Patent Reexamination & Reissue

At some point after successfully receiving a patent on your invention, you may decide that you wish to add claims, or want a patent office examiner to consider prior art that wasn’t included in the initial application. Typically, there are two ways of accomplishing this:

 

  1. Asking the U.S. Patent and Trademark Office (USPTO) to reissue the patent.
  2. Asking the USPTO to reexamine the patent.

 

The Patent Reissue Process, and Potential Problems

You may want to revisit your patent because you made an error in your original patent application. These errors can range from claims being too broad or narrow, to a resource not being considered by the examiner. Reissue can be sought at any time, except for when it involves enlarging the claims, which can only be done within two years of the original patent issue date.

 

A reissue proceeds in much the same way as an initial patent examination, unless there is a litigation issue such as a court-ordered reissue or interference proceeding. In these cases, the proceedings have a slightly different procedural context, and are more adversarial, as the adverse litigant will be seeking and submitting sources to undermine your patent. Of course, all reissue proceedings are public and can potentially be adversarial, but this is rare.

 

A reissue proceeding carries some risks. Notably, the original patent must be surrendered to the USPTO, and is not enforceable during the reissue proceeding. It may become enforceable during the reissue period because of the ‘intervening rights’ of the inventor after the patent reissues, but this is a complicated issue best handled by a registered patent attorney.

 

A registered patent attorney can help an inventor navigate this procedural maze, and typically charges from $1,200 for a simple patent change, such as a change in inventorship, to as much as $5,500 for a complete review of the patent. The Law Office of Michael O’Brien is well equipped to help inventors in reissue proceedings to ensure inventors get the patent protection they deserve.

 

Getting Help With Patent Reexamination

 

Reexamination is a complicated procedural maze. Essentially, if an inventor locates prior art—after the issuance of a patent—that raises a substantial new question of patentability, the inventor can try and preempt potential legal challenges by seeking reexamination of the patent.

 

The inventor brings forth the new source of information, and explains how the invention is still patentable, or is patentable with an amendment to the claims. If the examiner agrees, then he or she reissues the patent, this time including the new source of prior art.

 

If the examiner disagrees, then the reexamination process advances in much the same manner as an initial patent examination, except that panel reviews are conducted at merit stages, along with examiner reviews. Reexamination, where it does not involve an appeal to the Patent Trial and Appeal Board, typically costs $2,500 to $12,500. The Law Office of Michael O’Brien is well equipped to help inventors in reexamination proceedings get the patent protection they deserve.

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