Sterne Kessler is a leading law firm for reissue patent applications, having obtained more than 150 reissued patents in the last several decades, frequently in situations where patent enforcement or validity challenges were in progress or on the horizon.
We develop reissue strategy based on our experience prosecuting these specialized patent applications before examiners at the U.S. Patent and Trademark Office (USPTO), handling appeals of reissue application rejections before the Patent Trial and Appeal Board (PTAB), and incorporating reissued patents into litigation strategies.
There are two types of reissue applications: broadening and narrowing. A broadening reissue must be filed within two years of patent issuance; a narrowing reissue can be filed through the expiration of a patent, even if that patent was invalidated in a prior USPTO or federal court proceeding. In the reissue context, broadening and narrowing refer to the scope of the claims of the reissue relative to the claims of the original patent.
Our reissue strategies offer patent owners pathways to optimize their portfolios in several scenarios, including:
- Strengthening or tailoring patent claims before enforcement
- Narrowing claims to survive an invalidity challenge
- Resuscitating a portfolio after invalidation
Reissues offer patent owners a high degree of control over the amendment process relative to other Patent Office procedures. A wide scope of errors can be corrected via reissue, and a long history of developed case law has led to high success rates for patent owners pursuing a reissue strategy. After the initial reissue filing, continuation and divisional reissue applications can be filed to expand a patent family for enforcement or licensing up through expiration of the underlying patent, maximizing patent owners’ portfolio strategy options.