MPEP § 1402 — MPEP § 1402
Current through: 2022-07-01

1402-Grounds for Filing 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1402 
 

 
 
 
 
 
 1402 Grounds for Filing [R-10.2019]

 A reissue application is filed to correct an error in the patent, 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. 
 

 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.
 The present section provides a discussion of what may be considered an error in the patent
 upon which to base a reissue application.
 

 In accordance with 35 U.S.C. 251 , the error upon which a
 reissue is based must be one which causes the patent to be “deemed wholly or partly
 inoperative or invalid, by reason of a defective specification or drawing, or by reason of
 the patentee claiming more or less than he had a right to claim in the patent.” Thus, an
 error under 35 U.S.C.
 251 has not been presented where the correction to the patent is one of
 spelling, or grammar, or a typographical, editorial or clerical error which does not cause
 the patent to be deemed wholly or partly inoperative or invalid for the reasons specified
 in 35 U.S.C.
 251 . These corrections to a patent do not provide a basis for reissue
 (although these corrections may also be included in a reissue application, where a
 35 U.S.C.
 251 error is already present), and may be made via a certificate of
 correction; see MPEP §
 1481 .
 

 The most common bases for filing a reissue application are:

 
 (A) the 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.
 

 I. ERROR BASED ON SCOPE OF CLAIMS The reissue error may be directed solely to the failure
 to previously present narrower claims, which are being added by reissue. In re
 Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011) provides
 that “the omission of a narrower claim from a patent can render a patent partly
 inoperative by failing to protect the disclosed invention to the full extent allowed by
 law.” This permits submission of additional claims that are narrower in scope than the
 preexisting patent claims, without any narrowing of the preexisting patent claims. For
 example, a reissue applicant can retain the broad independent claims of the patent while
 adding only new dependent claims.
 

 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. Thus,
 such applicant’s error is not correctable by reissue of the original patent under
 35 U.S.C.
 251 . See MPEP § 1412.01 .
 

 An attorney’s failure to appreciate the full scope of the invention was
 held to be an error correctable through reissue in the decision of In re
 Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). In Medrad,
 Inc. v. Tyco Healthcare Group LP, 466 F.3d 1047, 80 USPQ2d 1526 (Fed. Cir.
 2006), the court rejected an argument that a 35 U.S.C. 251 
 error was limited to defects in the specification, drawings, and claims. Instead, the
 court explained that the correctable error could be “any error that causes a patentee to
 claim more or less than he had a right to claim.” 466 F.3d at 1052, 80 USPQ2d at 1529.
 In Medrad, the specific error was the failure to submit a
 supplemental reissue declaration during prosecution of a prior reissue patent. This
 error resulted in invalid claims, which meant the patentee claimed less than the
 patentee had a right to claim in the prior reissue patent.
 

 II. INVENTORSHIP ERROR The correction of misjoinder of inventors in reissues has
 been held to be a ground for reissue. See Ex parte Scudder, 169 USPQ
 814 (Bd. App. 1971). The Board of Appeals held in Ex parte Scudder ,
 169 USPQ at 815, that 35 U.S.C. 251 authorizes reissue applications to correct
 misjoinder of inventors where 35 U.S.C. 256 is inadequate.
 

 If the only change being made in the patent is correction of the
 inventorship, this can be accomplished by filing a request for a certificate of
 correction under the provisions of 35 U.S.C. 256 and 37 CFR 1.324 . See
 MPEP §
 1412.04 and § 1481 . A certificate of correction
 will be issued if all parties are in agreement and the inventorship issue is not
 contested. However, if applicant chooses to file a reissue application to correct the
 inventorship (as opposed to choosing the certificate of correction route), applicant may
 do so because misjoinder of inventors is an error that is correctable by reissue under
 35 U.S.C.
 251 .
 

 III. ERROR RELATED TO PRIORITY TO FOREIGN APPLICATION A reissue was granted in Brenner v. State of Israel, 
 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to
 file a certified copy of the original foreign application to obtain the right of foreign
 priority under 35
 U.S.C. 119(a) - (d) before the patent was
 granted.
 

