Published 08/16/2018 by Staff
There are five primary ways in which a patent can be corrected or affected after it has been issued, wherein the proceedings are handled by the Central Reexamination Unit (CRU), although the first two that will be discussed do not actually involve a reexamination of the patent in question (despite the name Central Reexamination Unit). These five ways of correcting or affecting a patent are: statutory disclaimers, certificates of correction, reissue, ex parte reexamination, and supplemental examination. Other ways of affecting a patent after issue include trial proceedings that are conducted by the Patent Trial and Appeal Board, and include inter partes review, post grant review, and covered business method review. If a patent owner is aware of any issue or error in their patent, they must choose the correct route for addressing those issues or errors.
Before the formation of the CRU, requests for reexamination would be routed back to the art unit that originally worked on that patent. These requests were uncommon when compared to the typical examination work that examiners performed in their day-to-day work, and thus, the examiners were not always familiar with reexamination proceedings. When the CRU was formed in 2005, the centralization of these types of requests allowed experienced examiners dedicated to the reexamination of patents to become specialized in these matters. Another advantage of the CRU is that it helped to eliminate some of the bias that might be present when a reexamination request went back to the art unit that issued a patent, since the older system might have caused a reluctance to admit the art unit had issued an erroneous patent.
The statute, in 37 CFR 1.321, allows a patent owner to disclaim any complete claim or claims, or patent. There are a few reasons why an owner might want to do so, and an example is to reduce issues during court proceedings. A fee is required for a statutory disclaimer.
More information about statutory disclaimers can be found in MPEP chapter 1490.
Certificate of correction
Minor errors in a patent can be fixed by filing a certificate of correction. The CRU reviews the error, and if the error was the fault of the USPTO, there will be no associated fee. Errors made by the applicant must be corrected with a fee.
The types of errors that the certificate of correction is used for is limited and include only minor errors such as typos or spelling mistakes, and as such, the terms of a claim cannot be corrected by using a certificate of correction.
More information about certificates of correction can be found in MPEP chapter 1481.
A reissue is used for making more substantive changes or corrections than a certificate of correction is used for. It is an option that is only available to patent owners, and it requires a fee. For a reissue to take place, the errors that are to be corrected must be errors that would render the patent wholly or partly inoperative, or invalid. If the patent was assigned, it is required to file a consent of the owner for the reissue.
During a reissue, additional dependent or narrower claims can be added. However, there is a limitation to adding broadening claims. A broadening reissue must be filed within two years from the grant of the original patent. If an amended claim is broader in any respect than the original claim – even if it was narrowed in other respects – the claim has been broadened. To understand how “broadening” is defined, an “infringement test” can be used, which is: if someone infringes on the amended claim, but was not previously infringing on the original claim, then the claim has been broadened.
Since the reissue is only for the unexpired portion of a patent’s term, if a patent were to expire during the course of a reissue prosecution, the proceedings are terminated. This is not the same for reexamination, which could affect the entire period of enforceability of a patent.
More information on reissues can be found in MPEP chapters 1410, 1410.01, and 1411.
Ex Parte Reexamination
Under the reexamination statute 35 U.S.C. 302, “Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited.” This means that the patent owner or a third party (who receives copies of all communications from the Office during the reexamination proceeding) can file the request, and the requester can remain anonymous. The reexamination can be requested for one or more claims, and the general practice of the CRU is to examine only those claims that were requested. This reexamination will be on the basis of prior art only, meaning that other issues, such as 35 U.S.C. 112 issues, cannot be addressed.
The process begins with the filed request, which, if it was proper, is given a filing date. A proper request must be in writing, accompanied by a fee, and must be based only on printed publications or patents – it cannot be based on, for example, an affidavit or other such evidence. These can be used, but not as the basis, and can only be used to support the prior art that the reexamination is based upon.
