This is the ninth article in my series on the patent prosecution process. This article covers what to do when you have a patent, but decide that you want to have different claims or you want the examiner to consider some potential prior art that somehow never made it into the first application. There are two ways to do this 1) asking the U.S. Patent and Trademark Office (USPTO) to reissue the patent and 2) asking the USPTO to re-examine the patent.
When the inventors make an error in prosecuting the patent, they can ask the USPTO to correct the error. These errors can range from claims being too broad, to claims being too narrow, to a resource not being considered by the examiner. Reissue can be sought at any time, except for enlarging the claims, which can only be done in the first two years after the patent issued. A reissue proceeds in much the same way as an initial examination, unless there is a litigation issue such as a court-ordered reissue proceeding or an interference proceeding. In those cases, the proceedings have a slightly different procedural context and are more adversarial (as the adverse litigant is now seeking and submitting sources). Of course, all reissue proceedings are public and can be adversarial, but that is not usually the case.
A reissue proceeding carries risk, notably, the issued patent must be surrendered to the USPTO and is not enforceable during the reissue proceeding. It may become enforceable during the reissue period because of the “intervening rights” of the inventor after the patent reissues, but that is a complicated issue best handled by a Registered Patent Attorney.
A Registered Patent Attorney can help an inventor navigate this procedural maze and typically charges $1,200 for a simple change such as a change in inventorship to as much as $5,500 for a complete review of the patent. The Law Office of Michael O’Brien is well equipped to help inventors in reissue proceedings to ensure inventors get the patent protection they deserve.
Reexamination is a complicated procedural maze, but essentially, when an inventor locates prior art after the issuance of a patent that raises a substantial new question of patentability, the inventor can seek reexamination of the patent. The inventor raises the new source and explains how the invention is still patentable or is patentable with an amendment to the claims. If the examiner agrees then he or she reissues the patent citing the new source. If the examiner disagrees then reexamination process advances much like an initial patent examination except that panel reviews are conducted at merit stages along with examiner reviews. Reexamination, where it does not involve an appeal to the Board of Patent Appeals and Interferences, typically costs $5,500 to $12,500 much like an initial patent examination.
Much like reissue proceedings, the Law Office of Michael O’Brien is well equipped to help inventors in reexamination proceedings to ensure inventors get the patent protection they deserve.