Strategic Use of Patent Reissue: Whether and When to Pursue a Reissue Application

Description

The AIA revised patent reissue to eliminate the language that an error must have occurred “without deceptive intent.” As a result, some patent owners and their counsel may have an opportunity to be more aggressive in the use of reissue and use it to correct patent errors in light of the recent case law.

Using patent reissue to correct an error and/or modify claims has risks and limitations for correcting an issued patent. The panel will describe and explain actual case studies for the attendees’ consideration.

Further, in light of the AIA post-grant proceedings, reissue should be considered as a patent owner tool that may help strengthen the patent.

Counsel’s strategic use of the reissue process should include considerations of the impact of reissue generally, on the unexpired term of the patent, and on whether design-around and intervening rights possibilities will be created.

Counsel to patent owners should also carefully analyze whether and when to recommend a reissue application, particularly considering the doctrine of reissue recapture when attempts are made to broaden at least one claim in a reissue application filed within the two-year statutory period.

Listen as our authoritative panel of patent attorneys examines how patent reissue standards and procedures have changed, discusses the impact of the AIA and recent case law, and explains the benefits and limitations of patent reissue. The panel will cover factors to weigh in determining whether to proceed with a reissue application and why it can be good for the patent owner to keep a continuing patent application pending, eliminating issues relating to both broadening claims and reissue recapture. The panel will offer their experiences, perspectives and best practices on the strategic use of patent reissue to correct errors.