The threshold for initiating the reexamination proceeding after the request is filed is called a “substantial new question of patentability” (SNQ). A determination of whether or not SNQ has been raised must be made by the Office within three months. If the examiner determines that an SNQ is raised, then the examiner will order the reexamination; otherwise, the request is denied. A patent owner can have the opportunity to make a statement (or waive the right to do so), and a third party filer may comment on that statement. Afterwards, the third party will have no role in the reexamination proceeding. Then, the reexamination is conducted much like the examination process of a patent application, with a few exceptions. For one, no Request for Continued Examination is offered – there is only one opportunity to amend as a matter of right. Another difference during the examination process is that the reexamination uses “special dispatch,” which means that extensions of time are not automatic and are only granted with cause, and times for reply can be shortened (particularly the case when the patent is involved in a court proceeding). Another important difference is that amendments cannot be broadening during a reexamination. The proceeding concludes with a certificate of reexamination.
More information on ex parte reexamination can be found in MPEP chapter 2209.
Supplemental examination came about with the America Invents Act (AIA), and can only be filed by the patent owner. A primary difference between supplemental examination and an ex parte reexamination requested by the patent owner is that in an ex parte reexamination, only prior art issues can be raised; in supplemental examination, all issues can be raised, including issues related to subject matter eligibility of 35 U.S.C. 101 or written description requirements of 35 U.S.C. 112. The patent owner can request that the Office “consider, reconsider, or correct information believed to be relevant to the patent,” according to the statute, 35 U.S.C. 257.
There are two phases of supplemental examination. The first is the supplemental examination phase, and a second reexamination phase that could result from the findings of the first phase. The reexamination generally proceeds similarly to the reexamination of the ex parte reexamination discussed above, with a few exceptions. Notably, the reexamination is not limited to prior art issues.
The supplemental examination does not involve any interaction between the requester and the Office, and concludes with a certificate to indicate whether or not the “items of information” provided by the patent owner (which are limited to twelve) raised an SNQ. Like in ex parte reexamination, the Office must make this determination within three months.
A primary advantage of supplemental examination for a patent owner is that it provides the owner with a potential mechanism for immunizing themselves against allegations of inequitable conduct. That is, when information is considered, reconsidered, or corrected during this process, the patent cannot be “held unenforceable on the basis of conduct relating” to this information (35 U.S.C. 257(c)(1)). Thus, it can be advantageous for a patent owner in some situations to request a supplemental examination, particularly over an ex parte reexamination if items of information are available which are not based on printed publications or patents.
More information about supplemental examination can be found in MPEP chapter 2802.
The USPTO website for the CRU can be found at: https://www.uspto.gov/about-us/organizational-offices/office-commissioner-patents/office-deputy-commissioner-patent-37.html
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
CIONCA IP TEAM (BR)1/19/2021 4:57:54 PM
QuikTrip West, Inc. v. Weigel Stores, Inc.
CIONCA IP TEAM (AP)12/7/2020 4:06:28 PM
St Jude Medical LLC v Snyders Heart Valve LLC
CIONCA IP TEAM (SE)12/1/2020 5:07:58 PM
Allen v. Cooper, Governor of North Carolina
CIONCA IP TEAM (JM)10/8/2020 2:57:24 PM
Royal Crown Company Inc., Dr. Pepper/Seven Up Inc., v The Coca-Cola Company
CIONCA IP TEAM (SG)10/6/2020 2:42:35 PM
Apple, Inc., v. Voip-Pal.com, Inc.: Sanction Orders and Obviousness
CIONCA IP Team (SE)9/16/2020 4:21:45 PM
CIONCA IP Launches New Online Patent Website
CIONCA IP Team9/15/2020 5:11:49 PM
Comparing Apples to Apples: TTAB on In re Horizon Group USA, Inc.
CIONCA IP Team9/3/2020 4:30:41 PM
D2 Holdings v. House of Cards
CIONCA IP Team8/31/2020 12:09:17 PM
Blackbird Tech LLC, DBA Blackbird Technologies, v. Fitbit, Inc., Wahoo Fitness LLC: Obviousness
CIONCA IP Team8/11/2020 11:56:24 AM
Adidas AG v. Nike INC.
