"An Overview: Post Grant Patent Proceedings, Reexamination, and Reissue"
Hello my name is Tim Maier; I’m here to speak to you today about a brief overview of Post Grant Patent Proceedings. They come in a couple different flavors; there’s a reissue, there’s an ex parte reexamination, there’s a inter parte reexamination. First, the reissue: a broadening reissue must be done within two years of the patent issuing; a non- broadening reissue can be done at any time. Reissue deals with some subsinative claim issues. There’s also something called a certificate of correction; that can be done in any time, but usually is dealing with minor informalities, typographical errors that kind of thing.
Another common Post Grant Proceeding is ex parte reexamination. We call this the scud missile. You put together prior art and you have one opportunity as a third party requestor; anyone in the world can do this. Submit your prior art, you have to explain to the patent office why the prior art is relevant to the patentability of those claims. The patent office typically has about 90 days to make a determination on whether or not if they will grant that reexamination. It is called the scud missile because after we submit the reexamination showing them our prior art and explaining it, its fire and forget it, you have no more ability to participate that proceeding.
Inter parties reexamination on the other hand is a newer tool in the patent office post grant system. Whereby you can continue participation all throughout the reexamination proceedings; you put together an ex parte reexamination with your papers, you would explain your prior references, submit them to the patent office, and the patent office grants it most of the time (right now its about 90 percent of the time). The patent owner will then respond and you have the ability to respond to the patent owner’s response to stay involved in the procedure, call out the patent owner’s arguments, and make counter arguments explaining why the patent owner’s incorrect, and why the examiner should invalidate or narrow their claims.
I’m Tim Maier thank you for listening to this video on post grant proceedings in the patent office.
Patent Informational Videos Menu