PLI’s Reissue and Reexamination Strategies and Tactics with Concurrent Litigation kicked off this morning.  First up is Todd Baker of Oblon Spivak.  In his Reissue overview, Baker explains that common bases for filing a reissue application include: the original patent claims are too narrow or too broad, the disclosure contains inaccuracies, the applicant failed to assert or incorrectly asserted foreign priority, and/or the applicant failed to make reference to, or incorrectly made reference to, prior co-pending applications.  In his overview of Ex Parte Reexam, Baker explains ex parte reexams can be initiated by patent owner, third parties (may remain anonymous); or Director. He says requests must be based on prior art patents and printed publications; requests cannot be based on public use, sale priority of invention or derivation; and claims many not be broadened in any request.  He explains that reexamination of patent claims will result in targeted claims being cancelled; narrowed; or confirmed.  Baker went on to discuss pitfalls to avoid both in Reissue and Ex Parte Reexam.

Pitfalls to avoid in Reissue (oath):

1. The error must be specific.  Insufficient for oath to merely state: “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.”
2. Insufficient to merely reproduce the amended claims and assert that the error is evident from the amendment
3. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
4. Preparing oath not a ministerial act
5. Adding a dependent claim to hedge against possible invalidity of original claims does not constitute an error correctible by reissue. Ex parte Tanaka
6. If the basis of the error is claiming more than the patentee was entitled to, then an original patent claim must be narrowed to satisfy s 251.

Pitfalls to Avoid in Reissue (Recapture):

1. A reissue will not be granted to “recapture” claimed subject mater which was surrendered in an application to obtain the original patent. See MPEP s 1412.02
2. Recapture rule applied as a three step process: (1) determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims (2) determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution (3) determine whether the reissue claims were materially narrowed in other respects, so that the claims many not have been enlarged, and hence avoid the recapture rule.
3. In 2003, the BPAI issued Ex Parte Eggert, which indicated that an intermediate claim scope presented in reissue would not constitute recapture.
4. Eggert is inconsistent with Fed. Cir precedent (North American Container) and the BPAI has acknowledged as much in recent decisions. (Until this issue is clarified by the Fed Cir, POs should be cautious when pursuing claims of intermediate claim scope in reissue).

Pitfalls to Avoid in Ex Parte Reexam:

1. Filing a PO statement
2. Failure to File an Interview Summary
3. Non-compliant Requests
4. SNQ (Substantial New Question): New, non-cumulative technological teaching not explained.
5. SNQ: Lumped together multiple district proposed rejections.
6. SNQ: Non-confirming IDS (no IDS, IDS references not used/explained, references used but not in IDS).
7. SNQ: Indefinite or inconsistent claim identification (including use of “at least”).
8. SNQ: Incomplete or improper proposed rejections.
9. SNQ: Otherwise not clear; has not applied every cited document to each claim;
10. Service/Certificate of service missing or inadequate.
11. Copies of references missing or not legible
12. Contains subject matter not within the scope of reexamination;
13. Miscellaneous (Request not signed, Real party in interest not identified, 37 CFR 1.907 estoppel provisions not certified).

Tags: BPAI, Ex Parte Eggert, Ex Parte Tanaka, Recapture, Reexam with concurrent litigation, Reexamination, Reissue

This entry was posted on Friday, February 4th, 2011 at 16:15 and is filed under Patent Law Institute, posts, Reexamination. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.