Strategic Use of Patent Reissue: Whether and When to Pursue a Reissue Application

Correcting Errors, Responding to an IPR Challenge and Mastering the Recapture Rule

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


Conducted on Thursday, January 18, 2018

Recorded event now available

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Program Materials

This CLE webinar will provide patent counsel with an in-depth review of the pros and cons of using reissue, offer their experiences, perspectives and best practices on the strategic use of patent reissue to correct errors.

Description

The AIA revised patent reissue to eliminate the language that an error must have occurred “without deceptive intent.” As a result, some patent owners and their counsel may have an opportunity to be more aggressive in the use of reissue and use it to correct patent errors in light of the recent case law.

Using patent reissue to correct an error and/or modify claims has risks and limitations for correcting an issued patent. The panel will describe and explain actual case studies for the attendees’ consideration.

Further, in light of the AIA post-grant proceedings, reissue should be considered as a patent owner tool that may help strengthen the patent.

Counsel’s strategic use of the reissue process should include considerations of the impact of reissue generally, on the unexpired term of the patent, and on whether design-around and intervening rights possibilities will be created.

Counsel to patent owners should also carefully analyze whether and when to recommend a reissue application, particularly considering the doctrine of reissue recapture when attempts are made to broaden at least one claim in a reissue application filed within the two-year statutory period.

Listen as our authoritative panel of patent attorneys examines how patent reissue standards and procedures have changed, discusses the impact of the AIA and recent case law, and explains the benefits and limitations of patent reissue. The panel will cover factors to weigh in determining whether to proceed with a reissue application and why it can be good for the patent owner to keep a continuing patent application pending, eliminating issues relating to both broadening claims and reissue recapture. The panel will offer their experiences, perspectives and best practices on the strategic use of patent reissue to correct errors.

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Outline

  1. Patent strengthening benefits that reissue can provide against AIA post-grant proceedings before PTAB, as well as district court litigation
  2. How reissue fits into the big picture of U.S. patent portfolio management in the AIA world
    1. Prior to or concurrent with PTAB AIA post-grant proceedings, litigation or licensing
    2. Concurrent reexamination proceeding
    3. Interferences
    4. Concurrent litigation and possible stays of reissue
    5. Concurrent AIA post-grant proceedings and possible stays of reissue
    6. MPEP rules re: disclosure, concurrent litigation—what about concurrent PTAB proceedings?
    7. Issues of obviousness-type double patenting (ODP) can be addressed in reissue but currently ODP is not raisable in IPR or PGR
  3. Comparison of reissue with other tools for correcting patents by patent owners
    1. Certificate of correction
    2. Ex parte reexamination
    3. Supplemental examination under AIA
    4. Pending U.S. patent applications

Benefits

The panel will review these and other key issues:

  • When should counsel be considering the possibility of reissue?
  • How have the AIA changes impacted patent reissue?
  • What are the risks and limitations of using reissue proceedings to proactively resolve patent validity/unpatentability issues?
  • How should counsel try to factor the doctrine of reissue recapture into the decision to file a reissue application?

Faculty

Baur, Amelia
Amelia Feulner Baur, Ph.D

Founding Partner
McNeill Baur

Dr. Baur’s practice covers a broad spectrum of intellectual property issues, including patent preparation and...  |  Read More

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

MacAlpine, Jill
Jill K. MacAlpine, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,...  |  Read More

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