Reissue vs. Reexamination in IPR and PGR Practice - Patents: Post-Grant Podcast
Never Surrender? Recapturing Subject Matter in Reissue Proceedings
IN RE KOSTIC - Before Stoll, Clevenger, and Cunningham. Appeal from the Patent Trial and Appeal Board. When considering whether a reissue claim broadens the scope of the original patent, the PTAB determines the actual scope...more
Takeaways: - Claim construction for determining whether reissue claims are improperly broadened is based on fundamental claim construction cannons and not applicant intentions. - Patent Owners should check patented claims...more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s rejection of a proposed reissue claim for being broader than the original claim, denying the inventors’ argument that the analysis...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
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: -Not all patent errors are correctible via Reissue. - Restriction practice applies to Reissue applications. 1. Non-Elected Invention Recapture: A reissue application cannot add claims directed to a...more
A perennial challenge in patenting is to both cover your product and block design-arounds. It is understandably frustrating to incur the expense and disclosure requirements of the patent process only to find that a...more