1335 (Fed. Cir. 2005) (recapture doctrine) ("A reissue will not
Plastipak Packaging, Inc. be granted to
“recapture” claimed
subject matter
which was
surrendered in an
application to obtain
the original patent.")
Eggert, Ex parte 67 USPQ2d 1716 (Bd. Pat. App. (recapture doctrine) (Recapture doctrine
& Inter. 2003) does not reject a
reissue claim that
recites a broader
form of a key
limitation argued
during original
prosecution to
overcome an art
rejection.)
Novo Industries L.P. v. Micro 350 F.3d 1348 (Fed. Cir. 2003) (correction through (District Courts
Molds Corp. district court) have limited
authority to correct
patents.)
Doyle, In re 293 F.3d 1355 (Fed. Cir. 2002) (linking claim) ("Linking claims"
are allowable in
reissue
applications.)

Pannu v. Storz Instruments, Inc. 258 F.3d 1366 (Fed. Cir. 2001) (recapture doctrine) ("A reissue will not
be granted to
“recapture” claimed
subject matter
which was
surrendered in an
application to obtain
the original patent.")
Yamaguchi, Ex parte 61 USPQ2d 1043 (Bd. Pat. App. (broadening - (Surrender cannot
& Inter. 2001) surrendered subject be based solely
matter) upon applicant
failure to respond
to, or challenge, an
examiner’s
statement made
during prosecution.)

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 Case Name Citation Subject Matter Description of
Significance

B.E. Meyers & Co. v. United 56 USPQ2d 1110 (US CtFedCls (recapture doctrine) (Permissible to
States 2000) remove a limitation
added to obtain the
patent, "where the
replacement
limitation provided
a separate
invention.")
Hayes, In re 53 USPQ2d 1222 (Comm'r Pat. (broadening - (All inventors must
1999) supplemental oath or sign a supplemental
declaration) reissue oath or
declaration.)

Hester Industries, Inc. v. Stein, 142 F.3d 1472 (Fed. Cir. 1998) (recapture doctrine) ("A reissue will not
Inc. be granted to
'recapture' claimed
subject matter
which was
surrendered in an
application to obtain
the original patent.")
Metz, In re 173 F.3d 433 (Fed. Cir. 1998) (interference through (Patentee may file
(table) reissue) "a reissue
application to copy
claims from a patent
in order to provoke
an interference with
that patent." )
Slip Track Systems, Inc. v. Metal 159 F.3d 1337 (Fed. Cir. 1998) (interference through (Impermissible to
Lite, Inc. reissue) file a reissue
application solely to
provoke an
interference without
asserting an error in
the patent.)
Vectra Fitness, Inc. v. TNWK 162 F.3d 1379 (Fed. Cir. 1998) (broadening) (Reissue claims are
Corp. considered
broadened if they
are broader than
claims that remain
after disclaimer,
even though they
may be narrower
than claims that
were disclaimed
before reissue.)

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 Case Name Citation Subject Matter Description of
Significance

Clement, In re 131 F.3d 1464 (Fed. Cir. 1997) (recapture doctrine) (Court of Appeals
for the Federal
Circuit sets forth a
three step test for
recapture analysis.)

Graff, In re 111 F.3d 874 (Fed. Cir. 1997) (continuing reissue (Broadened claims
application - broadening) in a continuing
reissue application
will be rejected if
the proposal for
broadened claims
was not made in the
parent within the
two year limit.)
Graff, In re (continuing reissue (Multiple reissue
application - broadening) patents are
permissible even
where the multiple
reissue patents are
not for "distinct and
separate parts of the
thing patented.")
Hallmark Cards, Inc. v. Lehman 959 F. Supp. 539 (D.D.C. 1997) (certificate of correction) ("Third parties do
not have standing to
demand that the
Office issue, or
refuse to issue, a
Certificate of
Correction.")
Molins, In re 368 F.2d 258 (CCPA 1996) (new subject matter) (In copying claims
to provoke an
interference through
reissue, subject
matter of copied
claims must be
supported by
original disclosure.)
Baker Hughes, Inc. v. Kirk 921 F. Supp. 801 (D.D.C. 1995) (assignee consent) (Reissue application
can be filed and
examined, but will
not be allowed or
issued without
consent of all
assignees.)

