Today, USPTO Director David Kappos posted a comment advocating the use of the broadest reasonable interpretation standard (BRI) for claim interpretation in post grant review and inter partes review under the America Invents Act. This is a topic of great interest among those conducting post-grant review of patents because of numerous conflicts occuring in practice due to different intepretive standards used in reexamination (now also post-grant review and inter partes review) and litigation.
Archive for the ‘Reissue’ Category
En Banc Decision in Marine Polymer v. HemCon: Amended or New Claims are Candidates for Possible Intervening RightsTuesday, March 20th, 2012
In my earlier post, I summarized the panel opinion in Marine Polymer Technologies, Inc. v. Hemcon, Inc. On September 26, 2011, a panel of the Federal Circuit reversed the district court’s decision, concluding that HemCon had acquired intervening rights in the ‘245 patent based on actions taken in a reexamination proceeding. That opinion was vacated and Marine Polymer’s petition for rehearing en banc was granted on January 20, 2012. In a divided decision, the Federal Circuit en banc affirmed the judgment of the district court.
Last week I had the privilege of speaking on reexamination at the AIPLA Electronics and Computer Law Summit. The title of my speech was “Strategic Use of Reexam after Patent Reform – Post-Grant Review and Inter Partes Review.” The powerpoint presentation materials can be found here. The materials assume that the bill currently pending before the Senate is passed substantially intact. The speech focuses primarily on post-grant review and inter partes review. It also touches on supplemental examination and the proposal to provide PGR-like review of “covered business methods.” We shall see how Congress votes on the bill in September.
On Monday, April 25, 2011, the Federal Register announced a public meeting to solicit opinions on a number of changes being considered at the U.S. Patent Office to streamline both ex parte reexamination and inter partes reexamination proceedings. Written comments can also be submitted to the Patent Office by June 29, 2011.
Some of the questions asked are:
1. Should the USPTO proceed with any efforts to streamline the procedures governing ex parte and/or inter partes reexamination proceedings?
2. Should the USPTO place word limits on requests for ex parte and/or inter partes reexamination?
You might recall that we discussed the BPAI decision in In re Yasuhito Tanaka in an earlier post. On April 15, the Federal Circuit reversed the BPAI decision and remanded the matter for further proceedings in accordance with the opinion. The Federal Circuit held that a patent owner that retains original patent claims and adds new narrower claims in a reissue application does indeed present a type of error correctable by reissue under 35 U.S.C. § 251. (more…)
Suppose you issued a patent with several claims, including dependent claims. Now, suppose you wished you had claimed and issued a certain dependent claim, but did not have it in the originally issued patent. That new dependent claim is narrower than your independent claim that issued, so this is not a case of a broadening reissue. Now suppose that you want to use the reissue statute, 35 U.S.C. 251, but you don’t want to change your independent claim. So you want to add a new dependent claim, but not change or cancel your broad independent claim from which it depends. This is shown graphically in the drawing below: (more…)