Patents Attorney in Washington, District of Columbia
Changes to Claims Subject to IPRs
Changes to Claims Subject to IPRs
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00:04
the best way to pursue additional claims
00:06
is in a continuation but that’s not
00:09
always an option if a portfolio has been
00:11
mined for
00:12
every aspect of protection and
00:15
there’s no continuation that’s pending
00:18
then there’s three other options you can
00:19
pursue the motion to amend in the ipr
00:23
or you can file a reissue or
00:25
re-examination separately from the ipr
00:28
proceeding
00:29
each of those has their pros and cons
00:30
the patent office has done
00:32
as much as they
00:34
well they’ve made a significant effort
00:36
to improve the motion to amend
00:38
experience for patent owners but it’s
00:40
still a restrictive
00:42
system that’s available
00:44
and so i think that the better approach
00:46
is reissue because it’s so much similar
00:49
to regular prosecution you can add any
00:52
number of claims it’s inexpensive
00:55
and it allows you to
00:57
explore the scope of a claim if you
00:59
really aren’t certain
01:01
how
01:02
the patent office is going to respond to
01:05
a particular position reissue is great
01:07
because it’s kind of like unfolding or
01:09
it’s peeling an onion
01:10
and you can allow the prosecution
01:14
strategy to evolve somewhat in response
01:16
to the positions that are taken by the
01:17
patent office
01:19
it’s also relatively quick because the
01:21
central re-examination unit
01:23
handles reissues and so you can actually
01:25
come out of the cru
01:27
in time for the patent to have an impact
01:30
in the litigation
01:31
there is a downside reissue
01:34
exposes all of the claims
01:36
to being challenged at the patent office
01:38
and they can challenge it on any basis
01:40
so you do become vulnerable but if
01:43
you’re confident that
01:45
all the best art is in front of the
01:47
office already
01:48
i think reissue is a great option
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Washington, D.C. intellectual property lawyer Kevin Laurence explains the best way to pursue changes to claims subjected to IPRs, when representing a patent owner.
