Introduction: Ex Parte & Inter Partes Reexamination, Reissue, Disclaimer, Certificate of Correction and the New America Invents Act Proceedings

By Eugene T. Perez

Issued patents may be reviewed, corrected, attacked or modified in several ways including: (1) filing a disclaimer (i.e., statutory or terminal); (2) filing a request for a certificate of correction; (3) filing a request for a reissue patent; (4) filing a request for ex parte reexamination of the patent; and (5) filing a request for inter partes reexamination of the patent (as of September 16, 2012, this procedure is no longer available as explained below).  Each of these procedures is utilized to deal with different issues which may arise after issuance of a U.S. patent.  An issued patent may also be modified as the result of (6) a patent interference proceeding under 35 U.S.C. § 135, e.g., if some or all of its claims are canceled as the result of an adverse judgment in the patent interference proceeding (given that the interference is between a patent and application).  However, interference proceedings will end, and be replaced by (7) derivation proceedings starting on March 16, 2013 due to passage of the Leahy-Smith America Invents Act (hereinafter “AIA”).1

The AIA was signed by President Barack Obama on September 16, 2011, and is the most significant reformation of the patent law since 1952 (which included many changes, such as the two-year time limit for filing a broadening reissue).  Final rules were provided by the United States Patent and Trademark Office (“USPTO”) in August and September, 2012.2  The purpose of the AIA and this final rule is to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.

Specifically, the AIA provides several new post grant proceedings that can be filed by the patent owner or a third party, including (8) inter partes review (which replaced inter partes reexamination on September 16, 2012); (9) post-grant review(starting March 16, 2013); (10) post-grant validity review of business method patents (started September 16, 2012); and (11) supplemental examination(started September 16, 2012).  There were no (significant) changes to ex parte reexamination,3 disclaimers and certificate of correction. One significant change for reissue is the deletion of “without any deceptive intention,"4 which overturns previous case law and allows a patent owner to file a reissue application to possibly correct any previous inequitable conduct.

A summary (chart) of the differences between the various post grant proceedings can be found here.

 


  1. Now Public Law 112-29 (Sept. 16, 2011).
  2. There were several notices provided in the Federal Register in August and September of 2012, but see in particular Fed. Reg., Vol. 77, No. 157 pp. 48680-48732 (August 14, 2012).
  3. 35 United Stated Codes (“U.S.C.”) § 306 has been amended to limit the choice of judicial recourse from a USPTO decision.
  4. 35 U.S.C. § 251 (as amended).