 In Brenner, the claim for priority had been made in
 the prosecution of the original patent, and it was only necessary to submit a certified
 copy of the priority document in the reissue application to perfect priority. Reissue is
 also available to correct the 
 "error"
 
 
 in failing to take any steps to obtain the right of
 foreign priority under 35 U.S.C. 119(a) - (d) before the patent was granted.
 See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA
 1975) (“a patent may be reissued for the purpose of establishing a claim to priority
 which was not asserted, or which was not perfected during the prosecution of the
 original application”). In view of the changes to 37 CFR 1.55 
 that became effective May 13, 2015, the reissue applicant must also file a petition
 under 37 CFR
 1.55(f) or (g) , as appropriate, including a showing of good and
 sufficient cause for the delay in filing the certified copy. In a situation where it is
 necessary to make a priority claim in a reissue application that was not made in the
 original patent, the reissue applicant must file a petition for an unintentionally
 delayed priority claim under 37 CFR 1.55(e) . See
 MPEP §
 214 et seq. 

 Although reissue is an acceptable manner for an
 applicant to make or perfect a claim for foreign priority, in certain situations, the
 patent may also be corrected via a certificate of correction under 35 U.S.C. 255 and
 37 CFR
 1.323 , accompanied by a petition under 37 CFR 1.55(f) or
 (g) . See MPEP § 216.01 . Where the priority claim
 required under 37
 CFR 1.55 was timely filed in the application but was not included
 on the patent because the requirement under 37 CFR 1.55 for a certified copy was
 not satisfied, the patent may be corrected to include the priority claim via a
 certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 ,
 accompanied by a grantable petition under 37 CFR 1.55(f) or (g) , as
 appropriate, including a showing of good and sufficient cause for the delay in filing
 the certified copy. Furthermore, where a priority claim was not made in the original
 patent and the addition of the priority claim would not require further examination
 (e.g., grant of the petition would not cause the patent to be subject to a different
 statutory framework), the patent may be corrected to include the priority claim via a
 certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 ,
 accompanied by a grantable petition under 37 CFR 1.55(e) to accept an
 unintentionally delayed priority claim. 
 

 Regardless of whether a reissue application or a request
 for certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 is
 being filed along with a petition under 37 CFR 1.55(e), (f), or (g) , the
 petition that would need to be filed and the petition requirements would be the same.
 Therefore, unless there is a need to file a reissue application, patentee should
 consider making such correction via a request for certificate of correction. See
 MPEP §
 216.01 . It is noted that a petition under 37 CFR 1.55(f) or
 (g) is not necessary when the certified copy is being submitted
 with a petition under 37 CFR 1.55(e) . Similarly, a
 petition under 37 CFR 1.55(e) is not necessary when
 the certified copy is being submitted with a petition under 37 CFR 1.55(f) or
 (g) .
 

 IV. ERROR IN BENEFIT CLAIM TO DOMESTIC APPLICATION Section 201(c)(1)(B)(i)(II) of the Patent Law Treaties Implementation
 Act of 2012 (PLTIA), Public Law 112-211, amended 35 U.S.C. 119(e) by replacing
 “payment of a surcharge” with “payment of the fee specified in section 41(a)(7)” and
 deleting “during the pendency of the application.” Specifically, the deletion of “during
 the pendency of the application” permits the acceptance of unintentionally delayed
 benefit claims to a provisional application after the patent was granted in a similar
 manner as provided for priority claims under 35 U.S.C. 119(a)-(d) and benefit
 claims under 35
 U.S.C. 120 . To implement this provision of the PLTIA,
 37 CFR
 1.78(c) was amended in the final rule “Changes to Implement the
 Patent Law Treaty”, 78 FR 62368 (October 21, 2013), 1397 OG 42 (December 3, 2013).
 37 CFR
 1.78(c) was amended to provide that if the reference required by
 35 U.S.C.
 119(e) and 37 CFR 1.78(a)(3) is presented in an
 application (either a nonprovisional application or an international application
 designating the United States) after the time period provided by 37 CFR
 1.78(a)(4) , including after the pendency of the application (e.g.,
 after patent grant), the claim under 35 U.S.C. 119(e) for the benefit of
 a prior-filed provisional application may be accepted if the reference identifying the
 prior-filed application by provisional application number was unintentionally delayed.
 37 CFR
 1.78(c) further provides that a petition to accept an
 unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of
 a prior-filed provisional application must be accompanied by: (1) the reference required
 by 35 U.S.C.
 119(e) and 37 CFR 1.78(a)(3) to the prior-filed
 provisional application, unless previously submitted; (2) the petition fee as set forth
 in 37 CFR
 1.17(m) ; and (3) a statement that the entire delay between the
 date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the
 benefit claim was filed was unintentional. 37 CFR 1.78(c) also provides that
 the Director may require additional information where there is a question whether the
 delay was unintentional.
 

