Tech Transfer Central

Strategic Use of Patent Reissue Applications for University IP

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: March 09, 2016

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To err is human… but errors in patent filings can derail a technology and cause millions in lost research dollars and revenues. The good news is there is a workable solution to correct errors in post-grant patents: filing a patent reissue application. A reissue application is filed when an issued patent is considered to be “wholly or partly inoperative or invalid.” Typical errors correctable by a reissue include a defective specification or drawing, claims that are too narrow or too broad, failure to correctly reference priority documents, or the prosecuting attorney’s misunderstanding of the scope of the invention.

There are circumstances, however, when reissue can be inappropriate or detrimental to your active patent. To provide you with a full understanding of the reissue opportunities as well as challenges and risks, Technology Transfer Tactics’ Distance Learning Division has partnered with patent attorneys Michael Goldman and Megan Thisse O’Gara of LeClair Ryan to lead this critical webinar. Here is a brief overview of the program agenda:

  • What factors indicate that post-grant proceedings are warranted for your patent
  • Overview of Post-Issuance Proceedings Before the U.S. Patent and Trademark Office
    • Ex parte Reexamination
    • Supplemental Examination
    • Reissue Application
    • Inter Partes Review
    • Post-Grant Review
  • Components of a Reissue Application and Requirements for Filing
  • How reissue claims effect active patents
  • Errors Correctable by Reissue (e.g., claiming more or less than applicant had a right to claim, correcting errors relating to statutory subject matter)
  • Errors NOT Correctable by Reissue
  • Special Considerations when Broadening Claims
  • Considering how a Reissue Application will Affect Litigation

Your expert presenters:

Michael L. GoldmanMichael L. Goldman
Shareholder, LeClair Ryan, Rochester, NY

Mr. Goldman focuses his practice on patent and trademark work and has extensive experience handling biotechnology patent matters. He has represented corporate, academic and other institutional clients on patent prosecution, patent interferences, licenses and other agreements, and opinions. Mr. Goldman has authored numerous articles and spoken to organizations such as the Franklin Pierce Law Center on patent law topics including the strategic use of reexamination and reissue in conjunction with patent litigation. He is listed among The Best Lawyers in America® in the fields of Litigation – Intellectual Property, and Patent Law, 2013–2016.

Megan O'GaraMegan Thisse O’Gara
Registered Patent Attorney
LeClair Ryan, Rochester, NY

Ms. O’Gara is a member of the Intellectual Property and Technology team with significant experience in preparation and prosecution of U.S. and foreign patent applications. She has broad experience in post-issuance patent practice, assisting in all phases of reexamination, interference proceedings, inter partes review proceedings and patent litigation. Ms. O’Gara also has extensive experience in preparation and prosecution of reissue patent applications. She also prepares freedom-to-operate, patentability, validity, and infringement opinions.

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