Ex Parte & Inter Partes Reexamination, Reissue, Disclaimer, Certificate of Correction and
the New America Invents Act Proceedings
Issued patents may be corrected or modified in several ways including: (1) filing a request for ex parte reexamination of the patent; (2) filing a request for inter partes reexamination of the patent; (3) filing a request for a reissue patent; (4) filing a disclaimer (i.e., statutory or terminal); and (5) filing a request for a certificate of correction. Each of these procedures is utilized to deal with different issues which may arise after issuance of a U.S. patent. An issued patent may also be modified as the result of (6) a patent interference proceeding under 35 U.S.C. § 135, e.g., if some or all of its claims are canceled as the result of an adverse judgment in the patent interference proceeding (given that the interference is between a patent and application). However, interference proceedings will end, and be replaced by derivation proceedings starting on March 16, 2013 due to passage of the Leahy-Smith America Invents Act (AIA).1
The AIA was signed by President Barack Obama on September 16, 2011, and is the most significant reformation of the patent law since 1952 (which included many changes, such as the two-year time limit for filing a broadening reissue). The AIA provides several new post-grant proceedings that can be filed by the patent owner or a third party, including (7) post-grant review, (8) inter partes review (which replaces inter partes reexamination), (9) post-grant validity review of business method patents, and (10) supplemental examination.
The legislative history can be found at this link.
There were no (significant) changes to ex parte reexamination2, reissue3, disclaimers and certificate of correction. The United States Patent & Trademark Office (USPTO) also provides information on such future inter partes disputes, which can be found here.
1.
Now Public Law 112-29 (Sept. 16, 2011).
2. 35 United Stated Codes (“U.S.C.”) § 306 has been amended to limit the choice of judicial recourse from a USPTO decision.
3. 35 U.S.C. § 251 has been amended by striking “without any deceptive intention”.
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