Patent Office Practice - Reissue

Patent reissue allows a patentee to correct a wide variety of errors in a patent. A patent owner may correct an error in a patent if the error was made without deceptive intent, and if the error renders the patent partially or wholly inoperative or invalid. If the reissue application is filed within two years of the patent grant, the claims can not only be amended but also broadened. Types of errors correctable through reissue include inadvertently obtaining a patent that does not cover all the disclosed inventions intended to cover, covering too much subject matter including an invention already known in the art, significant typographical errors in the patent’s specification and/or drawings, incorrect listing of inventors, or inadvertent procedural errors made by the patentee during the prosecution process. Patent reissue is a post-issuance correction tool with examination conducted ex parte with the patent owner. Under the America Invents Act (AIA), patent reissue will undergo a slight change. Namely, under revised 35 U.S.C. § 251, the language that the error must have occurred “without deceptive intention” has been removed.

Filing a reissue has associated risks and limitations. This is especially true when attempting to broaden patent claims. Finnegan attorneys have extensive experience in mapping out a course of action in view of those inherent risks and limitations. We regularly counsel patent owners through the thicket of reissue challenges to achieve a cost-effective strategy that meets the goals of not only the patent at issue but also the client’s portfolio as a whole.

Our attorneys understand the vulnerability associated with reissue. Reissue reopens prosecution (i.e., examination) of the entire patent, not merely those aspects of the patent identified by the patent owner as errors. We have experience dealing with the presumptions and the interpretations used when a patent is under reissue. We balance the risks a patent owner runs when a new rejection is applied against the patent claims and when potential estoppel issues are at stake. We have firsthand experience with the issue of third party intervening rights whether absolute or equitable when corrected patent claims issue.

While reissue does not allow for correction of certain types of errors made during the original patent prosecution, Finnegan’s knowledge and depth of practice in multiple technological areas can assist patent owners with maximizing patent reissue. Steering clear of the recapture doctrine is one way. Under the recapture doctrine, a patent owner is prohibited from recapturing claimed subject matter that was surrendered through amendments or arguments made during the original prosecution.

Finnegan handled over a hundred reissue proceedings in the last five years. The technologies at issue span nearly every industry sector, including semiconductors, medical devices, pharmaceuticals, consumer electronics, agricultural products, and business method patents. Our extensive knowledge of Patent Office practice combined with decades of litigation experience in district courts and before the ITC and the USPTO provides us an educated and unique perspective on how to best utilize reissue proceedings as part of an overall strategy.