Patents Post Grant Blog

On March 2, 2010, the USPTO held a Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting at its Madison Auditorium. Among the various topics presented was a set of  USPTO Slides by Jean Vollano, a Quality Assurance Specialist in TC 1600. Her presentation was informative and worth a detailed review. She covered reissue practice relating to (1) amendments to claims, description and drawings, (2) inclusion of certificates of correction in reissue applications, (3) oaths/declarations and (4) amendments to a reissue of a reissued patent.

Her slides provide examples of how to properly amend claims in reissue applications emphasizing the need to amend original patent claims using brackets and underlining of original patent claim text. She reminded applicants that Read the rest of this entry »

Last week we noted the potential affect of Ex Parte Tanaka internal to the USPTO.  Tanaka was decided last December by the Board of Patent Appeals and Interferences (BPAI), holding 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. 

Not surprisingly, earlier this week the issue was taken to the Federal Circuit on behalf of Koyo Seiko Co. Ltd.   Stay tuned for further updates.

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 Read the rest of this entry »

For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are several upcoming programs in February and March, two offered in New York (Feb. 11th and 12th, March 1st and 2nd) and one in Chicago (March 11th and 12th).  The editors of patentspostgrant.com are faculty for the Practicing law Institute and will be speaking at each upcoming event, Scott Mckeown will present at the New York PLI programs on Strategic Use of Merged Proceedings Within the USPTO, as well as the increasing Utilization of Inter Partes Reexamination with Concurrent Litigation (Patent Law institute 4th Annual). Stephen Kunin will also be speaking at the New York and Chicago events on Inter Partes Reexamination Mechanics with Todd Baker.  More information on these programs is found below, hope to see you there!

4^th Annual Patent Law Institute NYC

Reissue & Reexamination Strategies and Tactics Concurrent with Litigation (NYC) February 11th-12th

Reissue & Reexamination Strategies and tactics Concurrent with Litigation (Chicago March 11th and 12th)

MPEP § 1451 cautions applicants against filing a copy of the oath/declaration and assignee consent from the parent reissue application when a continuation reissue is filed without abandonment of the parent reissue application. It indicates that in such circumstances OPIE should accord a filing date to the continuation reissue application and send out a notice of missing parts stating that there is no proper consent and setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 1.16(f).

This section then instructs examiners to reject the claims of the continuation reissue application under 35 U.S.C. § 251 for failure to identify an error being corrected by the continuation reissue application. It further advises examiners to require a new oath/declaration under 37 CFR 1.175(e).

However, I submit that there should be an exception to the aforementioned guidance in the following circumstances. Suppose applicant files a reissue application, in which, during examination, the broadest claims, including the claim in which the error identified in the reissue declaration as the basis for the reissue, are rejected. Other dependent claims are indicated to be allowable by the examiner, if rewritten in independent form. Applicant files an amendment rewriting the dependent objected to claims in independent form and further files a supplemental reissue declaration identifying a new error resulting from the claim amendments. Applicant wishing to promptly obtain the parent reissue patent, files a continuation reissue on the broadest claims, including the claim that was the basis for the error in the parent reissue application and allows the parent reissue application to issue on the narrower claims now written in independent form.

In these circumstances, although a terminal disclaimer may be necessary to overcome an obviousness-type double patenting rejection in the continuation reissue to ensure the common ownership of both the parent reissue and continuation reissue, it would appear that the continuation reissue could be properly filed with copies of the assignee consent and parent reissue declaration despite the admonition in MPEP § 1451. The assignee consent would be proper since no new correction has been added. The error specified in the parent reissue application would still be applicable to the continuation reissue.

Furthermore, even if the parent reissue patent was granted while the continuation reissue remained pending the effect of the surrender of the original patent should not act as a surrender of the then pending claims in the continuation reissue application. See the related December 14, 2009 posting regarding Ex parte Bayles on www.patentspostgrant.com. Applicant should be able to pursue the claims in the continuation reissue, albeit it may take an appeal to the BPAI or the filing of 37 CFR 1.132 declarations to prevail against the examiner’s rejection.

