How to Avoid the Patent Reissue Continuation Trap

A reissue continuation is a continuation application based off a reissue application and can be used to pursue broader claims after the two-year broadening reissue window has closed.

However, reissue continuations have special filing requirements that are different from ordinary continuations. This creates a ‘trap’ for patent practitioners that can makes the claims of the reissue continuation unpatentable.

Reissue Applications and Continuation Applications

A reissue application provides a mechanism to fix mistakes in an issued patent, including claiming less than the applicant had the right to claim. To broaden the claims, a reissue application must be filed on or before the two-year anniversary of the patent’s issue date.

However, a reissue continuation application can be based off a broadening reissue application, and broader claims can be pursued in the reissue continuation even though the actual filing date of the reissue continuation is after the two-year anniversary of the patent’s issue date.

Further, reissue continuations can be filed ad seriatim, each claiming priority back to the reissue application filed within the two-year broadening reissue window. So, reissue continuations can be an important strategic tool for the patentee to obtain claims covering competitors’ current offerings and design-arounds, as well as technologies developed after the original patent issued.

The Reissue Continuation Trap

When a patent application is allowed, a common practice is to file a continuation application that is missing parts to give the applicant more time to consider whether they want to pursue the continuation.

This typically involves filing a copy of the parent application without filing new claims, the filing fee, or a copy of the declaration from the parent application. However, using this common practice to file a reissue continuation is an uncorrectable error that will likely result in any claims pursued in the reissue continuation being unpatentable if the original patent qualifies as prior art.

The reason for this is that a continuation reissue application is a reissue application and must present itself as such. If the US Patent and Trademark Office does not recognize the filing as a reissue application, it will treat the application as an ordinary continuation of the parent reissue continuation—referred to as a Bauman-type continuation.

This difference is significant, as a Bauman-type continuation is only entitled to the filing date of the parent reissue application—not to the filing date of the underlying issued patent. So, if the publication of the original patent application or the publication of the issued patent occurred more than one year before the filing date of the parent reissue application, such publication would anticipate any claims of the putative reissue continuation.

Per MPEP § 1451, the USPTO looks for the presence of the following upon the application’s filing in deciding that an application is a reissue continuation instead of a Bauman-type continuation:

• An oath/declaration per 37 C.F.R. § 1.175, a specification and claims in the proper double column reissue format per 37 C.F.R. § 1.173 (not just a copy of the originally-filed specification and drawings)
• Claim amendments in proper format per 37 C.F.R. § 1.173, i.e., amending the claims vis-à-vis the claims of the patent seeking to be reissued
• A statement of assignee ownership and consent per 37 C.F.R. § 3.73, a correct transmittal letter identifying the application as a reissue filing per 35 U.S.C. § 251
• An identification of the application as a reissue continuation of the parent reissue application, a continuation of the parent reissue application, and an application to reissue the patent, or equivalent language.

The above items would not be present in the common missing parts scenario discussed above, so such a filing would not be recognized as a reissue continuation and instead, would be recognized as a Bauman-type continuation with any claims presented therein likely anticipated by the earlier publication of the underlying patent/patent application.

While the applicant may file a petition under 37 CFR § 1.182 to attempt to convert a Bauman-type continuation into a reissue continuation, evidence supporting the petition must have been present upon filing of the application. So, any evidence of intent external to the filed application—e.g., a client email or a docketing entry indicating intent to file a reissue continuation—is irrelevant.

Takeaways

To avoid the reissue continuation trap, a patent practitioner needs to recognize that a reissue continuation is more reissue application than continuation application and file the conforming application papers. The conventional missing parts practice should be avoided, as it creates an uncorrectable error that will likely render any claims in the reissue continuation unpatentable if the original patent qualifies as prior art.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Author Information

Joseph F. Hetz is a partner at Crowell & Moring and co-chair of the firm’s patent prosecution practice group.

Matthew David is an associate at Crowell & Moring in the firm’s intellectual property group.

Wei-Chih Hsu is an associate at Crowell & Moring in the firm’s intellectual property group.

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