Reissue vs. Reexamination in IPR and PGR Practice - Patents: Post-Grant Podcast
Never Surrender? Recapturing Subject Matter in Reissue Proceedings
Takeaways - - Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination. - “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
Takeaways - -Intra-patent claim inconsistencies are errors correctible via reissue. -Subtle legal distinctions in reissue may require PTAB appeals. Patent prosecution errors occur. One such error that occurs is...more
Takeaways: 1. Patent owner statements present both risks and limited opportunities. 2. Waiving the patent owner statement shortens overall reexamination proceeding pendency. Every third party requester ex parte...more
Takeaways: - Patentees must demonstrate “unequivocal intent” to broaden claims in a broadening reissue. - To establish a broadening reissue, a patentee’s actions must align with their words within the two year statutory...more
The requirement for disclosure, candor, and good faith between an applicant/patent owner and the U.S. Patent and Trademark Office (USPTO) serves an important public interest. Succinctly, each individual associated with the...more
One of the advantages of filing a reissue application within two years of the original patent’s grant is the ability to seek broader claims. More often than not, however, a broadening Reissue will be rejected by the CRU...more