Presenting a live 90 minute webinar with interactive Q&A Patent Reissue: Benefits, Limitations and Strategies Leveraging the Reissue Process to Correct Defects and Protect IP Rights TUESDAY, JULY 12, 2011 1pm Eastern 12pm Central 11am Mountain 10am Pacific Td Today s faculty features: Scott A. McKeown, Partner, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., Alexandria, Va. Irah H. Donner, Partner, Stroock & Stroock & Lavan, New York Larry A. Roberts, Partner, Kilpatrick Townsend & Stockton, Atlanta The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
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Patent Correction Options & Recent Developments in Patent Reissue Practice Scott McKeown Copyright 2011 Oblon, Spivak, McClelland, Maier & Neustadt L.L.P.
Which Patentee Fix? Continuations/Divisionals? isionals? Best practice Certificate of Correction (typos, inventor names, etc). Minor in character 35 USC 255 (prospective) Otherwise certificate is invalid (no intervening rights) Judicial correction (retroactive) Ex Parte Patent Reexamination (owner) Patent Reissue 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 6
Patent Reissue 251 Patent is Wholly or Partly Inoperativee Oath: Error made without deceptive intent At least one Supplemental oaths later Narrowing vs. Broadening (2yrs) Reissue Application for unexpired patents only (reissued for unexpired term) Restart continuation practice Past bias at USPTO (In re Tanaka) Fix problem, then get out (suspend parallel filings) 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 7
Patent Reissue Can t Fix Everything! Recapture Beware Orita Doctrine Can t restart divisional practice Terminal Disclaimer Removal? Ex Parte Shunpei Yamazaki (BPAI 2010-002033) Think Before You File All Issued Claims Examined Anew Bilksi/KSR concerns? Other options prior art problem only? 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 8
Patent Reexam/Reissue Difference from Ex Parte Patent Reexamination No SNQ Needed, fix spec, drawing, divided infringement/indirect infringement, etc All claims examined, all statutes New Search Continuation/RCE practice, EOTs Changes up front/intervening rights (252) Lack of Special Dispatch/Dedicated examiners (CRU) Only way to Broaden 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 9
Broadening Reissue Within two years of issuance Recapture? No prosecution do over Oath Issues (all inventors) Unequivocal statement Inexperienced examiner? Continuation Laches? (In re Staats) Pendency? 50% still pending after 5 years 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 10
Broadening Reissue 753 Total 200 Abandoned (not shown) 20% complete within 3 yrs 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 11
Narrowing Reissue Examining Corps Oath Issues (add 1 year) Amendment style mistakes Pendency? Far less common than broadening Merger purpose? (Claims killed elsewhere?) Query: Is reexamination the better mechanism? 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 12
Narrowing Reissue 129 Total 80% concluded within 5 yrs. Add 1 year for oath problems **Abandonments not counted 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 13
Oath Mistakes Beware box checking Claiming more or less Lack of specificity Inconsistent treatment across art units Reissue QAS Examiner in the middle, talking to the wrong person Examiners not familiar, supervisors drive delay 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 14
Oath Delays Avoiding Delay? For narrowing reissue applications filed in 2005, applications without any oath problems were completed 1.14 years faster (1.74 vs. 2.88 years) than those with oath problems. 70% of patent reissue filings include a defective oath. 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 15
A Better Way to Narrow? Ex Parte Reexamination Owner Initiated t Special dispatch CRU Focused review (3 SPEs), limited claims Owner statement/request with claim changes 12 month turnaround? SNQ? Some risk (no EOTs or RCE) But, can always seek reissue if you fail. Reissue is only option to broaden 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 16
Patent Reissue: Benefits, Limitations and Strategies Leveraging the Reissue Process to Correct Defects and Protect IP Rights Tuesday, July 12, 2011 Irah H. Donner
Reissue Proceedings - Limitations 1. Limits on Allowable Scope 2. Errors Correctable by Reissue 3. Trigger Recapture Rule Four Step Test for Recapture 4. Intervening Rights 18
Topic #1: Limits on Allowable Scope Patentee uses reissue to correct an error in the original patent Patentee can only correct an error that arose without deceptive intent Reissue is the only yprocedure that allows patentee to broaden issued claims (if filed within 2 years of patent issuance) 19
Correcting Error through Reissue Errors in a patent which render the patent wholly or partly inoperative or invalid can be corrected by reissue The claims of a patent in reissue may: Reissue in the same form as the previous patent Reissue as narrowed claims Reissue as broadened claims (in certain circumstances) Not reissue 20