CIONCA IP Team7/20/2020 7:40:21 PM
Fitbit Inc. v. Valencell Inc.: Joint Parties in IPR Proceeding
CIONCA IP Team7/14/2020 7:51:31 PM
CIONCA IP Launches New Online Trademark Website
CIONCA IP 5/19/2020 7:36:30 PM
Uber Technologies, Inc. v. X One, Inc.: “Obvious to Try” Rationale
Marin Cionca4/15/2020 4:41:43 PM
The Day After COVID-19 Pandemic – Hope or Fear?
CIONCA IP4/13/2020 9:33:36 PM
Two of a Kind: TTAB on Shannon DeVivo v. Celeste Ortiz
CIONCA IP3/16/2020 8:43:10 PM
GS CleanTech Corporation v. Adkins Energy, LLC: Inequitable Conduct
CIONCA IP3/10/2020 7:45:30 PM
Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc.
Marin Cionca2/9/2020 7:46:10 PM
Analogous Prior Art or Not? A critical patent obviousness question
CIONCA IP 1/15/2020 4:47:19 PM
FOX Factory, Inc. v. SRAM, LLC: Presumption of Nexus
CIONCA IP 1/9/2020 4:43:58 PM
The Bigger Picture: TTAB’s Decision in In re James Haden, M.D., P.A.
CIONCA IP 12/31/2019 4:29:41 PM
The Chamberlain Group, INC. v. One World Technologies, INC.
Marin Cionca12/9/2019 8:07:20 PM
A “glove” approach to patent claim construction
11/15/2019 8:15:11 PM
Liqwd, Inc. v. L’Oreal USA, Inc.: Objective Indicia and Copying
CIONCA IP10/16/2019 1:28:13 PM
To Use or Not to Use: The Statutory Period of Trademark Nonuse Prior to Presumed Abandonment
CIONCA IP10/7/2019 5:44:50 PM
A Decision in Henny Penny Corporation v. Frymaster LLC
Marin Cionca9/27/2019 9:32:48 PM
Can an Online Patent Attorney File My Patent?
CIONCA Team Member9/4/2019 7:20:46 PM
Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries
CIONCA Team Member8/19/2019 7:46:17 PM
In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction
CIONCA Team Member8/5/2019 2:29:33 PM
Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation
CIONCA Team Member7/5/2019 2:22:42 PM
In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications
CIONCA Team Member6/27/2019 7:41:52 PM
Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.
Marin Cionca6/11/2019 8:43:17 PM
Can I Successfully License My Invention?
CIONCA Team Member5/20/2019 8:25:57 PM
PTAB Designates Cases as Precedential
CIONCA Team Member5/7/2019 7:13:41 PM
The Federal Circuit Defines a Technological Invention
Marin Cionca4/17/2019 3:48:33 PM
What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?
CIONCA Team Member4/3/2019 7:25:37 PM
The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential
CIONCA Team Member3/21/2019 3:49:43 PM
Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.
Marin Cionca3/1/2019 9:36:50 PM
USPTO Director Andrei Iancu Visits Orange County!
CIONCA Team Member2/19/2019 7:12:46 PM
Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims
CIONCA Team Member2/5/2019 7:22:27 PM
TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC
Marin Cionca1/23/2019 9:45:30 PM
Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent
CIONCA Team Member1/4/2019 4:12:21 PM
In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement
CIONCA Team Member12/18/2018 6:12:48 PM
Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname
Marin Cionca12/8/2018 8:35:06 PM
IP Assets - Procurement, Enforcement, Monetization
CIONCA Team Member11/19/2018 1:07:51 PM
The Appeals Process
CIONCA Team Member10/16/2018 6:50:31 PM
A Double-Edged Sword: Benefit of Priority or Longer Patent Term
Marin Cionca10/1/2018 7:42:12 PM
Can I Register a Color as a Trademark or Service Mark?
