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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Removing Terminal Disclaimers by Patent Reissue

Posted On: Jan. 18, 2011   By: Scott A. McKeown
Topics: Error, Reissue
reissueExpanded BPAI Panel Divided on Proper Reissue Practice

The proper interpretation of the patent reissue statutes was explored rather frequently at the Board of Patent Appeals & Interferences (BPAI) in 2010. Several important BPAI decision relating to patent reissue, In re Tanaka, In re Staats, and In re Mostafazadeh are now on appeal to the CAFC. As we begin 2011, the trend appears to be continuing.

Last week, the Board considered the following two questions in Ex parte Shunpei Yamazaki (here), namely:

1.  Does 35 U.S.C. § 251 authorize the Office to reissue a patent that has expired based on an expiration date set at the time of issuance of the original patent?

2. Does 35 U.S.C. § 251 authorize the Office to expand in reissue the term of a patent beyond the term of the original patent set at the time of issuance?

By way of background, Semiconductor Energy Laboratory, sought to reissue their U.S. Patent 6,180,991. This patent issued on January 30, 2001 based upon an application filed April 21, 1995. During the original prosecution, a terminal disclaimer was filed (November of 1996) to overcome a double patenting rejection. Thereafter, the claims subject to the earlier double patenting rejections were amended. As a result, the Applicant petitioned to withdraw the earlier filed disclaimer (April 1999).

The petition remained pending at the USPTO for some time, roughly a year. At that point, a Notice of Allowance was issued and the issue fee paid by the Applicant. In the 21st month, (May 2001) the petition was dismissed as mooted by the issuance of the ‘991 Patent. In the petition decision, the Office explained that a terminal disclaimer cannot be removed once a patent issues, and also explained that patent reissue could not remedy the problem. As it stood, the Patent holder had mistakenly disclaimed some 14 years of patent term (based on a pre-GATT priority claim).

Perhaps encouraged by a non-precedential Board decision, Ex parte Durckheimer (1996), and despite the caution of the Office that reissue practice could not remove the disclaimer, an application seeking reissue of the ’991 Patent was filed on January 16, 2002.

As is all too common with patent reissues applications, the case languished for some 9 years before reaching the Board for decision.

In their decision, the majority answered both questions above in the negative, reasoning:

We take this opportunity to resolve a conflict within the Office as to the meaning of “the term of the original patent” in 35 U.S.C. § 251 and whether the Office is authorized by this statute to remove a terminal disclaimer during reissue resulting in an expansion of the term of the original patent set at issuance.

We interpret “the term of the original patent” in § 251 to refer to the “term” of the patent as the term set upon issuance of the original patent.  . . . . See Merck & Co., 482 F.3d at 1319; see also Bayer AG, 298 F.3d at 1381. Thus, we disagree with the Board’s earlier holding in Durckheimer that a terminal disclaimer does not alter “the term of the original patent.” . . . .

As such, we feel that the prior panel’s interpretation of § 251 in Durckheimer was in error, and the present decision overrules Durckheimer. We adopt the position of the Office as stated in MPEP § 1490 that “[s]ince the granting of a reissue patent without the effect of a recorded terminal disclaimer would result in extending the term of the original patent, reissue under these circumstances would be contrary to the statute.”

Consequently, at the time of issuance of Appellant’s patent on January 30, 2001, the statute recognized that the term of the ‘991 patent would expire on December 22, 2003, the expiration date specified in the Terminal Disclaimer. Section 251 does not permit the Office to now reissue the ‘991 patent beyond that term as set upon issuance. (internal footnotes omitted)

However, the concurrence saw the issues raised by the Appellant a bit differently. The concurring APJ’s found that it is possible to reissue a patent for purposes of removing a terminal disclaimer, but that reissue must occur before expiration.

The majority points to the language in § 251 which states that a patent may be reissued “for the unexpired part of the term of the original patent” (emphasis added). According to the majority, the term of a patent is set at the time of issuance and withdrawing a recorded terminal disclaimer in an issued patent would extend the term of that patent contrary to § 251.

The “term” of a patent is set by statute at the time of issuance. 35 U.S.C. § 154(a)(2) (2010). However, as explained in Ex parte Durckheimer, No. 94-2004, slip op. at 19 (BPAI 1996), a terminal disclaimer does not alter the “term” of the original patent. Rather, a terminal disclaimer disclaims a “terminal part of the term . . . of the patent granted or to be granted” thereby resetting the expiration date of that patent. 35 U.S.C. § 253 (2010).

The majority appears to equate “term” with “expiration date.” However, I respectfully disagree that these terms are synonymous in this case where a terminal disclaimer has been recorded in an issued patent. See, e.g., Merck & Co., Inc. v. Hi-Tech Pharmacal Co., Inc., 482 F.3d 1317, 1322-23 (Fed. Cir. 2007) (discussing the expiration date resulting from the terminal disclaimer and the expiration date of the patent in the absence of the terminal disclaimer). . . .

As [to expiration] . . . . The Appellant’s patent expired on December 22, 2003, by virtue of the terminal disclaimer that remains in effect. Therefore, the Office does not have the authority to reissue the Appellant’s patent for “the unexpired part of the term of the original patent.” (internal footnotes omitted)

As pointed out in the concurring opinion, a terminal disclaimer is just that, a disclaimer of term otherwise accorded an issuing patent.

Of course, once a patent is expired there can be no ”re-issuing” the patent for an unexpired term. Yet, here the error identified in the application for reissue is one of term, seasonably presented before expiration. It seems grossly unfair to punish the Appellant in view of the significant delays in patent reissue prosecution, not to mention the egregious petition delay in the original prosecution.

Perhaps this patent reissue dispute, much like the 2010 cases that came before it, is also destined for CAFC review.

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