Our Approach to Strengthening Patents

by Timothy M. Murphy and Robert M. Asher

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.