Error Defined An error that is correctable by reissue is defined in 35 U.S.C. 251: Error must be one which causes the patent to be 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. Caution: Making statements regarding what is error may be used as admission Reissue discussed at 37 C.F.R. 1.171-1.178 21
Further Statutory Requirements Defect must have arisen without deceptive intent Fraud or Inequitable Conduct required here Patentee cannot be claiming more or less than patentee had a right to claim in the first place Owner must demonstrate that the change does not add new matter Original patent must not have expired by the time the reissue issues 22
Further Statutory Requirements (cont.) If adding broader claims than in original patent, owner must file broadening reissue within 2 years of patent issuing Test for broadening claims: Whether any reissue claim contains within its scope any conceivable apparatus or process which would not have infringed the original patent Medtronic Inc. v. Guidant Corp., (Fed. Cir. 2006) Thus a claim is broader if it is broader in any respect even though it is narrower in some other respect Patentee must demonstrate the patent claims meet statutory requirements 23
Reissue Procedure - Declaration Must state that the patent is inoperative or invalid Requires that at least one error be identified If identified error not corrected, supplement with new declaration Requires statement that all errors being corrected arose without deceptive intent 24
Reissue Procedure Declaration (cont.) Declaration form language: At least one error upon which reissue is based is described below. If the reissue is a broadening reissue, such must be stated with an explanation as to the nature of the broadening:... Form PTO/SB/51 Link to Reissue Application Declaration form: ftp://ftp.uspto.gov/pub/forms/sb0051.pdf p p p p 25
Reissue Procedure Declaration (cont.) Examples of errors that could be declared in a Form PTO/SB/51: Original issued claim X in U.S. Patent No. X,XXX,XXX was too broad dbecause it did not recite the at least one reader limitation i i which h is now recited in claim Y of the reissue application. Original issued claim X in U.S. Patent No. X,XXX,XXX was too narrow and claimed li dless that we had hdh the right ihto claim. li Claim Cli X recited each carrier having a plurality of locations. Claim Y of the reissue application does not recite this limitation. 26
Reissue Procedure Supplemental Declaration Required if additional defects or errors are corrected in the reissue after the filing of the application (e.g., amendments to claims during prosecution) Not required for spelling, grammar, typographical, editorial or clerical errors 27
Reissue Procedure Supplemental Declaration (cont.) Supplemental Declaration Example of acceptable language: Every error in the patent which was corrected in the present reissue application, and is not covered by the prior declaration submitted in this application, arose without any deceptive intention on the part of the applicant. Form PTO/SB/51S: Link to Supplemental Declaration for Reissue Patent Application form: ftp://ftp.uspto.gov/pub/forms/sb0051s.pdf 28
Reissue Procedure - Filing Requirements Reissue application Same basic parts as an original application Reissue oath or declaration Patentee must file a reissue oath setting forth the proper grounds for the reissue (i.e., the error) Assignee permitted to file oath/declaration for non-broadening reissues Assignee Consent Must file if oath is by patentee Include proof of ownership (Section 3.73(b) submission) Surrender of original patent no longer required; application is deemed an offer to surrender 29
Topic # 2: Errors Correctible by Reissue What errors make a patent inoperative? Claim less than owner had a right to claim Inoperative because it does not protect owner s invention Claim more than the owner had a right to claim Inoperative because it is not valid Defective specification curing without adding new matter Misjoinder of inventors 30
Reissue Types of Errors Errors of fact: The claims are too narrow or too broad The disclosure contains inaccuracies The specifications or drawings are inaccurate Translational errors Applicant failed to or incorrectly claimed foreign priority or domestic priority Applicant failed to make reference to or incorrectly made reference to prior copending applications 31
Reissue Types of Errors (cont.) Errors of law or judgment A change in law affects claim scope, e.g., Supreme Court KSR or Bilski decisions Attorney drafting errors Miscommunication with patentee Attorney simply didn t appreciate the full scope of the invention 32
Errors Not Basis for Reissue Spelling, or grammar, or a typographical, editorial or clerical error Use Certificate of Correction Cannot be basis for reissue, but can be corrected during a reissue Cannot fix errors that arose due to inequitable conduct Requires a finding fidi of an intent it tto mislead il or deceive Hewlett-Packard v. Bausch & Lomb, (Fed Cir. 1989) 33
