Post-Grant Patent Correction and Confirmation Options for Patent Owners
Stoel Rives attorneys Kevin Laurence and Matt Phillips provide a review in Intellectual Property Today of the post-grant options available to patent owners and the relative advantages and disadvantages of each. The U.S. patent system provides a patent owner with several options for changing the scope of claims, correcting a patent's errors, and answering new questions about the patent's validity. Those options include ex parte reexamination, reissue, disclaimer, certificate of corrections, and "corrective" claim construction.
Laurence and Phillips caution that patent owners should systematically review their patents immediately after issuance for errors that require correction via a certificate of correction or a reissue application. They also recommend that claims should be reviewed before the two-year anniversary of the issuance of the patent to determine whether the claims need to be broadened. Finally, they suggest that prior to initiating litigation a patent owner should analyze the need for reopening prosecution via ex parte reexamination or reissue, or making other corrections via a disclaimer or a certificate of correction. Failure to make certain corrections, they argue, may otherwise jeopardize the ability to successfully assert the patent.
"Post-Grant Options for Patent Owners" was published by Intellectual Property Today, January 2010. Subscription required.
Note – Laurence and Phillips also teach a multiday seminar with fellow Stoel Rives attorney Barton Giddings on "Reexamination and Reissue Practice" for the Patent Resources Group. See course link for registration details.