At Sunstein, we use a mix
of strategies to strengthen our clients’ patent position. While we often file
continuation applications for this purpose, in some situations a continuation
application is not pending, and it may be that the original patent is the one
that needs to be buttressed for use in litigation. Lacking a continuation
application, a patent can be strengthened through use of a supplemental
examination, an ex parte reexamination or a reissue patent application. When
our client becomes aware of prior art that may have an impact on the validity
of its patent, we consider bringing the prior art to the attention of the USPTO
for the purpose of obtaining a second review of the patent. It is more
difficult to attack a patent in court if the prior art has already been
reviewed by the USPTO. This is particularly true for a patent that has been
twice approved by the USPTO. Supplemental examination, ex parte reexamination
and reissue all offer the possibility of this second stamp of approval.
Ex parte Reexamination – A
reexamination can be sought in a submission of prior art patents or
publications to the USPTO with a detailed explanation of how they apply to the
claims of the challenged patent. The request for reexamination may be made by a
patent owner for reexamination of its own patent or by a third party. The USPTO
puts the patent through a second examination if it determines that the request
for reexamination has raised a substantially new question of patentability. A
special corps of patent examiners has been assigned to give careful
consideration to such requests. One of the rationales for the existence of
reexamination procedures is to provide a mechanism by which the USPTO can
participate in eliminating invalid patents and improving the quality of
enforceable patents.Reexaminations resemble the original patent prosecution, including office actions and responses, but with compressed response periods and no opportunity for continuation practice. An ex parte reexamination is handled by the patent examiner and the patent owner, without participation of third parties once the proceeding is initiated. We work effectively with the patent examiner to maintain for our clients the broadest patent protection possible and to add additional claims when appropriate.
Supplemental examination – A supplemental examination is a process by which a patent owner may cleanse a patent of inequitable conduct issues with respect to prior art not disclosed during the original prosecution of the patent. If the conduct was egregious, however, material fraud cannot be remedied and may instead result in consideration by the U.S. Attorney General. Inequitable conduct has been a common overly used defense against patent infringement, thus, there may be cases where a patent would benefit from supplemental examination. The patent owner has the ability to present not only prior art patents or publications but also other prior art such as an early offer for sale or public use of the invention. The supplemental examination must be requested before alleging patent infringement in a lawsuit for any inequitable conduct to be purged for purposes of that suit. If the supplemental examination determines that a substantial new question of patentability is raised by any of the prior art, however, an ex parte reexamination will be ordered. Under these circumstances, the reexamination may consider prior art other than patents or printed publications, if such art meets the substantial new question of patentability standard.
Reissue
application – Another approach to strengthening a patent may
involve the filing of a reissue application. A reissue application gives the
patentee, if needed, the ability to fall back on a subsequent continuation or
divisional application to further negotiate with the examiner for broad claim
coverage. If the reissue is applied for within two years of issuance of the
original patent, broader claims than those already issued may be sought. The
filing of a reissue patent application requires identification of an error in
the original patent such as claiming more or less than patentee had a right to
claim. The scope of examination of a reissue patent application is more
extensive than that of a reexamination. The USPTO may go beyond prior art patents
and publications to address other issues of patentability as well. A patentee
who survives reexamination or reissue gains enhanced prospects for litigation
or licensing success.