Reissue - Review of Claims Once a patent enters reissue, all issues of patentability are fair game. You cannot select the particular defects and then request that the examiner ignore other issues Patentability of all claims will be addressed during the reissue process 34
Topic #3: The Recapture Doctrine Prevents patentee from using reissue to prosecute the original application de novo Patentee cannot seek to claim subject matter that was deliberately surrendered during original prosecution Patentee cannot add a claim that has substantially the same scope as a claim that was given up during prosecution 35
Recapture Doctrine: Four Step Evaluation 1) Determine whether and in what aspect reissue claims are broader than the original patent claims 2) Determine whether the broader aspects of the reissue claims li relate lt to surrendered dsubject matter 3) Determine whether the surrendered subject matter has crept into reissue claim 4) Determine whether the reissue claims, although broadened, were materially narrowed in other ways so as to avoid the recapture rule In re Clement, (Fed. Cir. 1997) 36
Deliberate Surrender Deliberate cancellation of a claim in an original application to secure patent cannot ordinarily be considered an error Recapture rule does not apply to reissue claims that are wholly narrower in scope than canceled claims If the reissue claims are narrower than the original canceled claims, yet broader than the original issued patent claims, reissue must be sought within 2 years after grant of the original patent If a reissue claim attempts to broaden the patent in a way that does not attempt to reclaim something that was surrendered earlier, recapture does not apply 37
Other Recapture Issues No per se rule for applying recapture: [T]he proper inquiry requires a fact-specific analysis in each case to determine whether the patentee is attempting to recapture by reissue. Ex parte Eggert, (B.P.A.I. 2003) Recapture Applies to Patent t Families Recapture cannot invalidate original issued claims 38
Topic # 4: Intervening Rights 35 U.S.C. 252: A reissued patent shall not abridge or affect the right of any yp person... in business who,,prior to the grant of the reissue, made, purchased, offered to sell, or used within... or imported into the United States, anything patented by the reissued patent, to continue the use of... the specific thing so made 39
Intervening Rights (cont.) An intervening party that created a specific thing before the reissue is protected from infringement of reissue claims for that specific thing However, the intervening gparty can infringe the reissue patent for the specific things that were created after the reissue, subject to 35 U.S.C. 252 (next slide) 40
Intervening Rights Role of Courts 35 U.S.C. 252: A court... may provide for the continued manufacture, use, offer for sale, or sale of the [specific thing]... of which substantial preparation was made before the grant of reissue... to the extent... the court deems equitable for the protection of investments made or business commenced before the grant of the reissue. Gives court power to allow intervening party to continue the manufacture, sale, use, etc. where substantial preparation was made before reissue 41
Irah Donner (212) 806-66306630 idonner@stroock.com www.stroock.com
Recent Developments PART II 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 43
Recent Developments Patent Reform Supplemental l Examination Cures inequitable conduct (save previous pleadings, or clear fraud) SNQ standard, but full examination. 90 day decision Therasense impact? Patent Reissue no longer requires lack of deceptive intent Likely less popular after legislation, unless broadening. Ex parte reexamination unchanged 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 44
CAFC In re Tanaka (CAFC 2011) Originally filed to broaden, gave up New claims only change left to reissue Rejection under 251, patent defective? Hedge against possible invalidity an error? Came out of Dudas environment Real fear continuation practice? CAFC Reverses Reasonable dissent 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 45
CAFC In re Mostafazadeh (CAFC 2011) Explores Recapture exception Overlooked aspect or critical limitation? Critical limitation must be materially narrowed in other respects PTO reasoning rejected, but case affirmed on facts Positive outcome for patentees Clarity for dense MPEP explanation 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 46
CAFC In re Staats (CAFC 2011) Broadening Reissue continuation practice explored Must identify intent to broaden in all aspects within 2 years MPEP 1412.03 (IV)? BPAI argues equitable principles of two year limitation Intervening rights? Board relied upon prosecution laches case law (forseeability) Submarine patents Oral Argument Upcoming. 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 47
Thank You Scott A. McKeown smckeown@oblon.com 703-412-6297 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 48
Reissue as a Tool in Patent Litigation Larry A. Roberts Kilpatrick Townsend & Stockton LLP 49.