MPEP § 1414.01 provides concise guidance regarding when a supplemental reissue oath or declaration is required and what it must contain. A supplemental oath/declaration is required in a reissue application where any “error” under 35 U.S.C. 251 has been corrected and the error was not identified in the original reissue oath/declaration. The supplemental reissue oath/declaration must state that every error which was corrected in the reissue application not covered by the prior oath(s)/declaration(s) submitted in the application arose without any deceptive intention on the part of the applicant.

A supplemental reissue oath/declaration will not be effective for any errors which are corrected by a filing made after the execution of the supplemental reissue oath/declaration, unless it is clear from the record that the parties executing the document were aware of the nature of the correction when they executed the document. Further, a supplemental reissue oath/declaration with an early date of execution cannot be filed after a correction made later in time, to cover the correction made after the execution date. This is so, even if the supplemental reissue oath/declaration states that all errors up to the filing of the supplemental reissue oath/declaration oath or declaration arose without any deceptive intention on the part of the applicant.

Form PTO/SB/51S, “Supplemental Declaration For Reissue Patent Application To Correct ‘Errors’ Statement (37 CFR 1.175),” may be used to prepare a supplemental reissue declaration. Form PTO/SB/51S serves to indicate that every error in the patent that was corrected in the reissue application, but was not covered by a prior reissue oath/declaration submitted in the reissue application, arose without any deceptive intention on the part of the applicant.

In the event that the applicant for a reissue applicant is required to file a supplemental reissue oath/declaration that also includes a specific statement of the error being corrected by reissue in accordance with 37 CFR 1.175(c), as discussed in subsection I. below, applicant must also include in the supplemental declaration language equivalent to the “Every error .” language in the example of acceptable language set forth above. Therefore, if either form PTO/SB/51, “Reissue Application Declaration By The Inventor,” or form PTO/SB/52, “Declaration By The Assignee” (see MPEP § 1414) is used for the purpose of filing such supplemental reissue oath/declaration, the form must be completed so that it is clear that the supplemental reissue oath/declaration addresses all errors corrected subsequent to the date upon which the last previously reissue oath/declaration (whether original or supplemental) was filed. For example, the form could be completed by specifying the date upon which the reissue application was originally filed, the reissue application number, and the date(s) of every amendment filed subsequent to the date upon which the last reissue oath/declaration (whether original or supplemental) was filed. Any manner of completing the form so that affiant/declarant unambiguously states that every error corrected subsequent to the filing of the last filed reissue oath/declaration (whether original or supplemental) arose without deceptive intent will be acceptable. It will not be acceptable for the new (”catch-up”) oath/declaration to simply refer to the reissue application as filed, even though the new oath/declaration may be submitted after an amendment.

I. WHEN AN ERROR MUST BE STATED IN THE SUPPLEMENTAL OATH/DECLARATION
In the supplemental reissue oath/declaration, there is no need to state an error which is relied upon to support the reissue application if:
(A) an error to support a reissue has been previously and properly stated in a reissue oath/declaration in the application; and
(B) that error is still being corrected in the reissue application.
If applicant chooses to state any further error at this point (even though such is not needed), the examiner should not review the statement of the further error.
The supplemental reissue oath/declaration must state an error which is relied upon to support the reissue application only where one of the following is true:
(A) the prior reissue oath/declaration failed to state an error;
(B) the prior reissue oath/declaration attempted to state an error but did not do so properly; or
(C) all errors under 35 U.S.C. 251 stated in the prior reissue oath(s)/declaration(s) are no longer being corrected in the reissue application.
II. WHEN A SUPPLEMENTAL OATH/DECLARATION MUST BE SUBMITTED
The supplemental oath/declaration in accordance with 37 CFR 1.175(b)(1) must be submitted before allowance. Where applicant seeks to correct an error after allowance of the reissue application, a supplemental reissue oath/declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant. The supplemental reissue oath/declaration submitted after allowance will be directed to the error applicant seeks to correct after allowance. This supplemental oath/declaration need not cover any earlier errors, because all earlier errors should have been covered by a reissue oath/declaration submitted before allowance.
III. SUPPLEMENTAL OATH/DECLARATION IN BROADENING REISSUE
A broadening reissue application must be applied for by all of the inventors (patentees), that is, the original reissue oath/declaration must be signed by all of the inventors. See MPEP § 1414. If a supplemental oath/declaration in a broadening reissue application is subsequently needed in the application in order to fulfill the requirements of 37 CFR 1.175, the supplemental reissue oath/declaration must be signed by all of the inventors. In re Hayes, 53 USPQ2d 1222, 1224 (Comm’r Pat. 1999) (”37 CFR 1.175(b)(1), taken in conjunction with Section 1.172, requires a supplemental declaration be signed by all of the inventors. This is because all oaths or declarations necessary to fulfill the rule requirements in a reissue application are taken together collectively as a single oath or declaration. Thus, each oath and declaration must bear the appropriate signatures of all the inventors.”).