 See MPEP
 § 1481.03 for the procedure to seek to use a certificate of
 correction to add a benefit claim to the filing date of a prior-filed application.
 

 Correction of failure to adequately claim a benefit under
 35 U.S.C.
 120 in an earlier-filed copending U.S. patent application was held
 to be a proper ground for reissue. Sampson v. Comm’r Pat., 195 USPQ
 136, 137 (D.D.C. 1976). Similarly, correction of the failure to adequately claim a
 benefit under 35
 U.S.C. 119(e) in an earlier-filed copending U.S. patent
 application is considered a proper ground for reissue. If adding a new benefit claim in
 a reissue application, the reissue applicant must file a petition for an unintentionally
 delayed priority claim under 37 CFR 1.78(c) (for claiming the
 benefit under 35
 U.S.C. 119(e) ) or under 37 CFR
 1.78(e) (for claiming the benefit under 35 U.S.C. 120 ,
 121 , 365(c) or 386(c) ).
 See MPEP §
 211.04 . In addition, if an applicant fails to make a claim for
 benefit of a prior-filed utility or plant reissue application in a later-filed reissue
 application within the time period set forth in 37 CFR 1.78 (e.g., timely submit an
 ADS with the specific reference identifying the later-filed reissue application is a
 continuation of the prior-filed reissue application), then a petition for an
 unintentionally delayed benefit claim under 37 CFR 1.78(e) along with the
 petition fee set forth in 37 CFR 1.17(m) would be required.
 For treatment of an error involving disclaimer of a benefit claim under
 35 U.S.C.
 120 , see MPEP § 1405 . 
 

 Note that a patentee cannot obtain the safe harbor
 protection of 35
 U.S.C. 121 against nonstatutory double patenting by amending a
 patent that issued from a continuation-in-part application to recite only subject matter
 disclosed in the parent application and changing the relationship to a divisional of the
 parent application. G.D. Searle LLC v. Lupin Pharm., Inc., 790 F.3d
 1349, 1355, 115 USPQ2d 1326, 1330 (Fed. Cir. 2015)(“Simply deleting that new matter from
 the reissue patent does not retroactively alter the nature of the [CIP]
 application.”).
 

 V. ERROR IN DRAWING A reissue may be based on a drawing correction that is substantive in
 nature, because such a correction qualifies as correcting an error under
 35 U.S.C.
 251 that may properly be deemed to render the patent wholly or
 partly inoperative. A reissue application cannot be based on a non-substantive drawing
 change, such as a reference numeral correction or addition, the addition of shading, or
 even the addition of an additional figure merely to clarify the disclosure.
 Non-substantive drawing changes may, however, be included in a reissue application that
 corrects at least one substantive error under 35 U.S.C. 251 .
 

