35 U.S.C. § 251

Reissue of defective patents

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(a)In General.—Whenever 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 Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.(b)Multiple Reissued Patents.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.(c)Applicability of This Title.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.(d)Reissue Patent Enlarging Scope of Claims.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.(July 19, 1952, ch. 950, 66 Stat. 808; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, §§ 4(b)(2), 20(d), Sept. 16, 2011, 125 Stat. 296, 333.)Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., § 64 (R.S. 4916, amended May 24, 1928, ch. 730, 45 Stat. 732.)

The sentences of the corresponding section of existing statute are rearranged and divided into two sections with some changes in language. The clause at the end of the present statute is omitted as obsolete.

The third paragraph incorporates by reference the requirements of other applications, and adds a new provision relating to application for reissue being made in certain cases by the assignee.

A two year period of limitation on applying for broadened reissues is added, codifying the present rule of decision with a fixed period.

Editorial NotesAmendments

2011—Pub. L. 112–29, § 20(d), designated first to fourth pars. as subsecs. (a) to (d), respectively, inserted headings, and, in subsec. (a), struck out “without any deceptive intention” after “error”.

Pub. L. 112–29, § 4(b)(2), in third par., inserted “or the application for the original patent was filed by the assignee of the entire interest” after “claims of the original patent”.

2002—Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113. See 1999 Amendment note below.

1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted “Director” for “Commissioner” in first and second pars.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by section 4(b)(2) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent application that is filed on or after that effective date, see section 4(e) of Pub. L. 112–29, set out as a note under section 111 of this title.

Amendment by section 20(d) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Notes of Decisions

Cited in 388 cases (30 in the last 5 years), 1953–2026 · leading case: AstraZeneca UK Ltd. v. Aurobindo Pharma Ltd., 703 F.3d 511 (Fed. Cir. 2012).

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AstraZeneca UK Ltd. v. Aurobindo Pharma Ltd., 703 F.3d 511 (Fed. Cir. 2012). · cites it 10× “35 U.S.C. §251 (1999).2 The Defendants argued that (1) there was no error, and (2) there was deceptive intent.”

In Re Youman, 679 F.3d 1335 (Fed. Cir. 2012). · cites it 18× “The Board affirmed the examiner's rejection of claims 24-27, 29-43, and 45-55 in the applicants' reissue patent application under 35 U.S.C. § 251 . Ex parte Youman, No. 2010-007029, 2010 WL 3503790 (B.”

Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014). · cites it 12× “Because we hold that these reissue claims are invalid for failure to comply with the “original patent” requirement of 35 U.S.C. § 251 , we affirm. BACK6ROUND I Antares is a developer of automatic injection devices used to self-administer *1356 pharmaceuticals.”

Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360 (Fed. Cir. 2006). · cites it 11× “On May 29, 1992, pursuant to 35 U.S.C. § 251 , Mr. Cohn, on behalf of Dr.”

Superior Fireplace Co. v. The Majestic Prods. Co. & Vermont Castings, Inc., Defendants-Cross, 270 F.3d 1358 (Fed. Cir. 2001). · cites it 5× “Accordingly, Superior was within the two-year window for broadening reissues under 35 U.S.C. § 251 , had it elected to pursue that route.”

Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co., 23 F. Supp. 2d 974 (N.D. Iowa 1998). · cites it 9× “Furthermore, Automatic argues that the claimed error is not about a highly technical or difficult aspect of the invention; there is no supporting statement from the attorney who prosecuted the ’240 patent in the reissue prosecution file; and other factors indicate that the…”

Hester Indus., Inc. v. Stein, Inc., Defendant-Cross, 142 F.3d 1472 (Fed. Cir. 1998). · cites it 8× “(“Stein”) are invalid for failing to meet the statutory “error” and “original patent” requirements for reissue patents set forth in 35 U.S.C. § 251 ¶ 1 (1994). Hester Indus.”

Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). · cites it 2× “See 35 U.S.C. § 251 . When enacting the AIA, Congress acted against this backdrop.”

In re Keller, 642 F.2d 413 (C.C.P.A. 1981). · cites it 6× “Claims 1, 2, 6, 7, and 9-16 3 are rejected under 35 U.S.C. § 251 on the ground that the declaration made by applicant to support the reissue application does not particularly specify the prior art being brought to the attention of the examiner as required by 37 CFR 1.”

In Re Richard N. Bennett, 766 F.2d 524 (Fed. Cir. 1985). · cites it 12× “Bennett under 35 U.S.C. § 251 , on the ground that a broadening reissue application that was filed within two years of the patent’s issue date but was erroneously filed by the as-signee could not be corrected by a declaration of the inventor filed more than two *525 years after…”

Quantum Corp. v. Rodime, Plc, 65 F.3d 1577 (Fed. Cir. 1995). · cites it 5× “§ 282 , which lists various affirmative defenses in a patent infringement suit, allows a defendant in a patent infringement action to assert an invalidity defense based on a failure to comply with any of the statutory requirements in 35 U.S.C. § 251 for reissue applications.”

Yoon Ja Kim v. Conagra Foods, Inc., 465 F.3d 1312 (Fed. Cir. 2006). · cites it 4× “35 U.S.C. § 251 (2000). This procedure, however, is not without its limitations.”

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— 35 U.S.C. § 251(a) — 1 case

Coconut Grove Pads, Inc. v. Mich & Mich TGR, Inc., 222 F. Supp. 3d 222 (E.D.N.Y 2016).

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