Patent Reissue Strategies and Pitfalls

A properly drafted set of patent claims captures any foreseeable competitor activity without being so broad as to read on the prior art. In the real world, such perfect claims are difficult to craft. Often times, patent claims are drafted too narrowly and competitive products avoid infringement. Likewise, later discovered prior art may render broad claims invalid. But all is not lost, as the United States Patent Code provides patentees with procedures for correcting imperfect claims.

The preferred mechanism to correct or improve claim coverage is through the use of continuation applications. A common strategy is to file a continuation application on an allowed application prior to its issue date to keep the case open before the Patent Office. By doing so, a patentee can continue to expand and improve upon the claim coverage, while maintaining the earliest possible priority date.

The Reissue Option

Another mechanism to correct or improve claim coverage is through filing a reissue application on the original patent. The United States Patent Code provides that a patentee may use reissue to correct an error in an issued patent, provided: i) the error was made during prosecution without any deceptive intent, and ii) the error caused the patent to be inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent. 35 U.S.C. '251. See also 37 C.F.R. ” 1.171 through 1.179 for rules regarding reissue.

If a patentee claims more than it has a right to claim, the original claims may be narrowed at any time during the life of the patent. One reason for narrowing claims would be to avoid invalidating prior art that was discovered after the patent issued. If a patentee claims less than it had a right to claim, the original claims may be broadened, provided the reissue application is filed within 2 years of the original patent issue date. The ability to change the scope of the original patent claims and/or add new claims provides the patentee with an opportunity to enhance the value of the original patent.

Reissue Strategy

There are a number of strategic reasons for broadening a patent through reissue. One is to claim subject matter not claimed in the original patent. Subject matter disclosed in a patent but not claimed is dedicated to the public. Eg, Maxwell v. J. Baker, Inc., 86 F.3d 1098 (Fed. Cir. 1996); Johnson & Johnston Associates Inc. v. R.E. Service Co., 62 U.S.P.Q.2D 1225 (Fed. Cir. 2002). Therefore, it is critical that the original patent be reviewed for subject matter not covered by the claims. This would typically require careful review of the original patent specification and drawings to determine if any important features of the invention were not claimed.
Another reason to reissue a patent is to expand claim coverage over competing products marketed or sold after the original patent issue date. A prudent patent manager monitors competing products in view of the original patent claims within the 2-year broadening reissue window to determine if the original claims cover competing products. If competitors appear to be designing around the issued claims, a reissue application may be appropriate to prevent future design arounds.
Any expansion of claim coverage should include careful consideration of the pool of infringers. Ideally, the patent claims should cover all applicable statutory classes under 35 U.S.C. '101, with an emphasis on maximizing the pool of direct infringers. It is easier to prove direct infringement in litigation than indirect infringement, which requires proof of additional facts. See, eg, 35 U.S.C. '271(c) (contributory infringement requires proof of direct infringement and infringer's knowledge of the patent). For example, if a claim recites a computer processor in combination with particular functional software, then a competitor who does not make, use or sell a computer processor, but merely sells infringing software, does not directly infringe the claim.

The impetus to reissue a patent can also arise in a licensing context. The patent manager may find it difficult to license a patent because of various claim deficiencies. Since these claim deficiencies can be remedied in a reissue patent, criticisms made during negotiation by target licensees should be documented with an eye toward subsequent reissuing of the patent to correct the deficiencies.
Litigation can also compel a patentee to consider obtaining a reissue. For example, a patent manager may learn through discovery that the original patent claims do not adequately cover the infringing products. It is possible to request the court to stay the proceedings until a reissue patent application with corrected claims is granted. Whether a stay will be granted, however, is within the discretion of the court. Also, before embarking on this strategy, the patent manager should be certain that such activity complies with the terms of any protective order that may have been filed with the court.

Even if a patent manager successfully reissues a patent, the infringer may acquire certain intervening rights against the reissue patent on account of prior noninfringing activity, provided that the use or sale of the accused product does not infringe a claim of the original patent. For example, the infringer may have an absolute right to sell products it had in inventory or had purchased by confirmed order as of the date of reissue. See, eg, BIC Leisure Products v. Windsurfing International, 1 F.3d 1214 (Fed. Cir. 1993). The infringer may also have an equitable right to continue the manufacture, use or sale of accused products 'for the protection of investments made or business commenced before the grant of the reissue.' 35 U.S.C. '252.

Armed with A Strategic Reissue

After determining a strategic reason for reissuing a patent, the patent
manager should assess the roadblocks and risks associated with the reissue process. The most obvious roadblock is the previously mentioned 2-year broadening reissue window. If the patent claims are to be broadened, then a reissue application must be filed within 2 years of the original patent issue date.
Another possible roadblock to reissue is the required inventor declaration. The patent laws require that each named inventor execute a declaration. 37 C.F.R. '1.175. If the patent holder no longer employs an inventor, the patent manager may incur significant time and expense tracking down the missing inventor. An inventor who is disgruntled with the patent manager can refuse to cooperate or demand an unreasonable payment in exchange for such cooperation. Although the patent laws provide a procedure for handling such matters, it is generally cheaper and more expeditious if the inventor freely cooperates with the patent manager. Also, each owner of the original patent must consent to the reissue in writing. 37 C.F.R. '1.172. If the original patent is jointly owned, the patent manager should consider whether the co-owner will grant such consent without additional consideration or motivation. Many technology development agreements include joint ownership provisions but fail to address post-issuance decision making. The parties responsible for drafting such agreements should try to pre-emptively address this potential problem.