 VI. ERROR IN FILING TERMINAL DISCLAIMER In In re Dinsmore, 757 F.3d 1343, 111
 USPQ2d 1229 (Fed. Cir. 2014), the Federal Circuit held that the filing of a terminal
 disclaimer to obviate a double patenting rejection over a prior patent, when the prior
 patent and the patent sought to be reissued were never commonly owned, was not an error
 within the meaning of the reissue statute. In rejecting applicants' argument, the
 Dinsmore court noted that the applicants had not shown a mistaken
 belief that the two patents at issue were commonly owned, and stated that the applicants
 were ultimately seeking to revise a choice they made, not to remedy the result of a
 mistaken belief.
 

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 1400.01-Introduction 

 1401-Reissue 

 1402-Grounds for Filing 

 1403-Diligence in Filing 

 1404-Submission of Papers Where Reissue Patent Is in Litigation 

 1405-Reissue and Patent Term 

 1406-Citation and Consideration of References Cited in Original Patent 

 1407-1409-[Reserved] 

 1410-Content of Reissue Application 
 1410.01-Reissue Applicant and Inventor's Oath or Declaration 

 1410.02-Assignee Consent to the Reissue 

 
 

 1411-Form of Specification 
 1411.01-Certificate of Correction or Disclaimer in Original Patent 

 1411.02-New Matter 

 
 

 1412-Content of Claims 
 1412.01-Reissue Claims Must Be for Same General Invention 

 1412.02-Recapture of Canceled Subject Matter 

 1412.03-Broadening Reissue Claims 

 1412.04-Correction of Inventorship By Reissue 

 1412.05-Correction of Inventorship in a Broadening Reissue Application 

 
 

 1413-Drawings 

 1414-Content of Reissue Oath/Declaration 
 1414.01-Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012 

 1414.02-Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012 

 1414.03-Supplemental Reissue Oath/Declaration 

 
 

 1415-Reissue Application and Issue Fees 
 1415.01-Maintenance Fees on the Original Patent 

 
 

 1416-No Physical Surrender of Original Patent 

 1417-Claim for Priority Under 35 U.S.C. 119(a)-(d) 

 1418-Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability 

 1419-1429-[Reserved] 

 1430-Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette 

 1431-1439-[Reserved] 

 1440-Examination of Reissue Application 

 1441-Two-Month Delay Period 
 1441.01-Protest and Pre-issuance Submission in Reissue Applications 

 
 

 1442-Special Status 
 1442.01-Litigation-Related or PTAB Trial-Related Reissues 

 1442.02-Concurrent Litigation or Trial Before the Patent Trial and Appeal Board 

 1442.03-Litigation Stayed 

 1442.04-Litigation Involving Patent 

 1442.05-Court Ordered Filing of Reissue Application 

 
 

 1443-Initial Examiner Review 

 1444-Review of Reissue Oath/Declaration 

 1445-Reissue Application Examined in Same Manner as Original Application 

 1446-1447-[Reserved] 

 1448-Fraud, Inequitable Conduct, or Duty of Disclosure Issues 

 1449-Protest Filed in Reissue Where Patent Is in Interference or Contested Case 
 1449.01-Concurrent Office Proceedings 

 1449.02-Interference in Reissue 

 1449.03-Reissue Application in Derivation Proceeding 

 
 

 1450-Restriction and Election of Species Made in Reissue Application 

 1451-Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending 

 1452-Request for Continued Examination of Reissue Application 

 1453-Amendments to Reissue Applications 

 1454-Appeal Brief 

 1455-Allowance and Issue 

 1456-Reissue Review 

 1457-Design Reissue Applications and Patents 

 1458-1459-[Reserved] 

 1460-Effect of Reissue 

 1461-1469-[Reserved] 

 1470-Public Access to Reissue Applications 

 1471-1479-[Reserved] 

 1480-Certificates of Correction — Office Mistake 
 1480.01-Expedited Issuance of Certificates of Correction - Error Attributable to Office 

 
 

 1481-Certificates of Correction - Applicant’s Mistake 
 1481.01-Correction of Assignees’ Names 

 1481.02-Correction of Named Inventor 

 1481.03-Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits 

 
 

 1482-1484-[Reserved] 

 1485-Handling of Request for Certificates of Correction 

 1486-1489-[Reserved] 

 1490-Disclaimers 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:34