Chapter 21 Outline

• Jurisdiction: United States

Chapter 21

Correcting Patents in the USPTO (Reissue and Reexamination)

§21.01 Introduction

§21.02 Certificates of Correction

[A] USPTO at Fault

[B] Applicant at Fault

[C] No Change in Claim Scope Permitted

[D] Effect of Certificate

§21.03 Reissue

[A] Overview

[B] Historical Development

[C] Statutory Basis: 35 U.S.C. §251

[1] "Inoperative or Invalid"

[2] Timing

[3] New Matter Prohibition

[4] "Invention Disclosed in the Original Patent"

[D] Broadening Reissues

[1] Two-Year Time Bar

[2] What Constitutes Broadening

[3] Claim-by-Claim Analysis Required

[E] Reissue Error

[F] The Recapture Rule

[G] Effect of Reissue: Intervening Rights

[1] Generally

[2] Statutory Basis

[3] Absolute Intervening Rights

[4] Equitable Intervening Rights

[H] Strategic Considerations for Reissue

§21.04 Disclaimer Under 35 U.S.C. §253

[A] Disclaimer of Invalid Claims

[B] Terminal Disclaimers

[1] Generally

[2] Unauthorized Filing of Terminal Disclaimers

§21.05 Reexamination

[A] Overview

[B] Ex Parte Reexamination

[1] Who Can Request

[2] Statutory Grounds for Reexamination

[3] Substantial New Question of Patentability

[4] Legislative Changes in Response to Portola

[C] Inter Partes Reexamination (Pre-America Invents Act of 2011)

[D] Intervening Rights in Reexamination

[1] Generally

[2] Change of Claim Scope

[3] Accused Infringer's Financial Recoupment Not Dispositive

§21.06 Reexamination Compared to Reissue