Post-grant reissue and reexamination proceedings at the U.S. Patent &Trademark Office (“PTO”)allow patentees the opportunity to fix mistakes in their patents and to address prior art that may not have been before the PT during the original prosecution. These proceedings, however, pose a continuing danger to competitors in the relevant industry and to their counsel. In many instances, claims are narrowed during are issue or reexamination proceeding to overcome prior art that would have invalidated the originally issued claims.

Unsuspecting competitors who have continued to market a certain product based upon advice that the original patent was invalid may face the real possibility of:(i) paying infringement damages on a going forward basis after the reissue or reexamination proceeding concludes; and/or (ii) an injunction barring future marketing. As such, practitioners should be cautious when counseling a client to move forward with a product based solely upon invalidity of a relevant patent, always being mindful that claims may be narrowed in the future through a reissue or reexamination proceeding in such away so as to preserve their validity.

PRACTICE TIPS

Upon reflection, one may question the propriety of this result. A strong argument can be made that the patent laws should be changed to grant additional intervening rights when the original broad claims are

found to be invalid during the reissue or reexamination proceeding. For the foreseeable future, however, practitioners must contend with the “narrowed claim conundrum.”When counseling a client, it is advisable to address this situation if you are relying on an opinion that the relevant patent is invalid. That is, clients should be informed that broad, invalid claims may be narrowed in the future through a reissue or reexamination proceeding in such a way so as to remedy their invalidity .More over, it might be possible to consider the ways in which an invalid claim may be narrowed in the future so as to overcome the prior art while still encompassing the client’s proposed product. For example, consider each additional feature of the client’s product that is not specifically claimed in the originally issued patent but that may be supported by the specification. Ask yourself whether adding any such feature to the claim language would overcome the prior art, rendering the amended claim valid. If such additional claim elements can also be found in the prior art, a later reissue or reexamination proceeding may not present much of a risk. However, if such additional claim elements are not found in the prior art, then you need to carefully advise your client of the risk of a later reissue or reexamination proceeding. At bottom, when advising a client about the invalidity of patent claims, it would be prudent to consider the possibility that such claims may be narrowed in a later reissue or reexamination proceeding, possibly preserving their validity. Considering such a possibility at the outset may save your client — and you — from detrimental surprises in the future

From : Conundrum” Resulting from Reissue and Reexamination Proceedings

BY CHAD A. LANDMON OF
AXINN, VELTROP & HARKRIDER LLP