Complimentary to our inter partes review practice, Perkins Coie is also highly experienced in the use of reissues and ex parte reexams. As a patent owner being challenged with an IPR, the filing of a reissue patent application can be a significant strategic advantage. Moreover, on the petitioner side where an IPR may be barred for a variety of reasons, the use of the ex parte reexam may still apply pressure to the patent owner. In either case, Perkins Coie has filed hundreds of reissue patent applications and ex parte reexams on behalf of clients.
Once a patent is issued, its owner can file a request for supplemental examination to amend the patent’s claims by identifying one or more possible substantial new questions of patentability on any grounds. This new procedure under the AIA is intended to help immunize the patent holder against inequitable conduct claims as well as to allow issues to be considered by the USPTO beyond the patent or printed publication references.
The Central Reexamination Unit (CRU) reviews all requests for supplemental examination and determines within three months of filing whether there are any actual substantial new questions of patentability among those the patent holder has identified. If such new questions are found, an ex parte reexamination is ordered on them.
Ex Parte Reexamination
Unlike the other post-grant procedures, ex parte reexamination is not new under the AIA and has remained largely unchanged since it was instituted in 1981. It is available to both the patent holder and a third-party petitioner—who can remain anonymous—and can be filed at any time after a patent has been issued.
This post-grant procedure can be attractive to patent holders who want to obtain a presumption of validity over patent or printed publication references that come to light after a patent is issued. For third parties, ex parte reexamination can be beneficial because it allows for the challenge of a patent without incurring any of the estoppel penalties that apply for other post-grant proceedings established by the AIA.
To amend the patent or show invalidity, the patent holder or petitioner must show that there is a substantial new question of patentability. However, the only grounds allowed to amend or show invalidity are anticipation or obviousness, and prior art usage is limited to patents and publications. There is also no discovery allowed.
The Central Reexamination Unit (CRU) of the USPTO reviews all requests for ex parte reexamination. Only the patent holder may appeal the CRU’s decision to the PTAB, and only negative PTAB decisions can be appealed to the Federal Circuit.
Similar to the supplemental examination, a patent holder can apply for reissue to amend a patent’s claims but only if the basis for the amendment is that an error in the original application renders the patent either partly or wholly invalid or inoperative. Like ex parte reexamination, reissue is not new under the AIA.
Examples of such errors can include claims that were too broad or too narrow, claims that failed to use a particular claim type or that failed to claim a disclosed subject matter. The reissue application can use any prior art references and must identify how any errors will be addressed, either by amendment or presentation of new claims. Any application for reissue that broadens the claims must be filed within two years of the original issuance.
The amended claims are examined in the same manner as any other patent application except that the recapture doctrine may apply and inventors must sign a reissue declaration. Appeals, continuations and divisionals can all be filed in the same manner as any other patent application, and estoppel does not apply.