Post-Grant Patent Practice: Reissue, Owner-Requested Reexamination & Supplemental Examination
Please note that the faculty members listed for this course are subject to change prior to the actual course date.
The instructors are experienced in filing and prosecuting reissue applications. They also have extensive experience representing patent owners in reexaminations. They were actively involved in bar associations’ efforts to help the PTO design and implement the supplemental examination proceedings created by the America Invents Act (AIA). They have written widely on such topics for Intellectual Property Today. Additionally, they have lectured on these topics since 2009 for Patent Resources Group.
Why Should You Take This Course?
Reissue is an indispensable tool for every patent owner, especially those who find themselves having a valuable patent that no longer has a continuation pending.
Several recent developments in the law have made reissue a more attractive vehicle. Those developments include the following:
- Elimination of the requirement to say the “error” being corrected by reissue arose without deceptive intent
- The ability to file a reissue application merely to add a new dependent claim
- The ability to file reissue continuation applications to broaden claims in new ways after the two-year broadening deadline
- The rule against recapture has been clarified and relaxed
- Reissue pendency is improving at the PTO
In addition to reissue, owner-requested ex parte reexamination remains an option to have a patent reconsidered in light of newly discovered prior art or overlooked patentability issues with respect to previously considered prior art.
The supplemental examination procedures created by the America Invents Act (AIA) is another option that can sometimes quickly eliminate potential issues of inequitable conduct if relevant information was not considered during original prosecution.
This one-day course covers the following tools for patent prosecutors:
- Owner-requested Ex parte reexamination
- Supplemental examination (new under the AIA)
- Other options such as certificate of correction, disclaimer, and “corrective” claim construction
The course covers strategies, tactics, best practices and case studies for each tool. In addition, the course provides training for patent owners to:
- Choose among ex parte reexamination, reissue and supplemental examination to best strengthen and improve a patent
- Avoid, when possible, intervening rights that arise via the cancellation or amendment of claims
- Understand how and when these proceedings may be merged
- Select information to be disclosed to the PTO from concurrent litigation or other PTO proceedings
- Understand the timing of events in these proceedings so that you are not caught off guard
- Navigate the maze of procedures to avoid unfortunately common mistakes
- Master the recapture rule
- Understand when and how to utilize a certificate of correction, disclaimer, or “corrective” claim construction, rather than reexamination, reissue or supplemental examination.