By Kevin B. Laurence and Matthew C. Phillips of Stoel Rives LLP | Kevin Laurence and Matt Phillips are partners at Stoel Rives LLP. They authored a treatise titled “Patent Reexamination and Reissue Practice,” from which they teach a multi-day course for Patent Resources Group. Kevin’s technical focus is pharmaceuticals, chemistry, and medical devices; Matt’s is electronics and computer technologies. They can be reached at kblaurence@stoel.com and mcphillips@stoel.com. |
The U.S. patent system provides a patent owner with several options for changing the scope of claims and correcting a patent's errors ranging from obvious typographical errors to those
that
impact validity. The correction tools available to a patent owner include ex parte reexamination,
1 reissue,2
disclaimer,3 certificate of correction,
4 and "corrective" claim construction. All
but the latter are post-grant proceedings at the PTO. Ex parte reexamination and reissue entail reevaluation
by the PTO regarding the patentability of the claims, whereas disclaimer and certificate of correction do not
reopen prosecution. The diagram below illustrates the circumstances under which these options are available,
and this article discusses those options and their relative advantages and disadvantages.
Although some errors may not meaningfully detract from the subject matter described and claimed
in a patent, the failure to make a correction may place an undue burden of explanation or proof upon the patentee
during litigation. Making the correction before the patent is a...
