Post-Grant Patent Correction

To continually optimize IP strategy, companies often employ post grant corrective proceedings to proactively address areas of concern in their patent portfolios. Starting from a position of leading Patent Office experience and expertise, Sterne Kessler develops comprehensive patent strategies to strengthen portfolios and provide potential mechanisms to protect against future patent challengers.

Sterne Kessler’s experience before the U.S. Patent and Trademark Office (USPTO) extends well beyond our highly regarded patent prosecution practice. Our current team of attorneys and patent agents includes 16 former patent examiners. Several of our attorneys provide guidance for general developments at the USPTO and lend particular insight into the most critical post grant proceedings, including a past vice chair of the Patent Public Advisory Committee, a former Lead Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB), and a past Supervisory Reexamination Specialist in the Central Reexam Unit. We leverage our experience across the firm to identify opportunities for patent owners to maintain control of their portfolios. We strength test and identify areas of concern in portfolios in anticipation of litigation or licensing, and provide opportunities to correct issues before an adversary raises an issue on their own terms. The procedures in our toolbox include:

Ex Parte Reexamination

Reexamination offers patent owners an opportunity to raise substantial new questions about the patentability of issued patents.

• Initiating a patent owner reexam allows the patent owner to set the terms for the proceeding
• Patent owners have the opportunity to add and amend claims
• A well-crafted reexam request can promote a quick resolution of the reexamination

Reissue

Reissue prosecution practice, amending claims through a specialized examination procedure, offers patent owners several options for optimizing their portfolios:

• Strengthening or tailoring patent claims before enforcement
• Resuscitating a portfolio after invalidation
• Narrowing claims to survive an invalidity challenge

Supplemental Examination

Supplemental examination gives patent owners an opportunity to submit information to the Office that may be relevant to the validity of the patent.

• Can proactively address prior art and other patentability issues
• Scope of proceeding includes the ability to potentially cure issues related to inequitable conduct
• If the USPTO determines that the submission raises a substantial new question of patentability, the proceeding converts into a reexam