Patent Reissue: Strategic Use After AIA

Correcting Errors in Patents, Determining Whether and When to Pursue a Reissue Application, and Mastering the Recapture Rule

Recording of a 90-minute CLE webinar with Q&A

Conducted on Thursday, October 31, 2013

Recorded event now available

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Program Materials

This CLE webinar will discuss the America Invents Act's (AIA) impact on the patent reissue process, the pros and cons of using reissue to correct patent errors, the rule against recapture, and the effect of reissue. The panel will offer best practices for the strategic use of patent reissue.

Description

Under the AIA, patent reissue was revised to eliminate the language that an error must have occurred “without deceptive intent.” As a result, many patent owners and their counsel may have an opportunity to be more aggressive in the use of reissue.

Using patent reissue to correct an error and/or broaden claims has risks and limitations to consider when evaluating possible routes for correcting an issued patent. Further, counsel must understand the impact on and from any ongoing litigation and licensing deals.

Counsel to patentees must carefully analyze whether and when to recommend a reissue application. Counsel's strategic use of the reissue process must include considerations of the effect of reissue generally and on the unexpired term of the patent and opening up design-around possibilities.

Listen as our authoritative panel of patent attorneys examines how patent reissue standards and procedures have changed, discusses the impact of the AIA, and explains the benefits and limitations of patent reissue including factors to weigh in determining whether to proceed with a reissue application. The panel will offer their experiences, perspectives and best practices on the strategic use of patent reissue.

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Outline

  1. Overview of changed requirements
    1. “Without deceptive intent” removed by AIA
    2. AIA changes to oath
    3. Implications of changes: What effect does Therasense have?
  2. Other statutory requirements for reissue
    1. Reissue is initiated by patentee or the patentee’s assignee
    2. Amended application, fee and offer to surrender original
  3. Defects correctable by reissue
    1. Inventorship
    2. Priority
    3. Disclaimer: but what about terminal disclaimer
    4. Defective specification or drawing
    5. Overclaiming—narrowing reissue: Tanaka
    6. Amended claims having the same or similar scope as original claims
    7. Underclaiming—broadening reissue: 2-year limit; subject to recapture and written description
    8. Errors of law
  4. Rule against recapture
    1. Federal Circuit recapture test
    2. Interplay of the Recapture Rule and the Orita Doctrine
    3. MPEP
  5. Effect of reissue
    1. Patent is deemed wholly or partly invalid or inoperable due to at least one error: the benefits of Tanaka
    2. Unexpired term of the patent: no additional PTA or PTE, but also reissue doesn’t adversely affect either
    3. Effective date of claims
    4. Intervening rights
    5. Opening up design-around possibilities
    6. Effects of reissue prosecution history
  6. Presumption of validity and judicial review of reissue patents
    1. No presumption of validity during prosecution
    2. Judicial review
    3. In re Baxter International and Fresnius: defendant in litigation of the reissue patent going back to PTO for reexam or IPR
  7. Concurrent proceedings, mergers and suspension
    1. Notice of prior or concurrent proceedings
    2. Concurrent reissue proceedings
    3. Concurrent reexamination proceeding
    4. Interference
    5. Concurrent litigation and stays
    6. MPEP rules re disclosure re concurrent litigation
  8. Comparison with other tools for correcting patents by patent owners
    1. Certificate of correction v. reissue
    2. Ex parte reexamination v. reissue
    3. What effect does supplemental examination under AIA have?
  9. Divisional and continuation applications
    1. Divisional applications
    2. Continuation reissue application
  10. Using the PTO forms

Benefits

The panel will review these and other key questions:

  • What factors should be considered in evaluating the possibility of reissue?
  • What are the implications of the AIA changes for patent reissue?
  • What are the risks and limitations of using reissue proceedings to resolve patent validity issues?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Irving, Thomas
Thomas L. Irving
Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Donna M. Meuth
Donna M. Meuth
Associate General Counsel - Intellectual Property
Eisai

Ms. Meuth has diverse experience in intellectual property law, including patent portfolio management, patent...  |  Read More

Arner, Erika
Erika H. Arner
Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Arner practices patent prosecution management, client counseling, and litigation and helps clients establish...  |  Read More

Deborah M. Herzfeld
Deborah M. Herzfeld
Of Counsel
Finnegan Henderson Farabow Garrett & Dunner

Ms. Herzfeld focuses her practice on patent prosecution and counseling work, with an emphasis on chemical subject...  |  Read More

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