By Scott A. McKeown
| March 5, 2012
Continuation Practice in Broadening Patent Reissue Applications Examined
Yesterday, the CAFC decided an important question pertaining to broadening patent patent reissue practice. (In re Staats, decision here). The issue before the Court was whether a broadening patent reissue application of Apple Computer Patent 5,940,600 was filed within the proscribed two year window.
During prosecution of the subject patent reissue application (a third, broadening continuation filing) the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the proscribed two year window. The Office reasoned that the error in the original reissue filing (parent) was allegedly unrelated to the error presented for correction in the third filing...presented for the first time 7 years later. In essence, the Office argued that it is not enough to merely present a "place holder" intent to broaden within the proscribed two years only to file a continuation years later that attempts to broaden in "unforeseeable" ways.
The CAFC heard arguments on the BPAI decision back in September of 2011 and strongly hinted that earlier CCPA precedent would control the case. Not surprisingly, the Court reversed the USPTO based on previous precedent In re Doll 419 F.2d 925,928 (CCPA 1970) and explained that Doll could not be overruled absent the en banc consideration of the Court, noting:
[W]e see no basis for limiting Doll to situations where later broadened claims are related to, or are directed to the same embodi-ment as in the original application. The PTO’s approach is, moreover, unmanageable. Every claim must, by definition, be different in scope than the other claims of the patent, and it is difficult to distinguish one patent embodiment from another or to determine when a later claim is related to an earlier claim. A rule requiring that the new claims be related to the previously submitted claims, or be directed to the same embodiment, would be difficult to administer in a consistent and predictable way. . . . . In short, this panel is bound by Doll. See S. Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc) (adopting the decisions of the CCPA as binding precedent); In re Am. Fertility Soc'y, 188 F.3d 1341, 1347 (Fed. Cir. 1999) (holding that an earlier precedential decision is binding precedent on later panels). If the PTO believes we should overrule Doll, that is a matter that must be presented to the en banc court.
Yet, the concurring opinion strongly suggests that that the PTO's public policy arguments for potentially overruling Doll would fall flat.
In the end, the PTO . . . falls back on policy concerns it claims allow it to ignore the face of § 251 and to disregard both its own and this court’s pronouncements regarding the proper operation of that governing provision. Given the limited life of additional claims which can be sought through the type of continuing reissue practice at issue here, the protections afforded by the intervening rights provisions in 35 U.S.C. § 252, and the countervailing implementation concerns the PTO’s new standard creates, however, the PTO’s policy arguments are over-stated – substantially so. Even if those policy statements were not overstated, they would be an insufficient reed upon which to rest such a sweeping change in the law.
Indeed, most practitioners avoid broadening patent reissue practice altogether by simply maintaining a pending, regular continuation application. The notion that anyone would pursue broadening patent reissue as a matter of course ignores the significant pendency problems, as well as thorny recapture and intervening rights issues. As such, it would seem unlikely that the Office will pursue en banc review.