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 Case Name Citation Subject Matter Description of
Significance

BIC Leisure Prods., Inc. v. 1 F.3d 1214 (Fed. Cir. 1993) (intervening rights) (Distinguishes
Windsurfing Int'l, Inc. between "absolute"
intervening rights,
and "equitable"
intervening rights.)

Mentor Corp. v. Coloplast, Inc. 998 F.2d 992 (Fed. Cir. 1993) (claim scope) (Reissue claims that
are broader in a way
that does not
attempt to reclaim
surrendered matter
are permissible.)
Morgan, In re 990 F.2d 1230 (Fed. Cir. 1993) (expiration) (Reissue
applications may
not be filed for
expired patents.)

Hayes Microcomputer Products, 982 F.2d 1527 (Fed. Cir. 1992) (broadening - (If a supplemental
Inc., In re supplemental oath or oath or declaration
declaration) is needed in a
broadening reissue,
it must be signed by
all of the inventors.)
Amos, In re 953 F.2d 613 (Fed. Cir. 1991) (same invention (The test for same
requirement) invention is a
factual inquiry into
the objective intent
of the original
patent.)
Arnott, In re 19 USPQ2d 1049 (Comm'r Pat. (certificate of correction) (Specifies the nature
1991) of mistakes and
nature of corrections
allowable under 35
U.S.C. 255.)

Watkinson, In re 900 F.2d 230 (Fed. Cir. 1990) (restriction) (Failure to file a
divisional
application prior to
issuance of original
patent is not
correctable by
reissue.)
Wikdahl, Ex parte 10 USPQ2d 1546 (Bd. Pat. App. (broadening - recapture (Addition of process
& Inter. 1989) doctrine) claims is generally
considered to be a
broadening of the
invention.)

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 Case Name Citation Subject Matter Description of
Significance

Ethicon v. Quigg 849 F.2d 1422 (Fed. Cir. 1988) (concurrent post-grant (Ex parte
proceedings) reexamination will
not be stayed where
there is litigation.)

Constant, In re 827 F.2d 728 (Fed. Cir. 1987) (basis for reissue) (A reissue oath or
declaration must
identify specific
claim, specific
claim language, and
specific error.)
Keil, In re 808 F.2d 830 (Fed. Cir. 1987) (basis for reissue) (Reissue error must
be based on
applicant error, and
cannot be based
solely on the Office
failing to either
declare an
interference, or
suggest copying
claims to establish
an interference.)
Tillotson Ltd. v. Walbro Corp. 831 F.2d 1033 (Fed. Cir. 1987) (broadening) (An amended or
newly added reissue
claim which
contains any
product or process
that would not have
infringed the patent
is a claim broader
than the original
patent claims.)
Anthony, Ex parte 770 F.2d 182 (Fed. Cir. 1985) (terminal disclaimer) (Filing terminal
disclaimer to an
avoid obvious-type
double patenting
rejection is not error
under 35 U.S.C.
251.)
Bennett, In re 766 F.2d 524 (Fed. Cir. 1985) (broadening) (An improperly
executed declaration
for a timely filed
broadening reissue
may be corrected
even after the two
year limit.)

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 Case Name Citation Subject Matter Description of
Significance

Fotland, In re 779 F.2d 31 (Fed. Cir. 1985) (broadening) (Failing to include

an oath or
declaration
indicating a desire
to broaden claims
will bar future
attempts to broaden
the claims after the
two year limit.)
Ball Corp. v. United States 729 F.2d 1429 (Fed. Cir. 1984) (recapture doctrine) ("A reissue will not
be granted to
“recapture” claimed
subject matter
which was
surrendered in an
application to obtain
the original patent.")
Wilder, In re 736 F.2d 1516 (Fed. Cir. 1984) (basis for reissue) (Reissue application
must identify an
error in the
specification,
drawings, or claims
which causes the
original application
to be defective.)
Schuurs, In re 218 USPQ 443 (Comm'r Pat. (certificate of correction) (Obtaining a
1983) "Certificate of
Correction is an
appropriate remedy
for correcting, in a
patent, reference to
a prior co pending
application.")
Sneed, In re 710 F.2d 1544 (Fed. Cir. 1983) (presumption of validity) (No presumption of
validity for claims
in a reissue
application.)

