Availability Of Reissue After An Invalidity Determination

A recent law review article discusses reissue as a potential cure for patentees who have had their claims invalidated by a court or the Patent Trial and Appeals Board (PTAB).¹

Under 35 U.S.C. § 251, reissue is available when "any patent is, through error, 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."

The idea is that drafting overbroad claims may be "error" that can be afforded relief in the form of reissue under § 251 even after the patent has been held invalid. The author of the article points out that (1) nothing in § 251 suggests reissue should be unavailable following a court or PTAB decision invalidating patent claims, (2) no current law expressly forecloses the option of reissue after invalidation, and (3) some favorable – though very dated – case law remains in effect supporting reissue after invalidation.