Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – June 2024

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.

Sterne Kessler’s utility and design reissue, reexamination, and supplemental examination team will share practice tips and insights into prosecuting these proceedings before this specialized examination group within the USPTO.

This month, we discuss the duty of disclosure between an applicant/patent owner and the U.S. Patent and Trademark Office (USPTO) as well as the reissue recapture doctrine and its application in reissue applications. All articles are co-authored by Jessica Harrison, a 25+ year USPTO veteran and former CRU Supervisory Patent Reexamination Specialists.

In This Issue:

• Submitting Trade Secret, Proprietary, and Protective Order Materials in Reexamination and Reissue
• The Reissue Recapture Doctrine

The CRU Insider’s Tip of the Month: When drafting proposed rejections for Reexamination requests, do not lump together multiple proposed alternative rejections that are based upon different legal statutes or pieces of prior art, i.e., grounds. For example, do not state claims 1-10 are rejected under 35 U.S.C. § 102 and/or 35 U.S.C. § 103 based upon the patent to Smith or Smith and/or Jones or Smith2. Rather, draft separate rejections, one under each ground, to meet the “detailed explanation” requirement of 37 C.F.R. § 1.510.