Reissue Patent Pendency

The reissue process has continued to rise in popularity. At the same time, the process has continued to remain slow — with an average reissue pendency of just under 5 years.

A patent holder can initiate the reissue process in order to correct a defect in an issued patent. 35 USC 251 indicates that the types of defects that may be corrected include defects in the specification; defects in the drawings; errors in claiming too much; and errors in claiming too little. A major statutory limit on the reissue process is that "[n]o reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent." The limit on improper broadening of reissues is strict and applies when claims are "broader in any respect." Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298 (Fed. Cir. 2008).

Since 2006, the prosecution pendency of reissue applications has hovered at an average of around 5 years based upon an analysis of all reissues issued each year. 


I looked particularly at a sample of 439 recently completed reissue applications.  In that sample, 88% received an initial non-final rejection; 46% then received a final rejection; 23% filed a request for continued examination (RCE); and only 1% completed the BPAI appeal process. As you might expect, each layer of processing added additional time to the prosecution. Thus, for example, applications with a notice-of-appeal in the file history had an average pendency of well over 8 years.

There is remarkably little variation in pendency across technology areas. Over the past five years, reissues in Technology Center 1600 (Biotechnology and Organic Chemistry) took an average of 4.92 years to complete while those in Technology Center 2800 (Semiconductors, Electrical and Optical Systems)  took 4.86 years.  The slowest Technology Center was 2600 (Communications) where reissue prosecution took 5.14 years on average.  Of those applications with an initial rejection, the first rejection was mailed 1.8 years (on average) after the reissue request was filed (median of 1.5 years after filing). The relative parity (in terms of prosecution pendency) amongst the various technology centers suggests that the reissue prosecution timeline is driven by an overarching USPTO approach to reissue examination.

In 2010, the USPTO reissued 947 patents — more patents than any year in history.  The prior records were established in 2008 (647 reissues) and 1875 (630 reissues). In 1875, 630 reissued patents represented about 5% of all patents issued that year. However, the 2010 record represents fewer than one-half of one percent. Although long application pendency is usually a two-way street — caused by both the USPTO and applicant delays, the relatively small reissue docket suggests that the PTO could be doing much more to speed the process.



  • The Patent Post Grant blog, run by the Oblon firm, has several interesting posts on reissue practice. [Link]
  • In an e-mail, Hal Wegner noted that the recent rise in the number of reissue patents can be attributed to the efforts by Director Kappos in “removing internal bottlenecks to grant deserving reissues.”

Chippendales Cuffs & Collar lack Inherent Distinctiveness as Product Packaging Trade Dress

In re Chippendales USA, Inc. (Fed. Cir. 2010)

PatentlyO080The first Chippendales club opened in Los Angeles in 1978. The following year, on-stage performers began wearing their now well-known Cuffs & Collar costumes. In 2003, the USPTO agreed that the trade-dress had acquired distinctiveness and issued Trademark Registration No. 2,694,613. (Chippendales had argued that the mark was also inherently distinctive, but the examiner had rejected that argument.) In 2008, the original mark became “incontestable.”

PatentlyO083This case arose in 2005 when Chippendales requested a new registratation for the same mark based upon its inherent distinctiveness. (The company wanted to strengthen its mark.) The Tradmark Trial and Appeal Board ruled against Chippendales — finding that the mark was not inherently distinctive.  In particular, the Board noted that strippers often wear revealing would-be professional costumes such as a stethoscope, utility belt, or chaps with a ten-gallon hat.  In this case, the Chippendales Cuffs & Collar costume appears directly derived from a Playboy Bunny costume.  Based on these facts, the Board held that the Chippendales outfit failed the test for inherently distinctive trade dress outlined in Seabrook (CCPA 1977). 

On appeal, the Federal Circuit first looked to determine whether the costume is part of the product design or only product packaging.  That distinction is legally important because of the Supreme Court ruling in Wal-Mart v. Samara Bros (2000) that product design is never inherently distinctive.  Here, the court held that the costume is product packaging — with the product being “adult entertainment services.” 

The Appellate Court then walked through each of the three relevant Seabrook elements: 

  1. Whether the mark is a common shape or design;
  2. Whether the mark is unique or unusual in the particular field;
  3. Whether the mark is a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods or services viewed by the public as a dress or ornamentation for the goods or services; or
  4. Whether the mark is capable of creating a commercial impression distinct from any accompanying words. (This fourth element was held irrelevant in this case.)

Here, the Appellate Court rejected the Board’s implicit holding that no costume on an adult entertainer could be inherently distinctive.  However, the Appellate Court agreed with the Board that the Cuffs & Collar costume was a “mere refinement” of the well-known Playboy Bunny costume.  As a result, the Cuffs & Collar costume failed the third Seabrook element and therefore lacks inherent distinctiveness.

The use of the Playboy mark constitutes substantial evidence supporting the Board’s determination that Chippendales’ Cuffs & Collar mark is not inherently distinctive. The Playboy bunny suit, including cuffs and a collar, was widely used for almost twenty years before Chippendales’ first use of its Cuffs & Collar trade dress. The Cuffs & Collar mark is very similar to the Playboy bunny costume, although the Cuffs & Collar mark in-cludes no bunny ears and includes a bare-chested man instead of a woman in a corset. While the Playboy clubs themselves did not involve exotic dancing, the mark was registered for “operating establishments which feature food, drink and entertainment.” The Cuffs & Collar mark was also worn by waiters and bartenders at Chippendales establishments, which Chippendales argues reinforced the association of the mark with the Chippendales brand. Additionally, the pervasive association between the Playboy brand and adult entertainment at the time of the Board’s decision leads us to conclude that the Board did not err in considering the mark to be within the relevant field of use. Thus, the Playboy registrations constitute substantial evidence supporting the Board’s factual determination that Chippendales’ Cuffs & Collar mark is not inherently distinctive under the Seabrook test.

