CORRECTION OF ISSUED PATENTS

Transcription

1 CORRECTION OF ISSUED PATENTS 2012 IP Summer Seminar Peter Corless Partner July Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP Types of Correction Traditional 1. Certificates of Correction 2. Inventorship Correction 3. Disclaimers 4. Reissue 5. Reexamination Non-traditional 6. Supplement file history 7. U.S. continuation applications 8. Prosecution/opposition results outside U.S. 1 1

2 Types of Correction cont d New Post-Issuance Proceedings Post Grant Review Inter Partes Review Ex Parte Reexamination Supplemental Examination 2 Certificates of Correction Categories: 1. PTO mistake: 35 U.S.C. 254; 37 CFR Applicant s mistake: 35 U.S.C. 255; 37 CFR

3 Certificates of Correction cont d Types of corrections: Generally limited to correction of errors that are apparent from file history Can not introduce new matter, require reexamination or broaden a claim In re Arnott, 19 USPQ2d 1049 Can be used to perfect claim for U.S. or foreign priority 4 Certificates of Correction cont d Effect of correction: Retroactive to patent issue date 5 3

4 Inventorship Correction 35 U.S.C. 256: inventorship correction permitted: In all misjoinder cases that are in error Request for correction must be made by all parties and assignees 37 CFR 1.324: details of request for correction 6 Disclaimers Types: Statutory Disclaimer Terminal Disclaimer 7 4

5 Disclaimers cont d Statutory: Can disclaim one or more claims Will not purge inequitable conduct J.P. Stevens & Company v. Lex Tex Ltd., 223 USPQ 1089 (Fed. Cir. 1984) 37 CFR 1.321: details of disclaimer request 8 Disclaimers cont d Terminal Disclaimers: See lecture on Double Patenting Remember: Reference patent must be in force to obviate non-statutory double patenting rejection via Terminal Disclaimer However, expired or disclaimed patent can continue to serve as a double patenting reference Eli Lilly v. Barr Laboratories, 58 USPQ2d 1869 (Fed. Cir. 2001) In re Lonardo, 43 USPQ2d 1262 (Fed. Cir. 1997) 9 5

6 Reissue Variety of errors may be corrected: Claims broadened and/or narrowed Translation errors Other disclosure errors Including: amino acid and nucleic acid sequences where basis exists for correction such as where deposit has been timely made Benefit to priority application Inventorship Invoke interference against other issued patent Note, USPTO interference jurisdiction does not extend to two issued patents 10 Reissue cont d Limitations of reissue correction: 2-year deadline for filing broadening reissue No new matter Recapture prohibition rule: in at least some situations, can not obtain claims that were cancelled in original patent to obtain allowance Pannu v. Storz Instruments, 59 USPQ2d 1597 (Fed. Cir. 2001) Can not cure failure to file divisional application (i.e., can not pursue non-elected, restricted claims in reissue) In re Orita, 192 USPQ 145 (CCPA 1977) Inequitable conduct generally may not be purged through reissue In re Clark, 187 USPQ 209 (CCPA 1975) 11 6

7 Reissue cont d Effect of correction: Intervening rights possible 35 U.S.C Reexamination Can be instituted by anyone (patent owner, any third party, USPTO) where: a substantial new question of patentability affecting any claim of the patent concerned is raised by the [reexamination] request (Compare to reissue where can be instituted only by patent owner) Patentability determination is limited to consideration of patents and printed publications Thus, other grounds of defeating patentability or enforceability e.g., public use, sale, offer for sale, inventorship, issues under 35 U.S.C. 112, inequitable conduct will not be considered be considered in reexamination 13 7

8 Reexamination cont d: Ex partes and Inter partes reexamination available Inter partes reexamination has been rarely utilized 14 Supplementing file history Consider filing newly discovered prior art, conflicting inventorship positions, etc. in the file history after patent issuance, or after payment of issue fee Will not be considered by USPTO by can place patent owner is favored position by full disclosure to the public 15 8

9 U.S. Continuation Applications and Prosecution/ Opposition Results Outside U.S. After patent issuance, can establish patentability for same or similar claims over new issues (e.g., newly discovered prior art, new issues under 35 U.S.C. 112, inventorship questions, etc.) in U.S. continuation application or corresponding application outside U.S. 16 Post Grant Review Analgous to EPO Opposition Third party challenge within 9 months after patent issuance Any ground of invalidity may be raised Different from reexaminations or inter partes review Conducted by the Patent Trial and Appeal Board (formerly BPAI), not the Central Reexam Unit. Board decides within 3 months whether or not to grant the petition Standard to initiate: preponderance of the evidence, i.e., more likely than not that at least one claim of the challenged patent is unpatentable. No strawman (must identify real parties in interest) 17 9

10 Post Grant Review cont d. Pros: Cheaper than litigation (e.g., DJ) and relatively fast (12 mths) Some discovery available; lower legal standard Patentee can only amend claims once Cons: Higher PTO fees and broad estoppel provision Estoppel One cannot raise any ground of unpatentability in a subsequent litigation that was raised or reasonably could have been raised during the review Broad effect (any ground; not limited to 102/103) Effective 16 September 2012 but applies only to certain business method patents involving financial transactions. Applies to all other patents with effective filing date on or after March 16, Inter Partes Review Replaces Inter Partes reexamination Third party challenge cannot be filed until later of: 9 months after patent or reissue, or Date of termination of Post Grant Review Can only be based on patents or printed publications Standard: Preponderance of the evidence, not clear and convincing of district courts (same in all post grant PTO actions) May be terminated/settled Similar pros and cons but Estoppel not as broad as Post Grant Review Effective Date 16 September 2012 but covers all patents 19 10

11 Ex Parte Reexamination Existing proceeding, relatively unchanged by AIA Any party may challenge during the life of the patent Director determines whether there is a substantial new question (SNQ) of patentability What qualifies as evidence for ex parte reexamination Patents Printed publications In all post grant reviews, one can use any statements about scope of claim made by patent owner before a Federal court or USPTO 20 Supplemental Examination New proceeding under AIA Limited to patent owner s request Used to consider or correct any information believed to be relevant to the patent Director determines if the request raises at least one SNQ of patentability Can be used to correct unenforceability of patent If based on prior art, is converted to ex parte reexamination May be important on licensed in inventions 21 11