About Post-Grant Proceedings: Reissue and Reexamination

  • May 1 2018
  • |
  • Category: Blog

Post-grant proceedings can be initiated both by patent owners and those challenging the validity of specific current patents. When a post-grant proceeding is used to question the validity of a current patent, the patent in question is sometimes invalidated or narrowed. And when such a proceeding is initiated by a current patent holder, his or her current patent can be strengthened via the resolution of questions concerning its scope or validity. Below is an overview of two types of post-grant proceedings: reissue and reexamination.

Reissue

Reissue proceedings are used when an issued patent is considered to be invalid or inoperative due to error. Errors may include issues such as:

  • A defective specification;
  • An incorrect claim amount; or
  • A defective priority claim.

Reissue proceedings are available to patent owners, and such individuals must identify at least one error upon which they are relying when initiating such proceedings. A reissue proceeding is the only available method by which a claim’s scope may be broadened. However, it is required that a reissue application be filed within two years of the issue date for the subject patent. In addition, a patent owner who initiates a reissue proceeding must agree to surrender the original patent.

Reexamination

A reexamination proceeding allows a patent owner, challenger, or other interested party to request a reexamination of an issued patent at any time during which a patent is enforceable. At a reexamination proceeding, the issues for consideration are limited to questions of obviousness and novelty, and the documents for consideration are limited to printed publications and patents. If the United States Patent and Trademark Office determines that a case presents a substantial new question of patentability, then the patent will be submitted to the Central Reexamination Unit for examination. Once the patent has been submitted, an examiner handles the matter in a manner similar to the initial examination process described above. During this part of the reexamination process, the patent owner and United States Patent and Trademark Office are the only parties that remain involved.

Patent Attorneys

At Carter, DeLuca, Farrell & Schmidt, we maximize the impact of post-grant proceedings by conducting research and analysis while formulating effective strategies to achieve the desired business objectives of our clients. Whether the chosen post-grant proceeding is a reissue, reexamination, post-grant review, inter partes review, or covered business method review, our experienced New York patent attorneys identify and provide the quickest and most cost-effective approach to resolve ambiguities in issued patents. If you are the creator of intellectual property of any kind, please consider contacting the experienced attorneys at Carter, DeLuca, Farrell & Schmidt to discuss your situation. Our team of experienced New York patent attorneys will ensure that you are fully informed and comfortable with each step of the intellectual property registration and reexamination processes. Please contact us for a consultation.