Bauman, In re 683 F.2d 405 (CCPA 1982) (continuation reissue (A continuation or

application) divisional of a
parent reissue
application is not a
reissue application
itself, unless "there
is an identification,
on filing, that the
application is a
continuation reissue
application.")

14
 Case Name Citation Subject Matter Description of
Significance

Dien, In re 680 F.2d 151 (CCPA 1982) (basis for reissue) (Reissue error must
be based on
applicant error, and
cannot be based
solely on the Office
failing to either
declare an
interference, or
suggest copying
claims to establish
an interference.)
Mead, In re 581 F.2d 251 (CCPA 1978) (same invention (The test for same
requirement) invention is a
factual inquiry into
the objective intent
of the original
patent.)
A.F. Stoddard & Co. v. Dann 564 F.2d 556 (D.C. Cir. 1977) (basis for reissue) (Correcting
inventorship form
sole inventor A to
sole inventor B is
permitted through
reissue.)
Orita, In re 550 F.2d 1277 (CCPA 1977) (restriction) (Design reissue is
improper for
applicant who faced
restriction in
original design
patent application
failed to file a
timely divisional.)
Lambrech, In re 202 USPQ 620 (Comm'r Pat. (certificate of correction) ("Certificate of
1976) Correction is an
appropriate remedy
for correcting, in a
patent, reference to
a prior co pending
application.")
Sampson v. Comm'r Pat. 195 USPQ 136 (D.D.C. 1976) (basis for reissue) (Correction of
failure to adequately
claim 35 U.S.C. 120
in an earlier filed co
pending application
is permissible
through reissue.)

15
 Case Name Citation Subject Matter Description of
Significance

Fontijn v. Okamoto 518 F.2d 610 (CCPA 1975) (basis for reissue) (Reissue is
permissible for
"establishing a
claim to priority
which was not
asserted, or which
was not perfected
during the
prosecution of the
original
application.”)
Lafferty, Ex parte 190 USPQ 202 (Bd. App. 1975) (lack of diligence or (Reissue
delay) application, non-
broadening, filed
more than 2 years
post grant should
not be rejected for
delay or lack of
diligence.)
Rowand, In re 526 F.2d 558 (CCPA 1975) (same invention (The test for same
requirement) invention is a
factual inquiry into
the objective intent
of the original
patent.)
Van Esdonk, In re 187 USPQ 671 (Comm'r Pat. (certificate of correction) (Obtaining a
1975) "Certificate of
Correction is an
appropriate remedy
for correcting, in a
patent, reference to
a prior co pending
application.")
Wadlinger, In re 496 F.2d 1200 (CCPA 1974) (recapture doctrine) ("A reissue will not
be granted to
“recapture” claimed
subject matter
which was
surrendered in an
application to obtain
the original patent.")
Doyle, In re 482 F.2d 1385 (CCPA 1973) (presumption of validity) (No presumption of
validity for claims
in a reissue
application.)

