Law Clerk Sam Finkel contributed to this article.
Reissue applications are often filed to pursue claim scope different from the original patent. For utility applications, this may mean revising or adding claims. But what about design patents? Design patents have only a single claim, and its scope is defined by the drawings. So, a reissue application for a design patent will often involve drawing amendments, and some other important differences in process compared to utility reissue applications.
Consider a design patent that covers the appearance of a lamp, including both the lamp body and shade:
After receiving the patent, the patentee realizes that its competitors are copying only the lamp body, not the shade. Since it has been less than two years since the patent issued, the patentee wants to pursue a design reissue application that claims only the body. The grounds and procedures to do so are largely the same as for utility. Like utility patents, design patents are eligible for reissue when “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….” In other words, the USPTO may reissue a design patent with a different scope than originally claimed. Critically, reissue applications must not introduce any new subject matter, and if the patentee wishes to broaden the claim, they must file the reissue application within two years of the original grant date.
Pursuing Different Claim Scope in a Design Reissue Application
Design patentees may file a reissue application to pursue a patentably distinct part of the originally claimed design. Per MPEP § 1457, “[t]he design reissue application can be filed based on the ‘error’ of failing to include a design for a patentably distinct segregable part of the design claimed in the original patent or a patentably distinct subcombination of the claimed design.”
In practice, a so-called “partial” design will show the claimed portion of an article in solid lines and the unclaimed portion in broken lines. Consequently, a reissue application directed to different claim scope will typically involve changing the portion claimed, by changing solid lines to broken lines or vice versa. Anything more (e.g., adding new lines) risks introducing new subject matter, which is prohibited. For the lamp patentee who wants to claim only the lamp body, they may do so in the reissue application by changing the lamp shade to broken lines:
Pursuing More Than One Design
If a design applicant wants to pursue a reissue application for a portion of the originally claimed design, but also wants to retain the original design—it is possible, though procedurally complex. The applicant must file a reissue application that includes both the original and the new design. This will trigger a restriction requirement and allow the applicant to pursue the new design in a divisional reissue application while the original application is suspended. When the divisional is allowed, it is re-incorporated back into the original application. Normally, a design application is only permitted to include one design, but in the case of reissues, the USPTO will waive this requirement, and the reissued design patent can include two (or more) patentably distinct designs.
Rule Against Recapture
As with all reissue applications, applicants may not capture subject matter that they surrendered during original prosecution. Applicants would be wise to avoid restriction requirements during original prosecution. For example, if the original application includes multiple patentably distinct designs, rather than wait for the inevitable restriction requirement, an applicant may proactively file a preliminary amendment to cancel all but one design. If the examiner issues a restriction requirement during original prosecution, the applicant will not have an opportunity to pursue any of the non-elected designs in a reissue application (but could still pursue them in regular divisional applications).
Takeaway
In summary, design reissue applications have some unique additional considerations and opportunities that may not be immediately evident and can be a valuable tool for pursuing a different scope from an original design patent.
