Patent Reissue. Devan Padmanabhan. Partner Dorsey & Whitney, LLP

Transcription

1 Patent Reissue Devan Padmanabhan Partner Dorsey & Whitney, LLP

2 Patent Correction A patent may be corrected in four ways Reissue Certificate of correction Disclaimer Reexamination

3 Roadmap Reissue Rules and Procedures Using Reissue to Provoke an Interference A Comparison of Reissue to Reexam Practice Tips

4 Basics of Reissue Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall... reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.... No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent. 35 U.S.C. 251

5 Reissue Statistics*

6 Despite large numbers of patents being reissued, the relative number of reissued patents is at a near all-time low*

7 Pendency of Reissue Continues to Increase* * From PatentlyO

8 Most Common Reasons for Filing a Reissue Claims are too narrow or too broad; Disclosure contains inaccuracies; Applicant failed to or incorrectly claimed foreign priority; and Applicant failed to make reference to or incorrectly made reference to prior copending applications

9 There Must Be an Error Reissue is not available unless there was an error in the patent that renders the issued patent wholly or partly inoperative or invalid

10 When Reissue Is Not Available To correct spelling, grammar, typos, editorial, or clerical errors To correct a non-substantive drawing change Failure to file a divisional

11 When Reissue Is Not Available Applicant presents one or more claims that are all narrower than the broadest claim(s), without cancellation of such broader claim(s) and The only error that is alleged is that additional claims could have been claimed (i.e. the applicant included too few claims) No recapture of material disclaimed during prosecution

12 Filing Requirements for Reissue Must include the same parts as the original application No new matter Provide a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent State any prior or concurrent proceedings in which the patent is or was involved (e.g. interferences, reissues, reexams, or litigation) and the results of such proceedings An amendment may be submitted with the filing of a reissue (note that there are specific requirements for the way the claims, specification, and drawings must be amended in reissue. See MPEP 1453) Oath or declaration MPEP 1410

13 Oath or Declaration In addition to complying with the requirements of 1.63, the oath or declaration must state: The applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim At least one error relied upon as the basis for reissue All errors being corrected arose without any deceptive intent on the part of the applicant 37 CFR 1.175; MPEP 1414

14 Oath or Declaration Inventor oath must be used for broadening reissue Assignee oath can be used for narrowing reissue or reissue not broadening the claims (i.e. inventorship change)

15 Oath or Declaration It is not sufficient to state that the application is being filed to correct errors The oath/declaration must specifically identify an error Any error in the claims must be identified by reference to the specific claim(s) and the specific language that contains the error

16 Recapture Subject matter surrendered during prosecution of the original application may include: Original claims canceled due to an amendment or a restriction requirement Claim amendment language used to overcome a reference Written arguments presented in response to an office action (similar to prosecution history estoppel)

17 Three Step Test for Recapture Determine whether and in what aspect the reissue claims are broader than the patented claims Determine whether the broader aspects of the reissued claim related to surrendered subject matter Determine whether the reissued claims were materially narrowed in other respects to avoid the recapture rule MPEP

18 Recapture A patentee may violate the rule against recapture by claiming subject matter in a reissue patent that the patentee surrendered while prosecuting a related patent application. MBO Labs., Inc. v. Becton, Dickinson & Co., No (Fed. Cir. April 12, 2010) (emphasis added).

19 Broadening Reissue Claim 35 U.S.C. 251 prescribes a 2-year limit (from the date of the original patent grant) for filing applications for broadening reissues. Note, however, that new broadening claims can be added after the 2-year limit, as long as any intent to broaden is indicated in the reissue application within the two years from patent grant, including continuation applications.

20 Broadening Reissue Claim What is a broadening claim?: A claim that is broader in scope than each and every claim of the original patent A claim is broader if it is broader in at least one respect, even though it may be narrower in other respects If a disclaimer is filed prior to filing of a reissue the disclaimed claims are NOT part of the original patent

21 Broadening Reissue Examples of broadened claims: If the new claim contains within its scope any conceivable product or process which would not have infringed the original claims A claim that reads on something that the original claims do not If a patent owner would be able to sue any party who previously could not have been sued (e.g. original claims are all process claims and reissue for the first time includes product claims)

22 Broadening Reissue Dependent claims: If dependent claim 2 is enlarged, but independent claim 1 is not broadened claim 2 is not broadened because claim 2 must be at least as narrow as claim 1

23 Narrowing Reissue Ex parte Tanaka* In a precedential opinion, the Board of Patent Appeals and Interferences held that reissue is not permissible where only narrower claims are added in a reissue application as a hedge against invalidity of the original claims * Decided Dec. 9, 2009

24 Ex parte Tanaka The Board concluded that reissue is not available to add narrower claims when issued claims remain in the application: The Appellant attempts to have it both ways, by seeking to add narrower claims to the original patent without complying with the requirements of 35 U.S.C. 251 and 37 C.F.R (a)(1), to be wholly or partly inoperative or invalid by reason of the patentee claiming more or less than he had a right to claim in the patent. Section 251, however, requires that for the Director to reissue a patent, the patent must be deemed to be wholly or partly inoperative or invalid. The reissue statute may be remedial in nature, Altenpohl, 500 F.2d at 1156, but it is not as broad in its plain wording as to allow a patentee to simply re-prosecute an otherwise operative and valid patent. (Ex parte Tanaka, p. 20.)

