Reissue

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One of the crowd pleasers built into the revised S.515 is the ability to effectively cure mistake and/or oversight in original patent prosecution.  Such inadvertant issues can currently serve to jeopordize an otherwise valid patent.  With the Federal Circuit struggling to get their arms around the never ending saga that is inequitable conduct jurisprudence, Congress appears poised to provide some much needed relief by way of the revised Patent Reform Legislation.

For example, in Section 10 of the Bill, Chapter 25 of title 35, United States Code, would be amended by adding a new section 257 to permit the patent owner to request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to its patent.  The Director would then have 3 month to determine whether the information presents a substantial new question of patentability (SNQ).  If an SNQ is found to exist, the supplemenatl examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices).  Once the supplemental examination concludes, the issues brought before the Office in the second examination cannot be used to attack the patent
Continue Reading Inoculate Your Patents from Inequitable Conduct Allegations?

uspto facesOn March 2, 2010, the USPTO held a Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting at its Madison Auditorium. Among the various topics presented was a set of  USPTO Slides by Jean Vollano, a Quality Assurance Specialist in TC 1600. Her presentation was informative and worth a detailed review. She covered reissue practice relating to (1) amendments to claims, description and drawings, (2) inclusion of certificates of correction in reissue applications, (3) oaths/declarations and (4) amendments to a reissue of a reissued patent.

Her slides provide examples of how to properly amend claims in reissue applications emphasizing the need to amend original patent claims using brackets and underlining of original patent claim text. She reminded applicants that
Continue Reading Fixing Errors: USPTO Offers Reissue Best Practices for Patent Owners

updateass=”alignleft size-full wp-image-1458″ title=”update” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/update.jpg” alt=”update” width=”132″ height=”127″ />Last week we noted the potential affect of Ex Parte Tanaka internal to the USPTO.  Tanaka was decided last December by the Board of Patent Appeals and Interferences (BPAI), holding that a reissue application was improper where the only defect identified in an issued patent was the…

PLI-Logoass=”alignleft size-full wp-image-1149″ title=”PLI-Logo” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/PLI-Logo.bmp” alt=”PLI-Logo” width=”232″ height=”131″ />For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are several upcoming programs in February and March, two offered in New York (Feb. 11th and 12th, March 1st and 2nd) and one in Chicago (March 11th and…

MPEP § 1451 cautions applicants against filing a copy of the oath/declaration and assignee consent from the parent reissue application when a continuation reissue is filed without abandonment of the parent reissue application. It indicates that in such circumstances OPIE should accord a filing date to the continuation reissue application and send out a notice…

MPEP § 1414.01 provides concise guidance regarding when a supplemental reissue oath or declaration is required and what it must contain. A supplemental oath/declaration is required in a reissue application where any “error” under 35 U.S.C. 251 has been corrected and the error was not identified in the original reissue oath/declaration. The supplemental reissue oath/declaration…

If a patent owner has disclosed, but not claimed some embodiments of the invention, resort to the doctrine of equivalence to protect such unclaimed embodiments may be lost through the doctrine of prosecution history estoppel. Let’s assume, for sake of argument, that the patent application that led to the patent contained no claims to the…

In the case of concurrent post grant proceedings at the USPTO, 37 CFR §§ 1.565(d) and 1.991 provide for a discretionary merger of reissue application examination with either ex parte or inter partes reexamination proceedings.  These rules provide that such merged proceedings will be conducted using the rules set forth for reissue application examination that are normally less restrictive than those applicable to reexamination.  As can be appreciated, such a merger would provide the patentee greater flexibility after final rejection and, in most situations, RCE practice and extensions of time as a matter of right; important procedural advantages.  But note that the USPTO may undo the merged proceedings if an RCE is filed in the reissue application (See MPEP §1452) and modify the response period/extension of time practice for reissue applications involved in a concurrent litigation (See MPEP §1442.03).

Moreover, although amendments to claims in reexamination can only be narrowing amendments, if the patent for which reissue is two years or less old, a broadened reissue application can be filed.  In this way, use of patent reissue together with merged reexamination proceedings may provide useful procedural and tactical advantages to a patent owner.Continue Reading Merged Post Grant Proceedings: To Reissue or not to Reissue?