Reissue

1. Reissue A Primer on U.S. Patent Law May 2005

2. Patent Reissue - Introduction • Patent Reissue - 35 USC § 251 • Effect of Reissue - 35 USC § 252

3. Patent Reissue – Requirements • Error: Inoperative or Invalid ? • Defective specification or drawing • Claim more or less than right to claim • No Deceptive Intent • Cannot cure inequitable conduct • Timing • Two year limitation on broadening claims • Patent Owner files

4. Patent Reissue – Purposes • To fix errors in patent • To reopen prosecution • To have prior art considered

5. Patent Reissue – Non-Claim Errors • Inventorship – • Former Employee claims to be an inventor • Priority claim – • Priority claim required for validity • Other non-claim amendment • No new matter

6. Patent Reissue – Claim Errors • Invalid claims • Independent claims held invalid • Dependent claim not held invalid • Reissue • Dependent claim in independent form

7. Patent Reissue – Claim Errors • Incomplete scope • 1 Independent Method claim • 16 Dependent Method claims • Reissue • 2 Independent claims: computer system, computer code • Many Dependent claims

8. Patent Reissue – Claim Errors • Not enough claims • 3 Method, 1 System claim • Reissue • Add Dependent claims • Add different scope • Paid for 20 claims

9. Patent Reissue – Amendments • Broadening Reissue – • Broaden claims via amendment within 2 years • Narrowing Reissue – • Narrow claims via amendment anytime

10. Patent Reissue – Additional Features • Prosecution reopened • Continuation can be filed from a reissue application

11. Patent Reissue – Caveats • No presumption of validity • No recapture of claim scope abandoned in prosecution • Prosecution History Estoppel

12. Patent Reissue – Caveats • Intervening rights for broader claims • Absolute – Past and present infringement • Equitable – Continued infringement