Post-issuance Interactions
1.    Certificate of Correction
a.    Easiest case: Obvious typo. Specification says “higf” instead of “high”. Point it out, gets fixed. Free if PTO’s mistake, honest mistake modest fee.
b.    Harder case: Typo that isn’t clear. Know its a typo but don’t know what correct answer should be. pH from Z to 9. If you are trying to broaden your claim w/o adequate notice, can’t use this mechanism. This is really aimed at clear typos where you know what it should read.
c.    Hardest case: Typos that aren’t obvious at all, pH of 3-9, you meant 6-9. People will rely on typo, think patent is invalid and infringe.
2.    Disclaimer: Inventor tells patent office to reissue patent, take away claim she originally had.
Only reason you’d do this – want attorney’s fees in infringement suit, they’ll ask are all the claims in your patent valid. Want to survive that analysis, before you sue for infringement, disclaim claims you know are not valid. If you knock out claims known to be invalid, you can get attorney’s fees.
3.    Reissue: Reopens conversation, go through whole process again. Used if Inventor wants to strengthen/consolidate patent.
a.    Use it before litigating, clean it up (to get attorney’s fees for infringement, can’t have any invalid claims). Or use it before entering licensing agreement.
b.    Only open if you can point to error in original prosecution. Problems with patent at issue.
c.    Easy ex: error in specification or drawing. Courts, ironically, say error occurs when claim claims more or less then it should. Very broad, opens this up to a lot of stuff.
d.    Courts now trying to renarrow this.
(A)    Cases that say if your error is trying to solve enablement/112 problem, can’t reissue.
(B)    Fed circ also said no error if claims entirely anticipated under 102(a) [lost all claims, not just few].
e.    If attempting to reissue and broaden claim, can only do it w/in 2 years from date of issuance.
(A)    Not allowed to recapture anything you gave up in course of initial prosecution.
(B)    Consistent w/estoppel, can’t reopen old battle. Should have appealed before.
f.    Ways in which reissue is different from initial litigation
(A)    Limited in some tools – no continuation in part, can only start from scratch
(B)    Reissue is all public unlike initial prosecution. Announced in PTO gazette, 2 months delay to give rivals time to come forward with info that PTO could use to narrow or reject your patent.
(C)    Intervening Rights: For time period btw for new protection being sought.
(1)    People who infringe on reissued claims, if they do it before reissued patent is issued, they are immune.
(2)    Equitable intervening rights: if someone makes big investment during intervening years, court may allow them to continue after it issues bc they sank in $.
4.    Reexamination: 3rd party or PTO could do this. Meant as a means to give 3rd parties an inexpensive means of challenging patents.
a.    Used for prior art challenges by 3rd parties:
(A)    3rd party can challenge patent on prior art grounds from another patent or printed pub
(B)    3rd party request reexamination, pay $2K fee, examiner. takes new docs showing prior art offense. Examiner asks if it raises a sub new question wrt patentability of patent.
(1)    Can’t bring up closed issues.
(C)    3rd party had no involvement after initiating until 1999. 3rd party now gets to respond, what they think right adjustment is to the claim language. All parties involved.
b.    Fast: By statute, reexamination must move a long faster then new app, goes to top of examiner’s work load.
c.    Reexamination always about narrowing, reissue can be to broaden.
d.    Problems
(A)    Estoppel: One part of reexamination is estoppel for 3rd party from later raising same issues in court or issues you could have raised, but didn’t. Big downside for 3rd party
(B)    Jurisdiction: Even worse, 3rd party doesn’t have right to appeal to court. Only internal appeals.
(C)    Consequently, rarely used, prefer courts.
5.    Interferences 102(g)(1): After patent issues, w/in 12 months if someone files claiming they are first to invent, can drag you back to PTO.