Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – October 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 dismissed petitions and the evolution of the meaning and historical developments of “substantial new question.”

In This Issue:

• • How Petitions Affect Reexamination and Reissue Prosecution and Clarification of a Dismissed Petition
  • Historical Development of Substantial New Question Contrasted with the New Section 325(d) Criteria

The CRU Insider’s Tip of the Month: Reissue cannot be used solely to review the patent based on new prior art. However, Reissue may be used to add a narrowing dependent claim to the patent (a correctible error), and the new prior art cited for consideration on an IDS statement.