—By Thomas Y. Ho, Bookoff McAndrews PLLC
Originally published in InsideCounsel (January 21, 2016) – For in-house patent counsel, deciding how to invest the company’s resources to build and maintain a robust patent portfolio can be one of its most challenging and important responsibilities. Patent counsel may have a short amount of time, and a limited amount of information, with which to make decisions on whether to renew U.S. patents, allow them to expire, sell them to a buyer, or acquire them from a seller. Some patents, on first inspection, may appear to be of little value if the claims are not commercially critical to the company’s business, are potentially invalid, or are otherwise unenforceable against competitors. In other cases, patents may not have the insurance provided by a pending family member. Like other underperforming assets, it may be tempting to divest certain patents as soon as possible (from a patent-holder’s perspective), or turn down offers for sale (from a patent-acquirer’s perspective). However, there is potential for those very patents to be turned around, making them high-value assets in the company’s portfolio. This transformation can be achieved via reissue at the U.S. Patent and Trademark Office. The difficulty, however, is in quickly and efficiently identifying reissue-worthy patents from the rest. This difficulty can be addressed by having a firm grasp of the reissue process, its capabilities, and its limitations, and with that, an ability to recognize traits that make a patent ripe for reissue or not.
Reissue is available to a patent holder seeking to correct certain types of errors associated with its patent. A claim scope error, that is, claiming more or less than one had a right to claim in a patent, is one of those correctable errors. If a patent’s claims are too narrow or too broad, the error can be remedied via a broadening reissue or a narrowing reissue, respectively. The process involves submission of a reissue application, examination of the reissue application, and granting of a reissued patent–steps that are, for the most part, analogous to those of the regular patenting process.
Broadening and narrowing reissues can provide excellent opportunities for turning around underperforming patents. A broadening reissue can broaden a patent’s existing claim scope by removing limitations from the patent’s claims, or by introducing new claims, allowing the patent to cover a broader swath of potential infringers. Patents that might make prime targets for broadening reissue can be quickly identified just by keeping a lookout for certain positive and negative indicators. Do the patent’s claims include superfluous wording, such as words or phrases that were not introduced to overcome prior art? Does the patent’s disclosure describe commercially relevant embodiments that are not covered by the patent’s claims? Does the patent have a clean, compact prosecution history? An affirmative answer to any of these is a positive indicator. Conversely, an affirmative answer to any of the questions below is a negative indicator. Have two years passed since the date the patent issued, or is the two year date fast-approaching? Were significant amendments and/or arguments made during prosecution of the patent to overcome prior art rejections? Similarly, does the patent have a long, drawn-out prosecution history? Does the patent’s prosecution history include a restriction or election of species requirement, and if so, did the applicant fail to file a divisional to pursue the non-elected inventive aspects? These indicators are derived from various reissue statutes and rules, the rule against recapture, and the Orita doctrine.
Recently, the increasing popularity of inter partes review has emerged as a formidable means for attacking patents, and the Supreme Court’s controversial decision in Alice v. CLS Bank has cast a cloud over many computer-implemented inventions. Narrowing reissue offers a means for patent holders to hedge against uncertainty by reinforcing a patent’s claims so they can better withstand invalidity and ineligibility challenges. The main question then becomes whether the disclosure of the patent provides sufficient support for aspects that need to be added to the claims. With respect to the prospect of ineligibility challenges, based on Alice, patent owners may benefit from quickly looking for certain keywords or descriptors in the disclosure that provide a good indicator of whether a potentially invalid patent might be worthy of reissue.
Other things should be kept in mind as well. For example, continuation applications can be filed off of pending reissue applications, which can provide additional opportunities for obtaining valuable patent claims. Also, a reissued patent is only enforceable for the unexpired term of the original patent, and thus, for older patents, patent term can be a practical barrier to reissue. Additionally, even if a reissued patent is granted, the changes made to the claims via reissue may give rise to intervening rights as a defense to infringement.
While none of these indicators guarantees success or failure when it comes to reissue, they are nevertheless useful data points to keep in mind. Even if a reissue application is never actually filed, the ability to file them, and their potential value if granted, should be factored in when assessing a patent’s value. Failing to recognize the enhancements to a patent that are possible via reissue may lead to patents being sold off or licensed for far less than their worth, or to potentially valuable concepts being prematurely forfeited to the public domain.