25 Be Sure To: Claim the benefit of an earlier filing date in a foreign country under 35 U.S.C. 119(a) (d) in the reissue even though it was already done in the original patent. MPEP 1417 Call to the attention of the Office any prior or concurrent proceedings in which the patent is or was involved and the result of the proceeding. 37 CFR 1.178; MPEP 1418

26 Remember that: Reissue files are open to the public and the notice of filing reissue is announced in the Official Gazette. MPEP 1430 Examination of reissue application proceeds in the same manner as a non-reissue, non-provisional. MPEP 1430 Reissues are to be acted on by the examiner before other applications, i.e. special. MPEP 1430 A protest pursuant to 37 CFR may be filed throughout the pendency of a reissue application, prior to the mailing of the notice of allowance The Examiner can issue a restriction requirement where the added claims are directed to an invention that is separate and distinct from the invention defined by the original claims But, the Examiner is not permitted to require restriction among original claims of the patent

27 Concurrent Proceedings If a reissue and an ex parte or an inter partes reexamination are pending concurrently, a decision will normally be made to merge the two proceedings or to suspend one of the two. If the original patent is involved in an interference, the Examiner must consult the administrative judge in charge of the interference before taking any action on the reissue MPEP

28 Reissue for Design Patents Reissue is available for design patents A design patent, however, cannot be converted to a utility patent via reissue

29 Effect of Reissue The reissued patent will be viewed as if the original patent had been originally granted in the amended form provided by the reissue. There are 2 distinct defenses to patent infringement under the doctrine of intervening rights: Absolute intervening rights are available for a party that prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, anything patented by the reissued patent, and equitable intervening rights where substantial preparation was made before the grant of the reissue. 35 U.S.C. 252; MPEP 1460

30 Surrender of Original Patent The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect. 37 CFR 1.178

31 Surrender of Original Patent In a recent District Court case, it was held that where there is only a single reissue patent, surrender and reissuance go hand-in-hand, and the original patent is invalid after the date of reissue, but where there are multiple reissue applications, surrender is only required after the PTO issues the final reissue patent. Pfizer v. Apotex, 2010 U.S. Dist. LEXIS (N.D. Ill. June 30, 2010)

32 Reissue to Provoke an Interference A reissue application can be used to provoke an interference if the reissue application: adds copied claims which are not present in the original patent; amends claims to correspond to those of the patent or application with which an interference is sought; or contains at least one error (not directed to provoking an interference) appropriate for the reissue... MPEP

33 Reissue to Provoke an Interference In the case of the first two options from the previous slide, the reissue oath/declaration must assert that the applicant erred in failing to include claims of the proper scope to provoke an interference in the original patent application The issue date of the patent, or the publication date of the application publication with which an interference is sought must be less than 1 year prior to the presentation of the copied or amended claims in the reissue application; and As stated earlier, if the reissue application includes broadened claims, the reissue application must be filed within two years from the issue date of the original patent

34 Reissue to Provoke an Interference The patentee, of course, must include in the reissue application an appropriate 35 U.S.C. 251 error. A reissue cannot be based solely on the error of the Office to declare an interference or to suggest copying claims for the purpose of establishing an interference

35 Reissue v. Reexam Reissue Patent owner can correct errors in U.S. patents Reexam Anyone may test the validity of a U.S. patent (neither affects the original patent until either reissue patent is granted or a reexamination certificate is issued)

36 Reissue v. Reexam Reissue allows for: Paid extensions of time Requests for continued examination Continuations None of the above are available in reexams

37 Reissue v. Reexam Reexam Cannot correct errors in the specification Limited to questions of validity that pertain to other patents or printed publications Can be filed any time during the period of enforceability of the patent

38 Why Reissue May Be Something to Consider Consider filing a reissue where the issued patent contains an error with respect to 35 U.S.C. 112 or 101 Want valid patents of broadest possible scope Doctrine of equivalents is less and less effective

39 Practice Tips Stay in touch with the client through the patent process to make sure claims encompass the most important features of the invention and that the wrong embodiments are not played up or that new ideas are incorporated Prior to patent grant: consult with marketing or sales departments to see if competitors are trying to design around the invention Consult with product development and manufacturing departments to see if any new problems have developed and revise the application to reflect these developments

40 Practice Tips Before issue always consider filing a continuation or continuation-in-part there are always alternate ways of claiming an invention Add the two year date following patent grant to your docket in case you want to file a broadening reissue

41 THANK YOU! Questions?