Perhaps the most serious roadblock to reissue is the prosecution history of the original patent. Claims will not be granted in a reissue to recapture subject matter that the applicant surrendered in the application to obtain the original patent. See, eg, Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472 (Fed. Cir. 1998). Accordingly, a patent manager should carefully review the prosecution history of the original patent to determine whether it is possible to obtain broader claims. Amendments made to the original claims to overcome cited prior art and any remarks made by the applicant of the original patent (even without amending the claims) may prevent the patent manager from obtaining broader claims in the reissue application.

Reissue Risk

There are also several risks to consider before reissuing a patent. One of the more serious risks is that all of the original claims are subject to new grounds of rejections. Even if the original claims are not amended, the Examiner may issue a rejection on all or some of the original claims. If the patent manager fails to overcome all of the rejections or makes new admissions on record to overcome the new rejections, the end result could be a narrower patent or abandonment of the reissue application. Since reissue applications are open to inspection by the public, any new references cited by the Examiner can be easily discovered and possibly used to invalidate the original patent in litigation. Thus, if the original patent covers a core technology or a particular product line, the patent manager should weigh the expected benefits of reissue against the risk that the core technology or product line could 'lose' its patent and becomes vulnerable to copying or knock-off products.

Still another risk with reissue is created by the publication of the reissue application in the USPTO's Official Gazette. A patent savvy competitor may learn of the reissue application and take defensive action to prevent its allowance. For example, the patent laws invite the public to submit to the USPTO any potentially damaging information and prior art against the patent. 37 C.F.R. '1.291. The Examiner may then use these submissions to reject claims of the reissue patent application.

Yet another factor that should be considered in obtaining a reissue is the requirement that the the original patent be surrendered to the USPTO. Once surrendered, the original patent cannot be enforced against an infringer. However, such surrender need not be made until the reissue application is in a condition for allowance. 37 C.F.R. '1.178.

In summary then, obtaining a patent reissue is another way that companies can further sustain and protect their competitive advantages. A well-managed patent development program incorporates reissue analysis to ensure that the reasons a patent was originally filed remain valid and relevant to the company's business objectives.

A properly drafted set of patent claims captures any foreseeable competitor activity without being so broad as to read on the prior art. In the real world, such perfect claims are difficult to craft. Often times, patent claims are drafted too narrowly and competitive products avoid infringement. Likewise, later discovered prior art may render broad claims invalid. But all is not lost, as the United States Patent Code provides patentees with procedures for correcting imperfect claims.

The preferred mechanism to correct or improve claim coverage is through the use of continuation applications. A common strategy is to file a continuation application on an allowed application prior to its issue date to keep the case open before the Patent Office. By doing so, a patentee can continue to expand and improve upon the claim coverage, while maintaining the earliest possible priority date.

The Reissue Option

Another mechanism to correct or improve claim coverage is through filing a reissue application on the original patent. The United States Patent Code provides that a patentee may use reissue to correct an error in an issued patent, provided: i) the error was made during prosecution without any deceptive intent, and ii) the error caused the patent to be inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent. 35 U.S.C. '251. See also 37 C.F.R. ” 1.171 through 1.179 for rules regarding reissue.

If a patentee claims more than it has a right to claim, the original claims may be narrowed at any time during the life of the patent. One reason for narrowing claims would be to avoid invalidating prior art that was discovered after the patent issued. If a patentee claims less than it had a right to claim, the original claims may be broadened, provided the reissue application is filed within 2 years of the original patent issue date. The ability to change the scope of the original patent claims and/or add new claims provides the patentee with an opportunity to enhance the value of the original patent.

Reissue Strategy

There are a number of strategic reasons for broadening a patent through reissue. One is to claim subject matter not claimed in the original patent. Subject matter disclosed in a patent but not claimed is dedicated to the public. Eg, Maxwell v. J. Baker, Inc., 86 F.3d 1098 (Fed. Cir. 1996); Johnson & Johnston Associates Inc. v. R.E. Service Co ., 62 U.S.P.Q.2D 1225 (Fed. Cir. 2002). Therefore, it is critical that the original patent be reviewed for subject matter not covered by the claims. This would typically require careful review of the original patent specification and drawings to determine if any important features of the invention were not claimed.
Another reason to reissue a patent is to expand claim coverage over competing products marketed or sold after the original patent issue date. A prudent patent manager monitors competing products in view of the original patent claims within the 2-year broadening reissue window to determine if the original claims cover competing products. If competitors appear to be designing around the issued claims, a reissue application may be appropriate to prevent future design arounds.
Any expansion of claim coverage should include careful consideration of the pool of infringers. Ideally, the patent claims should cover all applicable statutory classes under 35 U.S.C. '101, with an emphasis on maximizing the pool of direct infringers. It is easier to prove direct infringement in litigation than indirect infringement, which requires proof of additional facts. See, eg, 35 U.S.C. '271(c) (contributory infringement requires proof of direct infringement and infringer's knowledge of the patent). For example, if a claim recites a computer processor in combination with particular functional software, then a competitor who does not make, use or sell a computer processor, but merely sells infringing software, does not directly infringe the claim.