16
 Case Name Citation Subject Matter Description of
Significance

Scudder, Ex parte 169 USPQ 814 (Bd. App. 1971) (ground for reissue) (Correcting
misjoinder of
inventors in
divisional reissues is
permissible through
reissue.)
Doll, In re 419 F.2d 925 (CCPA 1970) (broadening - diligence (Actual broadening
in filing) of claims may occur
outside the two year
limit, as long as the
reissue application
and oath/declaration
indicating
broadening is filed
within the two year
limit.)
Richman, In re 409 F.2d 269 (CCPA 1969) (recapture doctrine) (Reissue is not
available to
"recapture" subject
matter surrendered
in prosecution to
obtain the original
patent.)
Brenner v. State of Israel 400 F.2d 789 (D.C. Cir. 1968) (basis for reissue) (Reissue is available
for failure to file a
certified copy of
original foreign
application to obtain
foreign priority
when claim was
made in original
patent.)
Jentoft, In re 392 F.2d 633 (CCPA 1968) (terminal disclaimer) (No prohibition
against cancelling
the effect of
terminal disclaimer
erroneously filed
before patent
issued.)
Switzer v. Sockman 333 F.2d 935 (CCPA 1964) (diligence in filing) (Filing a broadening
reissue on the date
of the 2-year
anniversary of
patent grant is
within the 2-year
limit.)

17
 Case Name Citation Subject Matter Description of
Significance

Ruth, In re 278 F.2d 729 (CCPA 1960) (broadening) (An amended or

newly added reissue
claim which
contains any
product or process
that would not have
infringed the patent
is a claim broader
than the original
patent claims.)
Willingham, In re 282 F.2d 353 (CCPA 1960) (recapture doctrine) (Reissue is not
available to
"recapture" subject
matter surrendered
in prosecution to
obtain the original
patent.)
Spencer, In re 273 F.2d 181 (CCPA 1959) (new subject matter) (In copying claims
to provoke an
interference through
reissue, subject
matter of the copied
claims must be
supported by
original disclosure.)
Rohm & Haas Co. v. Roberts 142 F. Supp. 499 (S.W. Va. 1956) (diligence in filing) (Reissue
Chem., Inc. application, non-
broadening, filed
more than 2 years
post grant should
not be rejected for
delay or lack of
diligence.)* Case
reversed on other
grounds.
Lawrence, Ex parte 70 USPQ 326, 1946 C.D. 1 (term extension) (Term of a design
(Comm'r Pat. 1946) patent may not be
extended by
reissue.)

United States Indus. Chem., Inc. 315 U.S. 668 (1942) (new subject matter) (New matter may
v. Carbide and Carbon Chem. exist in the form of
Corp. either an omission
of a feature or of a
step in method, such
are proper grounds
for rejection.)

18
 Case Name Citation Subject Matter Description of
Significance

Bostwick, In re 102 F.2d 886 (CCPA 1939) (basis for reissue) (Reissue error must
be based on
applicant error, and
cannot be based
solely on the Office
failing to either
declare an
interference, or
suggest copying
claims to establish
an interference.)
Guastavino, In re 83 F.2d 913 (CCPA 1936) (basis for reissue) (Reissue error must
be based on
applicant error, and
cannot be based
solely on the Office
failing to either
declare an
interference, or
suggest copying
claims to establish
an interference.)
Altoona Publix Theatres v. 294 U.S. 477 (1935) (terminal disclaimer) (After issuance,
American Tri-Ergon Corp. public policy is
against "...the
restoration to the
patent owner of
something that has
been freely
dedicated to the
public…."
Leggett v. Avery 101 U.S. 256 (1879) (terminal disclaimer) (Issuance triggers
the "principle
against recapturing
something that has
been intentionally
dedicated to the
public"
Fassett 1877 C.D. 32, 11 O.G. 420 (assignee consent) (Reissue application
(Comm'r Pat. 1877) can be filed and
examined, but will
not be allowed or
issued without
consent of all
assignees.)

19
 Case Name Citation Subject Matter Description of
Significance

Wright 1876 C.D. 217, 10 O.G. 587 (assignee consent) (Reissue application
(Comm'r Pat. 1876) can be filed and
examined, but will
not be allowed or
issued without
consent of all
assignees.)

