patent reissue

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PTAB Invalidation of Original Claims Bars Pre-issue Damages for Reissued Claims

A surprisingly underutilized patenting mechanism — the reissue patent application — should be an essential component of any portfolio building practice.  The reissue application allows patent owners to correct/adjust claim scope (in some cases broaden), add additional claims, and perform a number of other corrections to an originally issued patent prior to asserting it.

For example, where a Patent Owner has its claims cancelled that the PTAB, the Patent Owner may seek to reissue its patent thereafter with new, narrower claims.  (This option may be more attractive than the PTAB’s amendment process, which is limited in the number of claims that may be raised, and, reissue is not an inter partes process).

But, reissue is not  a magic time machine. That is, trying to resurrect a damages case linked to your earlier cancelled claims by arguing that your narrowed, reissue claims are somehow the same scope, is a losing argument (not surprisingly)
Continue Reading Reissue Claims Substantially Identical to Invalidated Claims Ensnared by Collateral Estoppel

Recapture, Orita Doctrine & Same Invention Limit Scope

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a Patent Owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution — not even when broadening. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same public reliance policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents Patent Owners from obtaining by reissue, restricted claims that were never pursued.

This week, the Federal Circuit revisited a further limit on broadening patent reissues it last addressed in 2014.
Continue Reading Broadening Reissue Patents Have Limits

Patent Owners Largely Ignore Ex Parte Amendment Options

A few weeks back the USPTO issued a Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (here). The Notice provided no new information, instead, it served to remind the public that reissue/reexamination options exist to amend claims outside of AIA trials. Given the continuous public outcry over AIA amendment difficulties, one would expect a fairly robust jump in reexam/reissue filing rates—especially as these options provide an ex parte amendment process.

However, as recent Patent Trial & Appeal PTAB statistics show, very few Patent Owners are pursuing these traditional amendment paths.
Continue Reading Amending Outside of the PTAB: Why So Few Reexams/Reissues?

Thursday Webinar Addresses Parallel Post-Grant Proceedings

This Thursday, April 25th, from noon to 1 p.m. ET, the Patent Trial and Appeal Board (PTAB) and the Central Reexamination Unit (CRU) will host a Boardside Chat webinar presenting information on the interplay of AIA trial proceedings under the America Invents Act (AIA), reissue applications, and reexamination proceedings.…