Strategic Uses and Considerations for Reissue Applications (Part 2 of 3)

Curtis R. Powell, PhD

Aug 5, 2025 3 min read

Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300 of them being reissue applications. As such, it is not uncommon to speak to a US patent practitioner or patent owner that has never filed a reissue application. This three-part series will provide an overview of strategic uses and considerations for reissue applications to help you identify when pursuing a reissue application may be advantageous.

Part 2: Strategic Uses of Reissue Applications – Adjusting Claim Scope

As mentioned in part one, many uses of reissue applications relate to adjustments to issued claim scope, which can also provide adequate ground for filing a reissue application. Reissue applications are commonly filed to make these types of adjustments in anticipation for an enforcement proceeding (e.g., to strengthen the validity of issued claims and/or to strengthen an infringement position). However, reissue applications can also be filed to adjust claim scope even after claims have been found invalid (e.g., before a court or before the USPTO), although there are time constraints to do so. For example, the Patent Trial and Appeal Board (PTAB) has expressly stated that a reissue application may be filed at any time before issuance of a USPTO certificate canceling all patent claims or a Federal Circuit mandate finding all claims invalid.

There are other instances —beyond the common uses described above —when the filing of a reissue application to adjust claim scope can be beneficial. For example, a reissue application could be used to:

Update an Orange Book-listed patent to include a claim that recites the presence of an active drug. The Federal Circuit has held that, in order for a patent to be properly listed in the Orange Book, it must claim the active ingredient of an approved drug. See Teva Branded Pharm. Prods. R&D, Inc. v. Amneal Pharms. of New York, LLC, 124 F.4th 898, 917 (Fed. Cir. 2024). The Federal Circuit has made clear that patents that only claim the device components of a product approved in a drug application do not meet this requirement.
Avail of patent term adjustment (PTA) of an issued patent. Typically, continuation applications are filed to pursue new subject matter. However, reissue patents carry the unexpired term of their corresponding original patents. See 35 U.S.C. § 251. As such, if an issued patent received a substantial amount of PTA, you may consider pursuing the new subject matter in a reissue application as opposed to pursuing the subject matter in a continuation application. Selecting a first filed, first issued patent would have the additional benefit of avoiding nonstatutory double patenting issues over later filed, later issued patents in the same family. See Allergan USA, Inc. v. MSN Lab'ys Priv. Ltd., 111 F.4th 1358 (Fed. Cir. 2024).
Reduce a nonstatutory double patenting footprint. The common practice of filing serial continuation applications for the full 20-year statutory term can result in a large nonstatutory double patenting footprint. Filing a reissue application instead of a continuation application can help reduce the size of this footprint. One could also consider filing a reissue application to remove potential reference claims (e.g., dependent claims reciting narrow species) in an attempt to avoid a potential double patenting rejection in an application that you anticipate filing (e.g., to pursue claims that encompass species recited in the issued dependent claims).

The third and final article in this series will cover additional strategic uses of reissue applications, limitations of reissue applications, and additional strategic considerations. It will wrap up with a conclusion.