20
 C. Oblon Spivak Reexamination/Reissue
Practice Group
Oblon Spivak’s Reexamination/Reissue Practice Group is led by partner, Stephen G. Kunin who
is the former Deputy Commissioner for Patent Examination Policy at the U.S. Patent and
Trademark Office (USPTO). Mr. Kunin served more than 34 years at the USPTO in various
patent examination and management capacities. While Deputy Commissioner for Patent
Examination Policy, Mr. Kunin had primary responsibility for revising the Rules of Practice
found in 37 CFR, Sections 1 and 3, including the rules applicable to both reexamination and
reissue. Additionally, Mr. Kunin had oversight responsibility for the Manual of Patent
Examining Procedure, including the chapters covering reissue (1400), ex parte reexamination
(2200) and optional inter partes reexamination (2600).

Reexamination/Reissue Practice team leaders, Vincent K. Shier, Scott A. McKeown and W.

Todd Baker, each are partners who have an extensive amount of experience in prosecuting
reissue applications and handling ex parte and inter partes reexamination proceedings for patent
owners and third party requesters. Dr. Shier leads the team responsible for reissues and
reexaminations in the fields of chemistry, biotechnology, biomedicine, and pharmaceuticals. Mr.
McKeown leads the team responsible for electronics, wireless communications, software and
computer-related inventions and business methods. Mr. Baker leads the team responsible for
mechanical technologies, nanotechnology, e-commerce and medical devices.

Oblon Spivak’s Reexamination/Reissue Practice Group handles all aspects of USPTO post
issuance proceedings, including appeals to the USPTO Board of Patent Appeals and
Interferences. Currently, these proceedings include Patent Reissue and Patent Reexamination.

21
Patent Reissue provides the patentee with a mechanism for addressing an error made without any
deceptive intention that is deemed to render a patent wholly or partly inoperative or invalid by 22
reason of a defective specification or drawing, or by reason of the patentee claiming more or less
than the patentee had a right to claim. A Patent Reissue is conducted in a similar manner to the
original patent prosecution proceedings, although claim amendments must be carefully
considered with respect to intervening rights and recapture doctrines. Additionally, claim
broadening is only available if initiated within two years of the original patent issuance.

Ex Parte Reexaminations may also be initiated by the patentee to analyze an issued patent in
view of published prior art that creates a substantial new question of patentability. However, an
Ex Parte Reexamination can also be initiated by third parties to challenge the validity of an
issued patent. Once initiated, the third party may not participate further in the reexamination.

Alternatively, Inter Partes Reexaminations are always initiated by a third party. Although Inter
Partes reexamination is not available to all issued patents, once initiated, the third party may
participate in the reexamination by submitting further comments and argumentation to the
USPTO as the proceeding progresses. Increasingly, Ex Parte or Inter Parte Reexamination is
used as a strategic litigation tool to couple the USPTO’s proceeding on validity with patents
asserted in litigation at a US District Court or the International Trade Commission. The
Reexamination/Reissue Practice Group is strategically positioned to serve its clients who are
either patent owners are third party reexamination requesters.

The emerging popularity of Reexamination stems from two factors, the first is the recent creation
of a Central Reexamination Unit (CRU) within the USPTO. CRU Examiners are grouped into 3
person teams to analyze issues presented in Reexamination. Reexaminations are treated with
special dispatch within the USPTO. Thus, the quality of review has increased based on the CRU
team approach, and the speed of Reexaminations is improved by segregating these issues to the
CRU.

The second factor is the increased willingness of some Federal District Courts to stay a patent
litigation in the face of an initiated reexamination. As such, the firm’s Reexamination/Reissue
Practice Group is often called upon to defend validity, or advocate invalidity of patents that are
subject to high profile litigation disputes.

Looking forward, recent legislation has been proposed to establish a post-grant opposition
proceeding before Administrative Patent Judges of the new USPTO Board of Trials and Appeals.
This proceeding is proposed to embrace validity issues not currently subject to reexamination
review, and to provide limited discovery opportunities. Due to the wide support for this
proceeding, it is anticipated that post-grant opposition will become law to replace and/or
augment reexamination options in the future.

The Reexamination/Reissue Practice Group of Oblon Spivak is staffed by teams of seasoned

attorneys with technical backgrounds necessary for understanding complex multi-disciplinary
technologies and arguing before technical decision makers--senior level Patent Examiners. The
Practice Group also leverages an unparalleled expertise in patent prosecution before the USPTO
in favorably concluding Reexaminations for our clients’ benefit.

