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

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
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
CloseDonna M. Meuth
Associate General Counsel - Intellectual Property
Eisai
Ms. Meuth has diverse experience in intellectual property law, including patent portfolio management, patent... | Read More
Ms. Meuth has diverse experience in intellectual property law, including patent portfolio management, patent prosecution and litigation. Her technical focus is in the pharmaceutical, chemical and biotechnology arts. She has significant interference experience and litigation experience, in particular ANDA litigation for branded pharmaceuticals.
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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
Ms. Arner practices patent prosecution management, client counseling, and litigation and helps clients establish and grow patent portfolios, design and implement procedures to protect intellectual capital, and formulate company-wide IP strategies and policies. She co-authored a petition for a writ of certiorari in Bilski v. Doll and co-authored an amicus curiae brief to the federal circuit in In re Bilski.
CloseDeborah 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
Ms. Herzfeld focuses her practice on patent prosecution and counseling work, with an emphasis on chemical subject matter such as cosmetics, pharmaceuticals, biofuels, petroleum based products and catalyst technologies, as well as medical devices. Her client counseling experience includes freedom-to-operate, patentability, validity, and infringement opinion letters, portfolio and due diligence analysis.
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