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. He points out that the best way to pursue additional patent claims is typically through a continuation application. However, when a patent portfolio has already been fully mined for protection and no continuation is pending, there are still three alternative paths: filing a motion to amend during an inter partes review (IPR), pursuing a reissue, or initiating a reexamination separate from the IPR. Each option, he notes, carries its own advantages and drawbacks.

He acknowledges that the Patent Office has made substantial efforts to improve the motion-to-amend process for patent owners, but the system remains relatively restrictive. In his view, reissue is generally the stronger option because it closely resembles regular prosecution. It allows the addition of multiple new claims, is relatively inexpensive, and provides flexibility to explore different claim scopes—especially when the likely response from the Patent Office is uncertain.

He likens the reissue process to peeling an onion: the strategy can evolve naturally as the applicant responds to the Office’s positions during prosecution. Another advantage, he adds, is that reissues are handled by the Central Reexamination Unit (CRU), which tends to move cases efficiently. This speed can make reissue particularly valuable when timing is critical—such as when a pending litigation may be affected by the patent’s scope.

The main downside, he cautions, is that reissue reopens all claims to challenge on any basis, creating potential vulnerability. However, when a patent owner is confident that all the strongest prior art has already been presented to the Office, he believes reissue remains an excellent and strategic option for strengthening and expanding protection.