Live Blog: PLI’s Reissue & Reexamination Strategies & Tactics With Concurrent Litigation

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. (more…)