If a joint inventor refuses or cannot be found or reached to sign a supplemental oath/declaration, a supplemental oath/declaration listing all the inventors, and signed by all the available inventors may be filed provided it is accompanied by a petition under 37 CFR 1.183 along with the petition fee, requesting waiver of the signature requirement of the non-signing inventor.

If a patent owner has disclosed, but not claimed some embodiments of the invention, resort to the doctrine of equivalence to protect such unclaimed embodiments may be lost through the doctrine of prosecution history estoppel. Let’s assume, for sake of argument, that the patent application that led to the patent contained no claims to the genus covering the species set forth as separate embodiments of the invention and the prosecution history of the patent contained no arguments applicable to the unclaimed embodiments. Consequently, if the patent is less than two years old, the patent owner may seek to correct this error in claiming less than she was entitled to claim through the filing of a broadened reissue application claiming the previously unclaimed embodiments of the invention. The doctrine of impermissible recapture in such circumstances would not apply.

In accordance with MPEP § 1412.01:

Claims presented in a reissue application are considered to satisfy the requirement of 35 U.S.C. 251 that the claims be “for the invention disclosed in the original patent” where:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112 first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
****
**>One should understand<, however, >that< the mere failure to claim a disclosed embodiment in the original patent (absent an explicit statement in the original patent specification of unsuitability of the embodiment) would not be grounds for prohibiting a claim to that embodiment in the reissue.

Filing a reissue application to claim previously unclaimed embodiments of the invention must be filed within two years of the issuance of the original patent, if claims to the previously unclaimed embodiments would read on something which the original claims do not. This would presume that no claims to the genus covering all the embodiments of the invention existed in the original patent. The test for a broadening reissue is whether the reissue patent claims would be infringed without infringing the original patent claims.

This gambit will avoid the loss of potentially valuable patent rights where the patent owner did not file a voluntary divisional application to seek protection for the previously unclaimed embodiments of the invention before issuance of the original patent.

On March 7, 1912, the Commissioner of Patents decided in Ex parte Bayles, 176 O.G. 749 that “[u]ntil a[n] [reissue] application is ended in all its divisions the vitality of the original patent continues so far as required to support that portion of the [reissue] application which remains undecided.” This would be true even if the parent reissue patent were to issue during the pendency of the divisional application.

On August 31, 1911, the petitioner in Bayles filed a reissue application containing both method and apparatus claims found in the original patent. Subsequently, by amendment, the petitioner canceled the method claims for the purpose of filing a divisional reissue application. The divisional reissue application claiming the method was filed prior to issuance of the parent reissue application claiming the apparatus. The Commissioner relied on the August 31, 1880 decision of the Acting Attorney-General in the case of ex parte Greaves (C.D., 1880, 213; 18 O.G., 623; 16 Op. Atty. Gen., 560) holding that the good sense of the maxim pendente lite nihil innovator applied. The purported surrender of the original patent when the parent reissue patent issued after the filing of the divisional reissue application did not prevent a division of the reissue from issuing.

