patent opinions, opinion

Patent Reissues and Reexaminations

Reissue and reexamination proceedings are a key component of patent protection and an indispensable tool to correct and confirm the patentability of claims. These proceedings have gained in popularity in recent years for a number of reasons, including a recent U.S. Supreme Court opinion establishing a new obviousness rubric. See KSR v. Teleflex, 550 U.S. 398 (U.S. 2007)

The law provides mechanism for the patentee to apply for a reissue patent when a patent is defective in certain respects. The nature of the changes that can be made by reissue are quite limited. Ex parte reexamination allows anyone, patent owners or third parties, to inform the United States Patent and Trademark Office about new prior art issues that might affect a patent's validity. Inter partes reexamination is also available for patents filed after a specific date. Both ex parte and inter partes reexamination begin with a request for reexamination. The reexamination process can be a useful way for third parties to limit infringement risks and to benefit from the potential advantages that an administrative forum may bring over the federal courts. Reexamination proceedings may also reduce the cost and time required for litigation in the federal courts.

These proceedings are important adjuncts or alternatives to litigation and may better position a client's patent portfolio. McHale | Slavin's attorneys and agents, many of whom are former USPTO examiners, handle all aspects of post issuance proceedings. We have the expertise to advise our clients on the advantages of post-grant strategies and prosecute such actions to successful conclusions as enforcement efforts or defensively. Contact us for additional information or to schedule a consultation.