CIONCA Team Member9/17/2018 4:33:20 PM
Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.
Staff8/31/2018 7:26:58 PM
Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout
Staff8/16/2018 4:24:01 PM
Correcting or Changing a Patent After Issue Through the Central Reexamination Unit
Marin Cionca7/31/2018 6:50:05 PM
My patent expired? Can I still sue for patent infringement?
7/3/2018 7:44:33 PM
Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation
CIONCA IP5/17/2018 9:54:58 PM
Marin Cionca Presents at OCIPLA May 2018 Luncheon
5/4/2018 7:37:51 PM
The Hague System for Protection of International Designs
CIONCA Staff4/20/2018 5:25:25 PM
USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
CIONCA Staff4/13/2018 9:10:04 PM
It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision
3/20/2018 12:50:05 PM
Andrei Iancu - New Director of the USPTO
3/8/2018 1:25:46 PM
Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance
CIONCA Team2/16/2018 4:07:48 PM
Fashion and Intellectual Property
CIONCA Team1/17/2018 8:12:06 PM
A Fork in the Road: Production or Protection?
1/2/2018 7:47:09 PM
The Lanham Act: Disparagement Provision Violates the First Amendment
12/26/2017 6:04:25 PM
CIONCA Sets Foot in San Francisco
12/1/2017 8:01:27 PM
An Introduction to Patent Cooperation Treaty Applications
11/17/2017 1:24:20 PM
An Introduction to Patent Searches
11/10/2017 6:47:44 PM
An Introduction to Design Patent Applications
Staff11/3/2017 4:20:04 PM
An Introduction to Provisional Patent Applications
Staff9/28/2017 7:27:22 PM
staff9/27/2017 5:12:07 PM
CIONCA - Patent and Trademark Law Attorney
staff9/27/2017 5:00:12 PM
Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience
staff9/15/2017 9:33:30 PM
CIONCA Staff8/20/2017 3:16:11 PM
CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
CIONCA - Staff8/9/2017 5:39:58 PM
Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable
CIONCA - Staff6/28/2017 8:26:07 PM
Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution
CIONCA - Staff6/15/2017 5:32:14 PM
Patent Law: Challenging the Patent Claim Definiteness Requirement
Marin Cionca4/25/2017 9:48:49 PM
Monetization of Patents: How to Make Money with Patents
Marin Cionca2/21/2017 12:30:52 AM
Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable
Marin Cionca9/15/2016 9:47:39 PM
Patent Law Alert: Federal Circuit Opens Door for More Software Patents
Marin Cionca9/6/2016 9:26:12 PM
Patent Case Law: New Example of Software as Patentable Subject Matter
Iris Kim, PhD6/1/2016 7:04:50 PM
The Patent Trial and Appeal Board Designates Five More Decisions as Precedential
Marin Cionca5/17/2016 8:57:23 PM
Patent Claims Rejection Based on Inherency
Iris Kim, PhD3/25/2016 8:34:14 PM
Challenging a Claim’s Validity with Different Standards of Claim Construction
I. Kim PhD2/26/2016 8:47:51 PM
The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
Marin Cionca2/16/2016 6:34:53 PM
In IPRs, patentees have to show that substitute patent claims are patentable
M. Cionca and I. Kim2/4/2016 5:55:16 PM
Software Inventions Are Still Patentable!
Marin1/28/2016 9:15:16 PM
The Patent Trial and Appeal Board Designates Two Decisions as Precedential
Marin1/28/2016 9:10:56 PM
How Unpredictability Can Affect Obviousness Challenges
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial Industry
Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject Matter
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.
We’d love to hear from you…we just need a little info
about your plans to take over the world!
P.S…Feel free to call us! (800)985-9198
Thank you for your message. We will respond within 24-72 hours. Thank you.