By Scott A. McKeown
| November 24, 2010

Upward of 70% of Patent Reissue Filings Include a Defective Oath


oaths
(click to enlarge)

As most practitioners are well aware, defective oaths in patent reissue are the rule, not the exception. As the chart above demonstrates for patent reissues filed in 2005, such oath problems lead to longer patent reissue pendencies.

With narrowing patent reissue filings constituting the bulk of patent reissue applications at the USPTO, it is not surprising that the impact of defective oaths are more pronounced in this sub-category. For narrowing reissue applications filed in 2005, applications without any oath problems were completed 1.14 years faster (1.74 vs 2.88 years) than those with oath problems.

Surely, both the USPTO and stakeholders share the blame equally for these recurring problems. As demonstrated just yesterday, these issues are rarely resolved prior to appeal.In appeal 2010-010835, no art issues were appealed, only rejections under 35 USC 251 (a defective oath rejection and a recapture rejection).

At issue in the appeal was a broadening reissue declaration (i.e., oath). The Patentee noted that claim 16 included the language "coupling commands to the memory device" and was therefore, overly narrow. Rather than amend claim 16, the Patentee simply presented new claim 19, which did not recite this feature. In response, the Examiner rejected the declaration stating that a new declaration was required explaining how the defect in claim 16 was going to be corrected.

In considering the issue, the BPAI noted:

Although this erroneously-added limitation remains in claim 16 in the present reissue application (FF 2), this hardly renders the reissue declaration defective, for Appellants need not identify the corresponding action taken to correct this error as Appellants indicate (App. Br. 11; Reply Br. 1). See MPEP § 1414(II)(B). That Appellants chose to correct the specified error not by amending patented claim 16, but rather adding claims (e.g., claim 19) that omit the erroneously-added limitation (see FF 3) is their prerogative—a corrective action that need not be specified in the reissue declaration.

I have advocated here on several occasions that the USPTO could improve the consistency in treating these important applications by creating a special group, akin to the Central Reexamination Unit (CRU) for developing an expertise in oaths and difficult recapture issues. Alternatively, perhaps a special reissue panel can be convened prior to any such appeal to filter some of these issues from the Board. Unless and until further changes are made at the USPTO, I am afraid that may important reissue applications will languish with the examining corps.

Happy Thanksgiving, more on Monday.
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