In its brief, Chippendales argues that Wal-Mart v. Samara is at odds with Seabrook and that the Seabrook should therefore be revisited. The Federal Circuit rejected that suggestion.

Tuesdays with Aaron

12:01 am on Tuesday morning is a special time for patent attorneys. That is when the USPTO releases the newest batch of issued patents. Usually, over 3,000 issue each week.

Patent Attorney Aaron Feigelson (Leydig Voit firm) has started a great new blog: covering PTO events. Aaron writes with an eye toward patent prosecution and does a good job of finding examples from recently issued patents that raise important practice issues. He has also been closely following the aftermath of Bilski. Aaron describes his project as follows:

I started regular weekly monitoring of issued patents a few years ago for some particular client-related matters, but my intrigue grew after stumbling upon certain patents, unrelated to client matters, with stories that were too interesting to keep to myself. Like U.S. Patent No. 6,097,812 and its 67-year prosecution history (thanks to a very long lasting secrecy order). Or U.S. Patent No. 7,472,070 for a seemingly innocuous grain aeration system — but granted to Microsoft, that well-known player in agricultural technology. Or trends, like the trickling-off of issuances to applications filed the first week of June 1995 (when there was a pre-GATT filing surge). Or Jerome Lemelson being granted U.S. Patent No. 7,343,660 more than a decade after his death, with priority going back over fifty years to 1954.

Lately, my attention has turned to the fallout from the Federal Circuit’s recent decision of In re Bilski and its effect on patentable subject matter under Section 101. In particular, I was curious (to aid my own practice) to see what sorts of claims had been allowed pre- and post-Bilski, and what techniques applicants had used to address or circumvent the machine-or-transformation test. I began sending my weekly findings internally to a few attorneys in my firm. Then to a few more. Then to a few more..

After a few months of these “Bilski Watch” emails, this blog was created.

I enjoyed Aaron’s recent post regarding patents issuing from applications filed in early June 1995 – just before the patent term reference was switched from the issue date to the filing date.


  • For those of you who don’t know, the IP blogging community is rather inter-connected. For instance, Aaron Feigelson was a 2L at UChicago Law when I started there as a 1L. He was also a summer clerk at the MBHB firm. I started at MBHB soon after Aaron left and actually took over his desk and sat next door to his classmate Aaron Barkoff of the Orange Book Blog. Also at the MBHB firm are the PhD’s who blog at Patent Docs (both Aarons hold PhD’s as well). I interviewed at Matt Buchanan’s (Promote The Progress) former Chicago firm, which is just across the Chicago River from Feigelson’s office. Matt has participated in several business ventures with Steve Nipper (Invent Blog) and Doug Sorocco (PHOSITA). Matt and I are also working on a project for this fall. My old firm also paid for my patent bar review course with PLI partially taught by Gene Quinn (IPWatchdog). I could continue…

Patent Docs: Top Biotech and Pharma Patent Stories of 2008

The Patent Docs of MBHB have created an excellent set of posts on the top biotech and pharma patent stories of 2008:

  1. Continuation and Claims Rules Enjoined in GSK/Tafas v. Dudas; USPTO Appeals Injunction
  2. The Rise and Fall of Other USPTO Rules Packages
  3. Patent Reform Stalls in the Senate
  4. New Written Description Guidelines Issued
  5. Examination of Obviousness in Group 1600
  6. The USPTO Comes under Attack
  7. Follow-on Biologics Debate Continues
  8. Impact of Presidential Election on U.S. Patent Practice
  9. The USPTO Tightens Its Grip on Practitioners
  10. USPTO’s PTA Calculations Called into Question
  11. Greater Cooperation between Patent Offices
  12. International Enforcement of Drug Patents
  13. Pharma Patent Injunctions in View of Amgen v. F. Hoffmann-La Roche

Read the reviews:

New Patent Blogs

Book New blogs that I recently found:

  • PatentlyAcademic by an anonymous examiner going through the PTO’s training academy. I have no idea if it is true, but I consider this site something like the spawn of Patently-O.
  • PLI Blog by famed patent bar exam teachers White & Quinn
  • Patent Librarian by Canadian Michael White brings a fresh perspective.
  • Patentability Defined by Mike Kondoudis focuses his theories of patent prosecution.
  • Anticipate This! by Jake Ward of Perrysburg Ohio fame.

I continue to enjoy:

PatentDocs: Biotech & Pharma

Blog technology has turned out to be an extremely powerful way for attorneys to rapidly communicate with with the world. Although powerful, only a small percentage really do it right. I am very proud to present the newest blog emerging from McDonnell Boehnen Hulbert & Berghoff attorneys: Patent Docs. They do it right!

PatentlyO2006012The Authors of "Patent Docs" are patent attorneys and all hold doctorates in a diverse array of biotech and chemical disciplines (hence the name Patent Docs).  In addition to in-depth case reviews, the site also has a number of useful regular features, including Biotech News, Court Reports, PTO Rules Updates, and Patent Profiles.
Check it out!