English
PEELING BACK THE LAYERS OF TANAKA: PATENT OWNER INITIATED REEXAMINATION AS AN ALTERNATIVE TO REISSUE
Ex Parte Tanaka, decided last December by the Board of Patent Appeals and Interferences (BPAI), held that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims. The board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. Although this decision is seemingly straight forward on its face, Tanaka may cause a significant shift in the workload internal to the USPTO.
With pendency of patent applications increasing and a growing inventory of applications awaiting appeal, a cynic would argue that Tanaka is a transparent attempt by the Board of Patent Appeals and Interferences (“BPAI”) to reduce the number of pending reissue applications awaiting examination, and/or to short circuit applicant efforts to use patent reissue as a substitute for failing to keep a continuation application pending. Be that as it may be, an unintended consequence of Tanaka will likely be an increased number of patent owner initiated ex parte reexaminations. As such, the Central Reexamination Unit (“CRU”) may very quickly be burdened with the work of the Examining Corps by patent holders seeking results now clearly foreclosed through patent reissue.
An expanded panel of the BPAI concluded that adding a dependent claim to “hedge against possible invalidity of the original claims” does not constitute an error correctible by a reissue application. The panel did not accept as binding the “dicta” from In re Handel, 312 F.3d, 136 USPQ 460 (CCPA 1963) (opining that reissue as a hedge against possible invalidity is proper). This may set up a basis for a possible appeal to the Federal Circuit by the reissue applicant. In short, according to the Tanaka opinion, if the basis of the § 251 error is claiming more than the patentee was entitled to, then an original patent claim must be narrowed to satisfy § 251. When original patent claims are retained, neither more nor less is claimed and hence no basis for reissue is presented.
When a patent owner is confronted with possible claim invalidity, rather than making an admission in reissue regarding the possible invalidity of an original patent claim as appears to be required by Tanaka, a patent owner may now choose to initiate ex parte reexamination.
In contrast to the error required under 35 U.S.C. § 251, a patent owner can establish a substantial new question (SNQ) of patentability without making an admission of claim invalidity. Further, pursuant to current PTO policy, the CRU examines only claims identified in a reexamination request. Therefore, reexamination is more attractive as it does not subject all claims to review like reissue, and does not consider patentability issues such as statutory subject matter under 35 U.S.C. § 101, or 35 U.S.C. § 112 for original claims.[1]
Patent owner initiated reexamination can be therefore be leveraged to add new dependent claims by presenting a narrowly tailored SNQ for those claim[s] where invalidity is at issue. The patent owner can file a proposed amendment along with the reexamination request presenting a narrowing dependent claims to hedge against possible invalidity of original patent claims with or without amendment to the original patent claims. MPEP 2221
As patent reissue options are restricted, or are made less attractive by the USPTO, patent owner initiated ex parte reexamination may soon be on the rise.
[1] Patent owner initiated reexamination is not a panacea, however. For example, in reexamination, RCEs and continuation applications are not available. Further, in a case such as Handel, reexamination would have been unavailable since the possible ground for invalidity was a public use of the claimed invention.
