Our Boston Patent Attorney can discuss the several options available for the owner of a U.S. patent to make certain changes to a patent after issuance. In general, these changes involve efforts to revise the specification, delete or modify claims, or surrender all or portions of the patent term. In addition, there are certain actions which third parties can take with respect to a patent outside of Court proceedings.
Reexamination
A reexamination is a process filed through the United States Patent & Trademark Office, designed to contest the validity of an issued patent, wherein either a third party or an inventor may have a patent reexamined to verify that the claims of the patent in question are patentable. In order for re-examination proceeding to commence, the third party or inventor must demonstrate to a Patent Examiner that there is a “substantial new question of patentability” based on the submission of prior art not previously considered.
A request for a reexamination may be filed by anyone at anytime while the patent in question is still enforceable. A third party or an inventor must provide an explanation of the new reasons why the patent is invalid based on prior art not previously reviewed by the Patent Examiner, and if the United States Patent & Trademark Office determines there is a new question of patentability, then the patent will undergo re-examination.
Re-issue
A reissue application may be filed to correct an error in an issued patent that occurred without deceptive intent, wherein the original patent claims are too narrow or too broad or the specification of the patent contains inaccuracies. In some cases, narrowing the claims through a reissue application may serve to preserve validity.
However, there are several limits with respect to a reissue patent, including that the reissue application may not introduce new matter into the specification and the reissue claims must stay within the scope of the original disclosure of the invention. Furthermore, if a reissue application seeks to broaden the claims, the application for reissue must be filed within two years after the date of grant of the patent.