How to Withdraw & Reissue a Patent

If an inventor remains close to the patent process, he may have a disquieting feeling after his patent has issued. The inventor may not have appreciated the extent to which the patent claims were amended during the course of patent prosecution, and consequently, he may be disappointed with how narrow the allowed claims really are. Likewise, the inventor may have had ideas for claims after the application was filed, but never pursued these claims while the patent was being prosecuted.

Patent reissue provides a remedy to these situations. Long thought of as merely a way to amend a patent after issuance, this little-used strategy gives the inventor the opportunity to address defects in the adequacy of their claims.

Things You'll Need

• Issued patent
• Patent agent or attorney (optional)
• Computer with Internet connection

Instructions

1. Set a time for reviewing issued patents. Reviewing patents that have already issued should be a routine part of a company's patent strategy. This is contrary to most contemporary practices because many companies limit the use of their patents to licensing and litigation.

   Ideally, a company should begin to review its issued patents about a year and a half after they are issued. This provides sufficient lead time for your attorney to make changes (if necessary). Timing is critical because, within certain limitations, the issued patent can be reissued and the claims can be broadened as long as the inventor acts within two years of the issue date.

   By making patent review a regular part of your intellectual property strategy, you can consider how to gain competitive advantage by expanding your existing patent portfolio.

2. Scrutinize your claims in light of both present business considerations, and the patent prosecution history. Consider whether current business conditions have changed in such a way that adding new claims provides some strategic advantage. Consider whether there were claims that should have been added when the patent application was first submitted to the U.S. Patent and Trademark Office (PTO). While you cannot add new subject matter to the specification, new claims can be added, regardless of whether they broaden your original claims, as long as they are presented to the PTO within two years. For example, a specification might describe both an apparatus and a method, but the preamble of the claims only referenced the apparatus. In this instance, new method claims could be added.

   Carefully consider which claims were amended because Rule 1412.02 of the Manual of Patent Examining Procedure (MPEP) forbids reissuing claims that are in an "area directed to amendment/argument made to overcome art rejection in original prosecution." In short, the patent office will not reconsider claims relating to subject matter that they have already rejected.

   Draft new claims that leverage these unclaimed areas. Unless you have experience, a patent agent or attorney can be very helpful in claim drafting.

3. File your patent (complete with the new claims) with the PTO. Filing via the PTO's Electronic File System (EFS) is highly advisable because you will have an electronic record of all transactions with the PTO. Reissue utility and reissue design patents can be filed using this system. EFS can be accessed at the PTO's website.

Tips & Warnings

• Make sure that all the inventors will sign a new oath. This oath is identical to the one they originally signed. A new oath is required because the claims have changed.

References

• Stoel Rives, Attorneys at Law: Ongoing Patent Strategies
• MPEP: Section 1412.02
• PTO: EFS FAQs
• MPEP: Section 1412.03