22
 D. BIOS

Tel (703) 412-6011

Fax (703) 413-2220
[email protected]

STEPHEN G. KUNIN's practice principally includes serving as the Director of the

Reissue/Reexamination Practice Group; testifying expert witness on patent examination policy,
practice and procedure and providing consultation services to clients on patent law reform,
rulemaking, and strategic approaches to dealing with complex patent prosecution matters. He is
the former Deputy Commissioner for Patent Examination Policy with the U.S. Patent and
Trademark Office. He has more than 38 years of expertise in intellectual property rights
protection and 24 years of organizational management and leadership experience. He was
appointed to his former position in March 2000 and has served in a similar capacity since
November 1994, under the position's prior title, "Deputy Assistant Commissioner for Patent
Policy and Projects." Previously, beginning in July 1989, Mr. Kunin served as Deputy Assistant
Commissioner for Patents. He participated in the establishment of patent policy for the various
Patent Organizations under the Commissioner for Patents, including changes in patent practice,
revision of rules of practice and procedures, establishment of examining priorities and
classification of technological arts, and oversaw the operations of the Office of Patent Legal
Administration, Patent Cooperation Treaty Legal Administration, and the Office of Petitions.
Additionally, in January 1993, Mr. Kunin was designated by the Secretary of Commerce to
perform the functions of the Assistant Commissioner for Patents on an acting basis until a new
Assistant Commissioner for Patents was appointed in 1994.

Mr. Kunin, as a Partner, serves as a patent consultant who advises clients on patent prosecution
and policy matters and prepares infringement and non-infringement opinions. He also serves as
an expert witness on patent law, policy, practice and procedure.

Mr. Kunin also now serves as the Intellectual Property Program Director at the George Mason
School of Law where he is an adjunct professor who teaches patent law and intellectual property
law classes.

Mr. Kunin graduated with honors from Washington University in May of 1970 with a B.S.
degree in Electrical Engineering. He attended the National Law Center of the George
Washington University, receiving his Juris Doctor degree in law with honors in May of 1975. He
is a graduate of the Harvard University Kennedy School of Government SMG Program.

23
 Tel (703) 412-6297
Fax (703) 413-2220
[email protected]

SCOTT A. MCKEOWN is a partner in the firm's Electrical/Mechanical Practice Group

focusing on client counseling, litigation and patent prosecution. Mr. Mckeown is also a team
leader of the Reissue and Reexamination Practice Group, handling technologies including
computer software, wireless telecommunication protocols and network architectures, e-
commerce applications, analog and digital signal processing, and consumer electronics.

A significant portion of Mr. Mckeown's work involves post grant proceedings, including patent
Reissue practice, Ex Parte, and Inter Partes patent reexamination. Mr. Mckeown has worked
extensively in the patent reexamination area as the USPTO's Central Reexamination Unit has
become a more common alternative to traditional litigation based validity challenges. In this
capacity, he has worked and counseled Patent Holder's on the strategic benefits of patent
reexamination, as well as third party requestors.

In the telecommunication arts, Mr. McKeown has worked extensively with IP routing and
signaling protocols, ATM and wireless communication protocols. He has a broad breadth of
experience with OFDM systems, CDMA, TDMA, FSK, QAM and the 802.11 family of
protocols.

In the consumer electronic arts, Mr. McKeown's practice has a strong focus in audio and video
processing and display technologies, discs, signal compression and encoding schemes, recording
medium formatting and construction, and many other related technologies. In this regard, Mr.
McKeown works directly with standard setting organizations and patent pools and has
successfully advocated the inclusion of his client's IP into patent pools. Additionally, he has
counseled open source communities on third party IPR issues and standard setting.

Mr. McKeown received his Law degree from Temple University School of Law. He received his
Bachelor of Science degree in Electrical Engineering from Temple University with honors.

