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Argument-Based Estoppel in Reexamination and Reissue



By Matthew C. Phillips and Kevin B. Laurence of Stoel Rives LLP

Their treatise titled “Post-Grant Patent Practice:  Review, Reexamination, Reissue and Supplemental Examination” will be available in 2012 from the Patent Resources Group. Their CLE course of the same name will be taught March 29-31 in Bonita Springs, Florida.

As every patent attorney knows well, arguments made during prosecution can affect how a court later construes the claims of a patent. The same is true when the arguments are made in reexamination or reissue. That should be neither surprising nor controversial. Until recently, arguments in reexamination or reissue were thought to have no more consequences than if the same arguments were made in original prosecution. However, a recent case gave greater effect to arguments in reexamination, applying intervening rights and the damages limitations of 35 U.S.C. § 252 on the basis of arguments made in reexamination. This article discusses the various consequences that flow from arguments made by a patent owner in reexamination or reissue.

TRADITIONAL ARGUMENT-BASED ESTOPPEL EFFECTS

The prosecution history during reexamination or reiss...

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