Most practitioners are well aware that disputes with the USPTO over formal oath requirements in patent reissue are the rule, not the exception. I have written extensively in the past as to the significant delays caused by this seemingly straight forward formal requirement.
In most cases, the dispute relates to a lack of specificity in identifying the error to be corrected in the patent reissue application. While in many cases the correction necessary is relatively minor. However, in most cases the objection raised relative to the oath does not come from the examiner, but instead, a Quality Assurance Specialist (QAS) of the USPTO. Thus, it is not uncommon to contact the examiner to request a recommended change to an oath to finally settle the dispute only to have the examiner inform you “I think it’s fine, but the QAS has some issue that I don’t really understand.” This leaves the Patentee with no efficient means to address the problem in a timely manner. This type of roadblock is especially aggravating in broadening patent reissue applications.
Oaths in broadening patent reissue applications cannot be executed by the patent owner, but must instead be signed by all inventors. This requirement is especially onerous as patent reissue by definition requires that the inventors first obtain a patent—a journey that can easily span 3-5 years, or more. At the time of filing the broadening reissue it may be some 7 years after the original filing of the patent application. During this passage of time, inventors inevitably move on from their original company, or become estranged and uncooperative.
Thus, the ability to get a supplemental declaration in a broadening patent reissue application can be a logistical nightmare. For this reason it is especially important to identify oath problems at the earliest possible point in patent reissue prosecution.
This week the inefficiency in correcting oath problems in a broadening patent reissues was demonstrated in Ex Parte Thomas Budmiger. In their decision, the Board explained:
[T]he Appellant argues, that the statement “I disclosed but did not claim the subject matter now included in claims 20-45” in the reissue declaration is sufficient. Brief 5. Appellant reasons this is sufficient as method claim 20 is broader than claim 1 as it has four (4) steps where as method claim 1 has seven (7) steps. Brief 5. In response the Examiner cites to MPEP § 1414 and finds that the statement in the declaration fails to identify one distinguishing feature of the newly added claim over the patented claim which necessitated either broadening or narrowing the patented claim. Answer 3. Based upon this finding the Examiner concludes that the reason cited in the declaration is not sufficient enough for filing of a reissue application. Answer 3. We concur with the Examiner.
We note that MPEP § 1414 (II)(C) states “[a]ny error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” MPEP § 1414(II)(C) also states “[a] statement of “. . . failure to include a claim directed to . . .” and then presenting a newly added claim, would not be considered [a] sufficient “error” statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that “this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10. In both cases, the error has not been identified.” Further, we note Appellant’s argument directed to the number of method steps in claim 20 versus claim 1 is not persuasive. In as much as the argument is a statement about the differences in the claims, it is not in the declaration and does not identify specific claim limitations.
Rather than providing a more specific notice of deficiency (perhaps suggesting particular fixes to the Patentee), the examiner simply stated that the error was not sufficient….likely relaying the decision of some other Office supervisor. It is no wonder patent reissue takes forever.