By: Steve Petkovsek

This is the final post of a three-part series on patent reissue. Part 1 can be found here. Part 2 can be found here.

Part 1 of this series gives a basic overview of recapture, its statutory basis, and notes some of the changes to the treatment of inequitable conduct post-AIA (America Invents Act). [1]  Part 2 discusses how the court has interpreted limitations such as recapture doctrine and intervening rights. It also covers some general strategies on how to use reissue effectively. Part 3 compares patent reissue to other post-grant proceedings a prosecutor may have in his or her arsenal in both a legal and practical context.

 

PART 3-  REISSUE, REEXAMINATION, AND SUPPLEMENTAL EXAMINATION

Part 3 compares patent reissue to other post-grant proceedings a prosecutor may have in his or her arsenal  in both a legal and practical context. It focuses on reissue, reexamination, and supplemental examination.

Reissue vs. Reexamination

There are several major differences between reexamination and reissue. As a patent holder, the only kinds of post-grant proceedings available are reissue, ex parte reexamination, or supplemental examination. As a third party wishing to challenge a patent, reissue is not an option. However, there are some circumstances in which a third party may get involved in reissue proceeding or try to prevent it entirely by initiating other kinds of reexamination, such as inter partes review or post-grant review. Each type of proceeding has a different scope, potentially different consequences, and can vary in length and cost.

The closest analogue to reissue is ex parte reexamination. Both types of proceeding cover any patent and can be initiated by the patent holder, though a third party can also force an ex parte reexamination. While reissue can only be filed before the patent expires, it is possible to have an ex parte reexamination within six years after the patent expires due to past damages.[2] However, ex parte reexamination may only occur when a substantial new question of patentability is presented, or what a “reasonable examiner would find important in determining the patentability of the claims,” regarding 35 U.S.C. §§ 102 and 103 issues.[3] This question can only arise based on patents and publications. Thus, the patentee may only amend claims in an ex parte reexamination, though it is possible to broaden claims. Reissue is far broader and allows the patentee to cure a wider range of defects, as long as the patent is considered at least partly invalid though error. Neither proceeding creates estoppel concerns, though prosecution evidence from either proceeding may later be used in litigation. Interestingly, the same examiner who handled the original patent must handle the reissue proceeding, but a different examiner handles the ex parte proceeding. Reissue can also cause a stay in litigation, while an ex parte proceeding will probably have no effect on litigation, as it can be filed anonymously. In both cases, intervening rights can occur if claims are broadened.

Reissue thus has several advantages to an ex parte proceeding. It is the only way to cleanse a patent of defects other than prior art defects. Inconsistent or troublesome language can be clarified, even in the specification, which allows the patentee to clean up a patent in preparation for a particular litigation. Since errors no longer must be without deceptive intent, a patentee may attempt to make changes which may have not been considered errors at the time of the original issuance. For example, a patentee may wish to tweak the scope of the original claims and specification to more closely cover the new product of a competitor before seeking to extract a license. More prior art can be considered in reissue (and thus be subject to a presumption of validity) than during ex parte reexamination, which is limited to review of patents and printed publications. A patentee may also file continuations, divisional applications, or requests for continued examination during a reissue proceeding, none of which are available in an ex parte proceeding. A patentee can abandon the reissue proceeding if he or she does not like the outcome, while ex parte proceedings cannot be abandoned.[4] Finally, reissue is more predictable than ex parte review, where the examiner may find entirely new prior art and force an unexpected narrowing of the claims.[5]

However, reissue does have several disadvantages to ex parte reexamination for a patentee. Aside from admitting a defect in the patent, the biggest disadvantage is that the entire patent is reopened to prosecution; this means that there is no limited review, and it is possible to lose a battle which had been already won. For example, the original claims will not be examined for compliance with 35 U.S.C. §112, though new and amended claims are anyway. This is mitigated by the fact that the same examiner who allowed the original claims will review the reissue application. Second, ex parte proceedings are more nimble; it is more appropriate to use ex parte proceedings when trying to only gain a presumption of validity over new prior art, possibly without having to change the claims. No oath is required from inventors, which may be a large savings in time and money, as defective oaths have plagued a large majority of reissue applications (upwards of 70%) and can delay the proceedings a year or more.[6] A savvy patentee can keep ex parte proceedings private from competitors, and convince an examiner to allow claims over new prior art without creating additional prosecution history.[7] In this way, a favorable certificate of reexamination can buttress a patent’s presumption of validity in later litigation. Notably, a prior advantage to ex parte reexamination was that there did not need to be an admission of error without deceptive intent, but this advantage has disappeared post-AIA. Thus, ex parte reexamination is the best tool for preempting prior art issues which would otherwise be addressed during litigation.

