What are intervening rights in patent law?

“Equitable” intervening rights is a matter of judicial discretion and protects a party from liability based on infringement of new or modified claims even for accused products made or used after the patent reissues, if the party made substantial preparations for the infringing conduct before reissue.

Can you assert a patent in reissue?

Notably, the patent owner can simultaneously assert the original patent against infringers of the current claims even while the patent is in reissue. See MPEP § 1416; 37 CFR § 1.178. This remains true even when infringers file a challenge to patent validity via the USPTO’s Inter-Partes Review proceedings (IPR).

Does a reissue patent replace original patent?

In some instances, more than one reissue patent will be granted to replace a single original patent. The issuance of more than one reissue patent does not alter the schedule of payments of maintenance fees on the original patent.

What is a broadening reissue patent?

A broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent.

What is a reexamination patent?

Patent reexamination provides a means for a third party to challenge an issued patent in the US Patent & Trademark Office (USPTO). Additionally, reexamination can provide a patent holder with a means to potentially bolster an issued patent. For example, by having newly discovered prior art considered.

What happens to original patent in reissue?

35 U.S.C. 252 mandates that “[t]he surrender of the original patent shall take effect upon the issue of the reissued patent.” After that point in time, the original patent ceases to exist, and no subsequent applications for its reissue can be made.

What is ex parte reexamination?

Ex parte reexamination is a tool that allows a patent owner or a third party to lodge a request for the United States Patent Office (USPTO) to reexamine an already-granted patent based on other patents and publications that they bring to the USPTO’s attention.

When can you file a reexamination?

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 under the provisions of section 301.

Does reexamination affect patent term?

Reissue allows patent owners to correct errors in U.S. patents. Reexamination allows anyone to test the validity of a U.S. patent. Neither procedure affects the original patent until either a reissue patent is granted or a reexamination certificate is issued.

What is reexamination patent?

What is patent reexamination?

How long does a patent reexamination take?

The second Office Action in the reexamination proceedings is made final. The CRU has an internal goal of issuing a Final Office Action within two years from the filing date of the request. The period for response to a final rejection is usually two months, but it can be shortened to one month.

What are intervening rights under patent law?

Patent law allows for “intervening rights,” or rights to would-be infringers of issued patents, under two very specific circumstances. These circumstances include those when the scope of a patent is changed by either reissue or reexamination. Fairness to the would-be infringer is the essence of intervening rights.

What is an intervening reissue of a patent?

REISSUE . In the reissue statute, 35 U.S.C. 252, two types of intervening rights are established. In a reissue, the patent owner asks the patent office to allow for additional claiming of subject matter that while supported in the original disclosure, was defectively claimed, or inadvertently not claimed.

What is the logic of intervening rights?

The logic of intervening rights is the assumption that “a patentee having valid claims in a patent will retain those claims in the reissued patent.“ 34 Stated differently, “the making of substantive changes in the claims is treated as an irrebuttable presumption that the original claims were materially flawed.“ 35

Should patentees consider intervening rights before post-grant procedure?

In the wake of the AIA, patentees must carefully consider the application of intervening rights before they decide to pursue a post-grant procedure.