Chapter §21.01 Introduction

• Jurisdiction: United States

§21.01 Introduction

Even though it has been granted by the USPTO, an issued patent may suffer from certain defects. The defects may be so severe that, at the conclusion of litigation, a federal court will hold the patent invalid and/or unenforceable.¹ In other cases, however, the patent's defects are of a more minor nature and can be corrected through procedures conducted within the USPTO that are generally less expensive and of shorter duration than federal court litigation. Commencing these procedures also entails certain risks, however, such as revoking the patent's presumption of validity. This chapter describes several methods by which issued patents can be returned to the USPTO for correction: certificates of correction, reissue, and reexamination.²

Three procedures implemented by the America Invents Act of 2011 (AIA), inter partes review, post-grant review, and covered business method review, also involve return of patents to the USPTO. However, these procedures must be initiated by third parties rather than the patent owner, and they are more adjudicatory than examinatory in nature. Hence the three AIA-implemented post-issuance procedures are covered in a separate chapter of this treatise.³

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Notes:

^[1] The presumption of validity for issued patents, see 35 U.S.C. §282, is rebuttable. Based on clear and convincing evidence, a federal court may hold a patent invalid for failure to comply with the statutory requirements for patentability, 35 U.S.C. §101, §102, or §103; or for failure to satisfy the disclosure and/or claim...