The impetus to reissue a patent can also arise in a licensing context. The patent manager may find it difficult to license a patent because of various claim deficiencies. Since these claim deficiencies can be remedied in a reissue patent, criticisms made during negotiation by target licensees should be documented with an eye toward subsequent reissuing of the patent to correct the deficiencies.
Litigation can also compel a patentee to consider obtaining a reissue. For example, a patent manager may learn through discovery that the original patent claims do not adequately cover the infringing products. It is possible to request the court to stay the proceedings until a reissue patent application with corrected claims is granted. Whether a stay will be granted, however, is within the discretion of the court. Also, before embarking on this strategy, the patent manager should be certain that such activity complies with the terms of any protective order that may have been filed with the court.

Even if a patent manager successfully reissues a patent, the infringer may acquire certain intervening rights against the reissue patent on account of prior noninfringing activity, provided that the use or sale of the accused product does not infringe a claim of the original patent. For example, the infringer may have an absolute right to sell products it had in inventory or had purchased by confirmed order as of the date of reissue. See, eg, BIC Leisure Products v. Windsurfing International , 1 F.3d 1214 (Fed. Cir. 1993). The infringer may also have an equitable right to continue the manufacture, use or sale of accused products 'for the protection of investments made or business commenced before the grant of the reissue.' 35 U.S.C. '252.

Armed with A Strategic Reissue

After determining a strategic reason for reissuing a patent, the patent
manager should assess the roadblocks and risks associated with the reissue process. The most obvious roadblock is the previously mentioned 2-year broadening reissue window. If the patent claims are to be broadened, then a reissue application must be filed within 2 years of the original patent issue date.
Another possible roadblock to reissue is the required inventor declaration. The patent laws require that each named inventor execute a declaration. 37 C.F.R. '1.175. If the patent holder no longer employs an inventor, the patent manager may incur significant time and expense tracking down the missing inventor. An inventor who is disgruntled with the patent manager can refuse to cooperate or demand an unreasonable payment in exchange for such cooperation. Although the patent laws provide a procedure for handling such matters, it is generally cheaper and more expeditious if the inventor freely cooperates with the patent manager. Also, each owner of the original patent must consent to the reissue in writing. 37 C.F.R. '1.172. If the original patent is jointly owned, the patent manager should consider whether the co-owner will grant such consent without additional consideration or motivation. Many technology development agreements include joint ownership provisions but fail to address post-issuance decision making. The parties responsible for drafting such agreements should try to pre-emptively address this potential problem.

Perhaps the most serious roadblock to reissue is the prosecution history of the original patent. Claims will not be granted in a reissue to recapture subject matter that the applicant surrendered in the application to obtain the original patent. See, eg, Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472 (Fed. Cir. 1998). Accordingly, a patent manager should carefully review the prosecution history of the original patent to determine whether it is possible to obtain broader claims. Amendments made to the original claims to overcome cited prior art and any remarks made by the applicant of the original patent (even without amending the claims) may prevent the patent manager from obtaining broader claims in the reissue application.

Reissue Risk

There are also several risks to consider before reissuing a patent. One of the more serious risks is that all of the original claims are subject to new grounds of rejections. Even if the original claims are not amended, the Examiner may issue a rejection on all or some of the original claims. If the patent manager fails to overcome all of the rejections or makes new admissions on record to overcome the new rejections, the end result could be a narrower patent or abandonment of the reissue application. Since reissue applications are open to inspection by the public, any new references cited by the Examiner can be easily discovered and possibly used to invalidate the original patent in litigation. Thus, if the original patent covers a core technology or a particular product line, the patent manager should weigh the expected benefits of reissue against the risk that the core technology or product line could 'lose' its patent and becomes vulnerable to copying or knock-off products.

Still another risk with reissue is created by the publication of the reissue application in the USPTO's Official Gazette. A patent savvy competitor may learn of the reissue application and take defensive action to prevent its allowance. For example, the patent laws invite the public to submit to the USPTO any potentially damaging information and prior art against the patent. 37 C.F.R. '1.291. The Examiner may then use these submissions to reject claims of the reissue patent application.

Yet another factor that should be considered in obtaining a reissue is the requirement that the the original patent be surrendered to the USPTO. Once surrendered, the original patent cannot be enforced against an infringer. However, such surrender need not be made until the reissue application is in a condition for allowance. 37 C.F.R. '1.178.

In summary then, obtaining a patent reissue is another way that companies can further sustain and protect their competitive advantages. A well-managed patent development program incorporates reissue analysis to ensure that the reasons a patent was originally filed remain valid and relevant to the company's business objectives.