Few law firms surpass Fitch, Even, Tabin & Flannery’s capability to handle reissue and reexamination patent proceedings—in addition to our noteworthy experience with PTAB post-grant proceedings. We have an in-depth understanding of the substantive and procedural requirements unique to these proceedings, especially as an integrated part of representing clients in patent infringement disputes. For decades Fitch Even lawyers have utilized various post-issuance mechanisms afforded by the U.S. Patent and Trademark Office (USPTO) for the benefit of patent owners, accused infringers, or interested third parties. Our long history in this practice area provides our lawyers with the unique ability and background to make use of these mechanisms in conjunction with patent litigation to the benefit of our clients. Fitch Even’s experience in this area is a key differentiator of our dispute resolution approach.
Fitch Even attorneys are well-versed in ex parte reexamination procedures and recognize them as an extension of patent prosecution practice. Ex parte reexamination permits a third party to challenge patent claims by filing a request that presents a substantial new question of patentability. Alternatively, the patent owner may invoke this procedure by filing a request for supplemental examination. If a patent examiner determines that the request presents a substantial new question of patentability, the ex parte reexamination will proceed to the examination stage with an examiner issuing office actions, much in the same way an ordinary patent application would. Appeals to the PTAB are available if the examiner issues a final rejection. Fitch Even attorneys have successfully defended and challenged patents in this context, including on appeal after a final rejection.
Clients have also sought our help in pursuing reissue proceedings. This procedure provides an opportunity to strengthen a patent by having the validity of its claims reassessed in view of newly discovered prior art. If the reissue application is filed within two years of the original patent grant, the patent owner can even seek to broaden the scope of claim coverage. A request to reissue a patent can be used to adjust claim scope prior to, or even during, enforcement litigation and licensing campaigns.
When employing these procedures, it is critical that every strategic decision be made and each argument presented with an understanding of its potential impact in a contested litigation. Our advocacy in the USPTO leverages the firm’s extensive patent litigation experience. In many cases, we have been able to broaden the scope of our clients’ patents and successfully enforce the resulting rights against competitors.
Our deep understanding of reissue, reexamination, post-grant review, and inter partes review procedures gives Fitch Even’s clients a powerful advantage at every stage of perfecting and defending against intellectual property rights, whether for correcting unforeseen defects in issued patents, refining the scope of existing claims, addressing newly discovered prior art, or challenging the validity of competitors’ patents without engaging in costly and time-consuming infringement litigation. We are equally adept at using these procedures in support of patent enforcement efforts and in defense of infringement claims.