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1 month ago | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
Takeaways Estoppel certification in reexamination prevents relitigation of resolved issues. Estoppel’s “reasonably could have raised” standard requires exhaustive prior art searching and strategic planning. As we discussed in our March article, with the recent changes to Patent Trial and Appeal Board (PTAB) procedures for institution of post-grant trials, it is likely that reexamination requests will factor more heavily in post-grant challenge considerations.
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Mar 12, 2025 | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
Takeaways Expired patents may be eligible for reexamination. Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination of expired patents through the end of patent enforceability, the Federal Circuit has precedentially held that PTAB post-grant proceedings could be granted and conducted upon expired patents.
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Mar 10, 2025 | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
Takeaways Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination. “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to obtain. The need for patent reissue or reexamination often occurs late in the enforceable life of the patent or for a newer member of a patent family.
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Feb 26, 2025 | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the USPTO formed the Central Reexamination Unit (CRU) and staffed it with 15 year+ Examiners and legal experts. Later, after the loss of Inter Partes Reexamination in 2012, the USPTO added all newly filed reissue applications to the CRU Examiner’s regime.
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Feb 14, 2025 | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
Takeaways Intra-patent claim inconsistencies are errors correctible via reissue. Subtle legal distinctions in reissue may require PTAB appeals. Patent prosecution errors occur. One such error that occurs is intra-patent claim inconsistencies that render claims indefinite and unenforceable. Precisely this situation occurred in TVnGO Ltd. v. LG Elecs., Inc., 861 F. App’x 453 (Fed. Cir. 2021) (nonprecedential); TVnGO Ltd. v. LG Elecs., Inc., No. 18-10238, 2020 WL 1899781 (D.N.J. Apr. 17, 2020).
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Feb 12, 2025 | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
Takeaways Requestor submissions in reexamination proceedings are exempt from triggering IDS size fees. Correcting filing benefit claims in reissue triggers the new continuing application fee. As we noted in our November article, the USPTO’s newly implemented (January 20, 2025) information disclosure statement fee applies to both reissue applications and reexamination proceedings.
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Feb 3, 2025 | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the USPTO formed the Central Reexamination Unit (CRU) and staffed it with 15 year+ Examiners and legal experts. Later, after the loss of Inter Partes Reexamination in 2012, the USPTO added all newly filed reissue applications to the CRU Examiner’s regime.
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Dec 3, 2024 | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
Takeaways: Patent owners must now fund review of information disclosed to Office in reexamination and reissue. The new fees do not appear to apply to third-party reexamination requesters. According to recent U.S. Patent and Trademark Office (Office) data, the Office receives a burdensome number (13%) of information disclosure statements (IDSs) having in excess of 50 total items of information. 89 Fed. Reg. 91,898, 91,924 (Nov. 11, 2024).
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Dec 2, 2024 | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
Takeaways: Recent MPEP amendments clarify the Recapture doctrine, narrowing the scope of what claim features can be broadened in a reissue application. Examiners to consider all prior amendments and arguments as potential surrender of subject matter. Patent Examiners rely upon the Manual of Patent Examination Procedure (MPEP) to instruct application of the law to the most common patent prosecution situations.
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Nov 27, 2024 | 
jdsupra.com | Jason Eisenberg |Jessica Harrison
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the USPTO formed the Central Reexamination Unit (CRU) and staffed it with 15 year+ Examiners and legal experts. Later, after the loss of Inter Partes Reexamination in 2012, the USPTO added all newly filed reissue applications to the CRU Examiner’s regime.