Introduction Emphasis in recent years on reexamination as an important litigation tool. Are there advantages to using reissue as a litigation tool? 50.
Overview Reissue can permit a patent owner to broaden claims. Patent owner can vet claims over non- publication prior art. Opportunity to correct defects not only in the claims but also in the specification. Significant procedural advantages to the patent owner. 51.
Recap in Litigation Context Who can initiate? Reissue only Patent Owner (PO) Ex Parte Reexam either PO or Third Party Requestor (TPR) Inter partes Reexam only TPR 52.
Reissue Benefits Patent Owner Because only the PO can initiate reissue, litigation strategies involving reissue are of benefit only to the PO. 53.
Recap: Standard for Granting Request in a Reissue Patent can be reissued if: 1. through error without any deceptive intention, 2. patent is wholly or partly inoperative or invalid, 3. by reason of a defective specification or drawing, or 4. by reason of the patentee claiming more or less than he had a right to claim in the patent. 54.
Consequences of Applying for Reissue Patent owner must admit patent is defective Reissue application must include an amendment, or else patent owner is not admitting his patent is defective. Amendment need not necessarily be to a claim, can be to specification, drawing, priority date, or other. 55.
Recap: Standard for Reexam vs. Standard for Reissue For reexam, must show Substantial New Question of Patentability t (SNQ). When reexam is requested, PO can argue that the prior art presented does not present a SNQ, or that if a SNQ exists, the claims are still patentable. Even if Reexam is granted, patent owner still doesn t have to amend claims but can argue claims are patentable over the SNQ. 56.
What Type of Prior Art Can Form the Basis for the Request? Reexam only yprinted publications Reissue any prior art Printed publications, plus Prior knowledge Prior public use, or Pi Prior sale or offer for sale 57.
Broadening Claims Can never broaden scope of claims in reexamination, whether ex parte or inter partes, and regardless of when filed. In reissue, CAN broaden claims if request filed within two years of issue date. 58.
Limitations on Claims that Can Be Added New claims whether broader or narrower must satisfy requirements of 35 U.S.C. 112, first paragraph. Must be enabled Must comply with written description requirement Just because independent claim complies with written description doesn t mean dependent claim does! 59.
Test for Whether Claims Are Broader A claim is broader if a method or apparatus consisting of the elements of the new claim would not infringe any claim of the original patent. 60.
Example of Test for Whether Claims Are Broader Test for whether claim is broader is same for both reissue and reexamination. Assume the original patent claims A+B and A+B+C. A new claim submitted during reexam/reissue recites A+C+D. So, assume a hypothetical device or method consisting of A+C+D D. 61.