A third party has limited involvement in both reissue and ex parte reexamination, but still has some options during each proceeding. A third party can anonymously initiate an ex parte proceeding by sending a requester to the USPTO containing relevant prior art and arguments for invalidity. This can be a useful way to preempt a full reissue by a patentee and can force the patentee to narrow claims in a forum where the patentee cannot adjust the specification or request continued examination. Ex parte reexamination can also create intervening rights for a client. It also puts the patentee in front of a fresh examiner. However, the scope of review is limited to prior art issues, and, other than introducing the issue, a third party has no further involvement. This is still more involvement than a third party can achieve during a reissue process, where the third party’s only involvement is via a protest under 37 C.F.R. § 1.291. However, both these strategies may (but do not necessarily) result in an estoppel which can prevent the issue from being raised again during litigation.[8] Courts will even look with disfavor on issues that could have been raised during reexamination by a third party but were not, so the strategy of saving relevant prior art for subsequent litigation might not succeed.[9] A third party (or patent owner) may find himself bound by the findings and limitations of the USPTO without further changes by the court in both reissue protests and ex parte reexamination.

Reissue vs. Supplemental Examination

A second alternative to reissue is supplemental examination under 35 U.S.C. § 257. This can also only be initiated by the patent owner, and can be requested at any time after issuance or any patent.[10] This type of reexamination invites the USPTO to consider or reconsider or correct information relevant to the patent which was missed entirely or improperly reviewed during prosecution. After doing so, this information cannot subsequently be used to invalidate the patent and the patent cannot be rendered unenforceable based on the reviewed information.[11] This covers any issue of patentability, including issues of 35 U.S.C. §§ 101, 112, or inequitable conduct. A supplemental examination can cover any information relevant to the patent, so it has a larger scope than either reissue or ex parte reexamination; the AIA does not put a limit on the kind of information which can be reviewed. It can be initiated any time before a patent expires.[12] This gives the patent holder a quick way (three months timeframe) to clarify information regarding her patent and prepare for litigation.

Supplemental examination holds several advantages over reissue. First, the AIA specifically states that supplemental examination cannot render a patent invalid or unenforceable. The worst case scenario, if the relevant information is a substantially new question of patentability, is an ex parte reexamination considering the specified references or material. Second, since the rules on inequitable conduct have yet to be fully tested in court, supplemental examination can be used to cure information that would otherwise bring up issues of inequitable conduct.  Third, a patent owner need not admit a defect in the patent itself. Fourth, if no new issues of patentability are raised, the examination ends and the patentee is fully immune from any of the reviewed information. Thus, supplemental review works well when the patentee is confident that no new issue of patentability will be raised. It is quick and can be used to narrow issues during enforcement.[13]

However, reissue is preferable when the patentee is aware of a defect or is unsure about the effect on patentability of the new information. If issues of patentability or validity of claims do occur, reissue allows the patentee to access the full suite of prosecution options, such as requests for continued examination or the ability to file divisional applications. Supplemental examination is more expensive than reissue, even when no ex parte proceeding results. The patent owner cannot stop ex parte examination if supplemental review finds a substantial new question of patentability, wherease the patent owner can abandon reissue at any time. Thus, reissue, though much slower than supplemental examination, is far more flexible and it allows the patentee to make changes that the patentee knows are necessary.[14] It is a better avenue to take to cure a patent of known defects before asserting it.

Conclusion

As stated above, reissue is useful mostly when there is a clear problem with an issued patent. It is a longer, but safer route to make changes to a patent than other forms of post issue reexamination. Since a patentee no longer must declare that an error occurred without deceptive intent, reissue has been opened to cure a wider array of problems which might otherwise have required an admission of inequitable conduct. However, this area has yet to be tested by a court in issues other than disclosing known prior art, so it is wise to use other methods, such as supplemental examination, to cure other defects where inequitable conduct may have arisen.

 


 

[1] Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 28.

[2] Perez, Eugene T., Chart Summarizing Different Post-Grant Proceedings (2014)   http://www.postgrantproceedings.com/tools/PGR_Chart.html

[3] Emery, David P., Reissue and Reexamination of Patents, 15-21 (2008).

[4] Emery at 15-21.

[5] Id. at 15-27.

[6] McKeown, Scott A., Defective Oaths Plague Patent Reissue Filings, (November 24, 2010),  http://www.patentspostgrant.com/lang/en/2010/11/defective-oaths-plague-patent-reissue-filings

[7] Emery at 15-10.

[8] Emery at 15-26.

[9] Id.

[10] Matlis, Naphtali Y., Reissue v. Supplemental Examination (2014), http://www.postgrantproceedings.com/topics/Article-NYM_Reissue_v_Supplemental_Exam.html.

[11] See 35 U.S.C. § 257(a),(c).

[12]Perez, Eugene T., Chart Summarizing Different Post-Grant Proceedings (2014), http://www.postgrantproceedings.com/tools/PGR_Chart.html

[13] Matlis, Naphtali Y., Reissue v. Supplemental Examination (2014), http://www.postgrantproceedings.com/topics/Article-NYM_Reissue_v_Supplemental_Exam.html.

[14] Id.