G.D. SEARLE LLC v. LUPIN PHARMACEUTICALS, INC. (Fed. Cir. 2015) (P) – Reissue cannot be used to revert an issued continuation-in-part application back to true divisional status

by Steve Driskill | Jun 23, 2015 | [sub] reissue, PTO Procedure

Reissue cannot be used to revert an issued continuation-in-part application back to true divisional status. Here, for example, a reissue application filed to revert a continuation-in-part back to a divisional application and thereby invoke safe harbor protection...

ARCELORMITTAL FRANCE v. AK STEEL CORPORATION (Fed. Cir. 2015) (P) – Reissue amendments may be deemed impermissibly broadening in view of prior litigation claim construction

by Steve Driskill | May 12, 2015 | [sub] reissue, PTO Procedure

Amendments during reissue may be deemed broadening and thereby render a patent unenforceable if they broaden a previous and controlling claim construction from prior litigation even if the PTO’s broadest reasonable interpretation may perceive them as narrowing. Here,...

FLEMING v. ESCORT INC. (Fed. Cir. 2014) (P) – Marketplace developments prompting reassessment of issued claims qualifies as “error” sufficient for reissue

by Steve Driskill | Dec 24, 2014 | [sub] reissue, PTO Procedure

Although a “now-regretted choice” does not meet the “error” precondition for obtaining reissue under 35 U.S.C. § 251, marketplace developments that prompt a patentee to reassess their issued claims is a “classic reason that qualifies as error” for the purposes of...

IN RE DINSMORE (Fed. Cir. 2014) (P) – Terminal disclaimers not generally rescindable via reissue

by Steve Driskill | Jun 10, 2014 | [sub] reissue, PTO Procedure

Although the court specifically noted that it “need not address broader questions about the intersection of reissue standards and terminal disclaimers,” at least in cases as here where an applicant knowingly and intentionally files a terminal disclaimer for patents...