Example of Test for Whether Claims Are Broader (cont d) A device consisting of A+C+D would not infringe A+B (no B), nor would it infringe A+B+C (again, no B). Since the new device would not infringe a claim of the original patent, it is broadening. Impermissible in reexamination and in reissues filed > 2 years after issuance of original patent. 62.
Summary: Advantages of Reissue over Reexamination 1. PO can reissue patent within two years of issuance to broaden claims to cover competitor s product. 2. PO can address issues in reissue not available in reexam, for example, having the PTO consider non-publication prior art. 3. Reissue procedures permit filing continuation applications or abandoning the application altogether if the process is not going well. 63.
Summary (cont d): Advantages of Reissue over Reexamination 4. Not limited to issues of obviousness and anticipation, so a PO can use reissue to correct claim defects relating to subject matter eligibility, utility, written description, enablement, and clarity. 5. Permits a PO to correct a patent for errors in the specification. But can t introduce new matter! Rely on inherency? 64.
Dependent Claims as a Basis for Having Claimed Less It is permissible to establish defect on the basis of having omitted dependent d claims that t would serve as a hedge against possible invalidity of the original claims. In re Tanaka, Fed. Cir., April 18, 2011, Case No. 2010-1262. Now no need to concede that an existing claim is invalid! Big benefit to PO. 65.
Trial Court Unlikely to Stay Trial Courts are unlikely to grant a stay pending the outcome of a reissue for these reasons: Reissue applications are not handled with special dispatch ;* reissues can easily take five years through the appeals process. The accused infringer is not permitted to take part in the reissue, so his side of the story is not being heard. * But merged reissue and reexam is handled with special dispatch. 66.
Co-pending Reissue and Reexamination If a third party files a request for reexam and the PO files a request for reissue, the patent t office will not maintain both independent actions simultaneously. The PTO will either Merge the reissue and reexam; or Stay one of the proceedings pending the outcome of the other Prevents the possibility of inconsistent or conflicting amendments and decisions 67.
The Decision to Merge or Stay Made by Office of Patent Legal Administration (OPLA) The decision on whether to merge or stay the proceedings will be made on a case-by-case basis based upon the status of the various proceedings. MPEP 2285 (II) (emphasis added). The status of the reissue application and the reexamination proceeding will be taken into account in making the decision. A decision of the OPLA in one case is not precedential with respect to other cases. 68.
Advantages to the Patent Owner of Merged Proceedings Merged reissue and reexams are handled d according to the rules for reissues. Continuations are allowed Non-publication prior art can be considered If reissue and inter partes proceedings are merged, the TPR can comment only on issues within the scope of the reexamination. 69.
Narrowing Reissue or Ex Parte Reexamination? The filing for reissue exposes all issued claims to a second examination. If the PO wishes to have only a single claim, or subset of claims, reviewed, a reexamination request will generally allow a patent holder to limit the review to these specific claims only. But weigh against procedural advantages of reissue discussed earlier. 70.
Summary of Strategies for Use of Reissue as a Tool in Litigation Use broadening reissue to pursue claims that cover competitor s product. If reexamination is filed against your patent, consider filing a reissue application. If proceedings are merged, you get the benefit of the merged proceedings being governed by reissue rules. 71.
Summary of Strategies for Use of Reissue as a Tool in Litigation Use reissue to vet your patent over non-publication prior art, e.g., public uses, offers for sale. Add dependent d claims by reissue that t are tailored to your competitor s product. Even if after the two-year period, a dependent claim is necessarily not broader. 72.
Summary of Strategies for Use of Reissue as a Tool in Litigation Add dependent claims by reissue to hedge against the possibility of the broader claims being held invalid. Minimize i i the effect of admitting that t any particular claim of the original patent is defective. Even after the two-year period, a new dependent claim can serve as the basis for the patent being inoperative. 73.
Acknowledgement Special thanks to Josh Lee, an associate in the Atlanta office of Kilpatrick Townsend, for his assistance in researching this subject and in preparing p these presentation materials. 74.
Presenter s Contact Information Comments? Questions? Critique? Kudos? Feel free to contact me. 75.