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

Curtis R. Powell, PhD

Aug 11, 2025 5 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 has provided an overview of strategic uses and considerations for reissue applications to help you identify when pursuing a reissue application may be advantageous.

Part 3: Additional Strategic Uses, Limitations, and Considerations

Additional Strategic Uses of Reissue Applications

As mentioned in parts one and two, some strategic uses of reissue applications relate to adjustments which do not alone provide adequate grounds for reissue. For example, a reissue application could be used to:

Revive prosecution of a patent family without a pending application. There may be times when you are interested in pursuing unclaimed subject matter disclosed in an issued patent, but no related application is pending. In such an instance, you may be able to pursue the subject matter in a broadening reissue application. Moreover, once a broadening reissue application has been filed, serial (broadening) continuation reissue applications can be filed (claiming priority to the initial reissue application) to pursue additional subject matter.
Prosecute claims before a new examiner. Reissue applications can present an opportunity to prosecute claims before a new examiner. If you are facing challenges with an examiner during prosecution of an application, and there is a related issued patent in the family, you could consider filing a reissue application to pursue the claims. Reissue applications are examined by senior patent examiners and supervisory patent examiners in the Central Reexamination Unit (CRU) of the USPTO.
Correct an improper examination of a patent application. Some patents have issued from transition applications that were mistakenly examined under the pre-AIA. A reissue application can be filed to address this defect by requesting examination of the reissue application under the AIA (as opposed to the pre-AIA).

Limitations of Reissue Applications

There are various limitations on how reissue applications can be used.

First, reissue applications cannot be used to cure all defects in a patent (even when an error providing ground for a reissue application is present) Courts have reasoned that reissue applications should be used to correct “inadvertence, accident, or mistake.” See In re Weiler, 229 USPQ 673 (Fed. Cir. 1986). In the absence of evidence of inadvertence, accident, or mistake, an “error” may be designated a deliberate “choice” that is later regretted. Examples of errors that cannot be corrected via a reissue application include:

The failure to timely file a divisional application. A failure to timely file a divisional application to pursue non-elected subject matter is not correctable by reissue. See In re Watkinson, 900 F.2d 230 (Fed. Cir. 1990).
The failure to designate an application as a divisional application. A failure to designate an application as a divisional application prior to issuance is not correctable by reissue. See D. Searle LLC v. Lupin Pharm., Inc., 790 F.3d 1349, 1355 (Fed. Cir. 2015).
The filing of an erroneous terminal disclaimer. The filing of an erroneous terminal disclaimer (e.g., over a reference patent that is not commonly owned by the owners of the patent at issue) is not correctable by reissue. See In re Dinsmore, 757 F.3d 1343, (Fed. Cir. 2014); see also SIPCO, LLC v. Jasco Prods. Co., LLC, 736 F. Supp. 3d 1109, 1115 (W.D. Okla. 2024).

In addition, reissue applications are limited by the following:

Two-year timing limitation. A (first) broadening reissue application must be filed within two-years of a patent’s issuance. See 35 U.S.C. § 251. A reissue application is broadening if it includes a claim that encompasses any subject matter not encompassed by the original patent. As noted above, broadening reissue applications can be filed after the two-year period, if a parent reissue application was a broadening reissue application which was filed within two years from issuance.
The rule against recapture provides that a reissue application cannot be used to “recapture” subject matter that was surrendered during prosecution of the original claims. See In re McDonald, 43 F.4th 1340, 1345 (Fed. Cir. 2022); see also Ball Corp. v. United States, 729 F.2d 1429, 143).
Orita doctrine. The “Orita doctrine” precludes the use of a reissue application to pursue subject matter that was not elected (a non-elected invention or a non-elected species) during prosecution of the application giving rise to the original patent. See In re Orita, 550 F.2d 1277, 1280 (CCPA 1977).
The “original patent” requirement. The “original patent” requirement finds its roots in 35 U.S.C. § 251 and has been likened to a heightened written description requirement. See Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014).

Additional Strategic Considerations

In addition to the limitations highlighted above, the following are additional items to consider before pursuing a reissue application.

Third-Party Protests. Third-party protests are similar to third-party pre-issuance submissions; however, unlike third-party pre-issuance submissions (which have a very limited time window for submission), third-party protest can be filed at any time prior to allowance of a reissue application. See P.E.P. § 1901.02.
Intervening Rights. Intervening rights protect the interests of those who begin infringing activity that is newly covered by a reissue patent, before the reissue patent is granted. See 35 U.S. Code § 252.

Conclusion

Although utilized infrequently, reissue applications are sometimes the best tool available to achieve your goals. Before pursuing a reissue application, however, it is important to consider the limitations of reissue applications, as well potential third-party protests and intervening rights, to help steer your strategy for and the value of the reissue application.