In MPEP § 1451 (II) states that “[t]he decision of In re Graff, 111 F.3d 874, 42 USPQ2d 1471 (Fed. Cir. 1997) interprets 35 U.S.C. 251 to permit multiple reissue patents to issue even where the multiple reissue patents are not for “distinct and separate parts of the thing patented.” This section further cautions that “[a]s is true for the case of multiple divisional reissue applications, all of the claims of the patent to be reissued must be presented in both the parent reissue application and the continuation reissue application in some form, i.e., as amended, as unamended, or as canceled. The same claim of the patent cannot, however be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions. …Where the parent reissue application issues **>before< the examination of the continuation >reissue application<, the claims of the continuation >reissue application< should be carefully reviewed for double patenting over the claims of the parent >reissue application<. Where the parent and the continuation reissue applications are examined together, a provisional double patenting rejection should be made in both cases as to any overlapping claims. See MPEP § 804 – § 804.04 as to double patenting rejections. Any terminal disclaimer filed to obviate an obviousness-type double patenting rejection ensures common ownership of the reissue patents throughout the remainder of the unexpired term of the original patent.”

However, the MPEP is silent as to the effect of the language of 35 U.S.C. § 252 which indicates that “[t]he surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.” Do the principles announced in ex parte Bayles apply? Namely, because a continuation reissue was filed prior to issuance of the parent reissue patent does surrender of the original patent not take place until issuance of the last continuation reissue patent?

Suppose that the original patent claimed an invention AB. Within two years of the grant of the original patent a broadened reissue application was filed claiming the invention as AB, AbrBsp and AspBsp. During examination applicant facing a rejection of claims to AB, and AbrBsp, chooses to file a continuation reissue as to these claims, while thereafter letting the parent reissue application claiming only AspBsp issue. Putting aside the obviousness-type double patenting issue that can be obviated by filing a terminal disclaimer in the continuation reissue application, what effect, if any, does section 252 have on the examination of claims AB in the continuation reissue application. Are claims to AB surrendered by operation of section 252 or do the Bayles principles apply to avoid the surrender of original patent claims to AB?

We are unaware of any Federal Circuit precedent directly on point. We leave it to you to decide.

On April 14, 2009, U.S. District Court Judge David Folsom issued an order denying a Fanuc Ltd., et al motion to stay litigation pending the outcome of three inter partes and  one ex partes reexamination regarding US Patents. ROY-G-BIV Corp. v. FANUC Ltd. et al., No. 2:07-CV-418 (E.D. Tex., April 14, 2009).

Judge Folsom decided whether defendants’ actions, having waited a full year after the suit was filed to request reexamination, in light of the additional delay of lengthy reexamination proceedings, would be unduly prejudicial to Plaintiff. Relying on analysis from the Institute for Progress regarding the inter partes reexamination process, Judge Folsom projected that the stay could last twenty-eight months at a minimum. Judge Folsom found this lengthy projection unfavorable especially because the trial date had been set for less than six months away.  Judge Folsom also cited the likelihood that a stay would force the parties to redo a significant amount of their claim construction briefing to “weigh heavily against granting the stay.”

Judge Folsom was not convinced the reexamination would simplify the issues in the dispute citing the early stage of the reexamination process and the uncertainty of cancellation or modification of claims through amendment. “Furthermore,” wrote the Judge, “it is this Court’s experience that the reexamination process may actually complicate a case by creating additional prosecution history estoppel and disavowal arguments that must be addressed during claim construction.”

Judge Folsom concluded that although discovery was not complete, claim construction briefing was complete, and trial is six months away.  Accordingly, Judge Folsom denied Defendant’s motion.

In the summer of 2005, responding to industry criticism on the efficacy of patent reexamination, the USPTO created the Central Reexamination Unit (CRU).  The CRU is formed of highly skilled primary patent examiners that have been specially selected from the Patent Examining Corps.  These examiners average more than 15 years of experience and have technical backgrounds that reflect the broad spectrum of technologies encountered in patent reexamination.  Many of the primary examiners chosen to work in the CRU have advanced technical and law degrees.

The mission of the CRU is to ensure high quality, objective and timely processing of reexamined patents.  The CRU endeavors to comply with the “special dispatch” requirements of the reexamination statutes.  Reexamined patents are assigned to examiners in the CRU who were not previously involved in the examination of the original patents or in prior reexamination proceedings of the patents.  The examiners work in teams of three including a Special Program Examiner (SPE).  Patentability review conferences are conducted at each point in the reexamination decision making process in order to reach Read the rest of this entry »