Mr. McKeown is admitted to the Pennsylvania and Virginia State Bars and is registered to
practice before the U. S. Patent and Trademark Office. He is a member of the Institute of
Electrical and Electronics Engineers (IEEE) and the American Intellectual Property Law
Association (AIPLA).

24
 Tel (703) 413-3000
Fax (703) 413-2220
[email protected]

W. TODD BAKER is a patent attorney in the firm's Reissue/Reexamination, Interference, and

Electrical/Mechanical Practice Groups.

As a team leader of the Reissue and Reexamination Practice Group, a significant portion of Mr.
Baker’s practice involves post grant proceedings handled by the USPTO’s Central
Reexamination Unit including ex parte and inter partes reexaminations.

Mr. Baker is co-chair of the firm’s Interference Practice Group. His practice includes advising
clients on patent interference prosecution matters before the USPTO’s Board of Patent Appeals
and Interferences. Interference practice involves issues of priority, patentability, derivation, and
inventorship. Mr. Baker’s extensive experience with both reexaminations and interferences
makes him particularly well suited to advise clients on alternatives to traditional litigation based
validity challenges.

In addition to his post grant practice, Mr. Baker prepares and prosecutes patent applications in
diversified electrical and mechanical technologies. He is a former patent examiner with the
USPTO, where he specialized in multiplex communications.

Mr. Baker is currently the chair of the USPTO Inter Partes Patent Proceedings Committee
(formerly known as the Interference Committee) of the American Intellectual Property Law
Association. The Interference Committee was renamed and its mission revised to reflect a
broadened scope encompassing interferences as well as inter partes reexamination.

Mr. Baker received his Law degree from the University of Maryland School of Law in 1996 and
received his Bachelor of Science degree in Electrical Engineering from the University of
Virginia in 1993. Mr. Baker is admitted to the Maryland State Bar and is registered to practice
before the USPTO.

25
 Tel (703) 412-6461
Fax (703) 413-2220
[email protected]

VINCENT K. SHIER is a partner in the firm's Chemical & Biotechnology Practice Group. Dr.
Shier is also a team leader of the Reissue and Reexamination Practice Group. His areas of
technical expertise and practice include: biochemistry, genetics, molecular biology, and
pharmaceuticals.

A significant portion of Dr. Shier’s work involves post grant proceedings, including Reissue
practice, and Ex Parte reexamination. Dr. Shier has worked extensively in the reexamination area
on behalf of Patent Holders and Third Party Challengers as the USPTO's Central Reexamination
Unit has become a viable alternative to traditional litigation based validity challenges.
Additionally, he has worked and counseled Patent Holder's on the strategic benefits of self-
initiated reexamination and third-party requests.

As a prosecuting attorney, Dr. Shier’s work involves preparing and prosecuting patent
applications in diversified technologies within the chemical and biotechnology disciplines. He
has also worked extensively in the patent prosecution highway and accelerated examination
programs before the USPTO. Another aspect of Dr. Shier’s practice entails client counseling and
the development of patent portfolio management strategies.

Dr. Shier received his J.D. from the George Washington University Law School. He received his
Ph.D. in Biological Chemistry from the Pennsylvania State University. His thesis research, under
the direction of Professor Stephen J. Benkovic (member of the National Academy of Sciences),
focused on the characterization and inhibition of an essential, non-restriction/modification
adenine DNA methyltransferase from Caulobacter crescentus. He received his Bachelor of Arts
degree from the University of Rochester, with a double major in biology and chemistry.

Dr. Shier is actively involved with the American Bar Association's Section of Intellectual
Property Law (ABA IPL), where he is currently serving on Patent Inter Partes Proceedings
Committee (Committee 104). He is also actively involved with the Intellectual Property Owners
Association (IPO), where he is currently serving on the Patent Office Practice (U.S.) Committee.
Dr. Shier is also a member of the American Intellectual Property Law Association (AIPLA). Dr.
Shier is admitted to the Virginia State Bar and is registered to practice before the U.S. Patent and
Trademark Office.

26