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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.

Archive for the ‘Error’ Category

Patent Reissue Cannot Cure Mistaken Terminal Disclaimer

Posted On: Dec. 10, 2012   By: Scott A. McKeown
patent reissueTerminal Disclaimer Permanent Once Patent Issues

Back in January of 2011 I discussed the appeal decision in Ex parte Shunpei Yamazaki relative to patent reissue practice. In Yamazaki, a reissue patent application was filed shortly after issuance of U.S. Patent 6,180,991 for the purpose of withdrawing an earlier filed terminal disclaimer.

By way of background, the ‘991 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. Since the amended claims were believed to be distinct from those of the earlier patent, the Applicant petitioned to withdraw the earlier filed terminal disclaimer (April 1999). The petition remained pending for some 20+ months at the USPTO, but, the patent issued prior to any USPTO action on the petition filing. The petition was ultimately dismissed as moot once the ‘991 Patent issued.

Adding insult to injury, the USPTO explained in their belated petition decision that a terminal disclaimer could not be removed once a patent issues as patent reissue did not contemplate such mistakes as “error” under the reissue statute. In other words, even though the patent holder had disclaimed some 14 years of patent term by mistake, there was no mechanism to cure that mistake post issuance. Nevertheless, the Patentee filed a patent reissue application in an attempt to withdraw the terminal disclaimer.

In deciding the propriety of a patent reissue proceeding to remove a terminal disclaimer, an expanded panel of the BPAI (now PTAB) held that patent reissue could not reset the term of the original patent (which was set by the disclaimer). Interestingly, the BPAI decision also included concurring opinions that would have held differently had the patent not expired prior to completion of the reissue proceeding (December 2003).

Last week, the CAFC affirmed the USPTO, and made clear that patent reissue cannot withdraw a terminal disclaimer, even if the reissue proceeding were capable of concluding prior to expiration. Read the rest of this entry »

USPTO Changes Patent Reissue Practice

Posted On: Aug. 23, 2011   By: Scott A. McKeown
Topics: Error, Reissue
in re tanakaUSPTO Updates Patent Reissue Practice to be Consistent with In re Tanaka

The USPTO has now issued a Notice entitled “Clarification of Criteria for Reissue Error in View of In re Tanaka.”

As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their decision, the Board explained 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. The Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”

The Board’s decision was reversed by the CAFC (In re Tanaka here). In their reversal, the CAFC explained that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years.

In order to account for the decision of the CAFC, the USPTO Notice provides: Read the rest of this entry »

BPAI Considers Patent Reissue Oath Directed Only to New Claims

Posted On: Jun. 16, 2011   By: Scott A. McKeown
Topics: Error, Reissue
patent reissueOath Addressing Only New Claims Acceptable

Last week the BPAI considered an application for patent reissue (U.S. Patent 5,819,034) Ex Parte Kuiacose Joseph et al. The appeal considered the propriety of an oath in a patent reissue that did not identify a mistake in the original claims. A similar question was recently explored at the CAFC (In re Tanaka) relative to new, dependent claims.

In the application for patent reissue the original claims were cancelled in favor of new claims directed to a different invention. The cancelled, original claims were presented in a divisional patent application (now suspended pending the reissue). The Examiner found the reissue oath, which was directed to new method claims, defective since it did not identify an error in the original claims. The originally issued claims were directed to a system.

In other words, consistent with the USPTO’s Tanaka argument, the Examiner took the position that the oath was defective as not identifying any defect in the issued patent. The BPAI disagreed with the examiner. Read the rest of this entry »

CAFC Reverses USPTO on Important Question of Patent Reissue

Posted On: Apr. 15, 2011   By: Scott A. McKeown
thumbdownIn Re Tanaka Decision on “Bullet Claims” Reversed at CAFC

Today, the CAFC has held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. In re Tanaka (CAFC 2011) (here)

As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their holding, the Board explained 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. In their decision, the Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”

The Board’s decision was reversed today by the CAFC. In their reversal, the court explains that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years. Read the rest of this entry »

Orita Doctrine Blocks Patent Reissue

Posted On: Mar. 22, 2011   By: Scott A. McKeown
Topics: Error, Reissue
mistakesExpanded BPAI Panel Explains Acquiescence to Restriction Requirement is Not a Correctable Error

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that was made without deceptive intent that renders an issued patent wholly, or partly, inoperative.

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same reasoning is also utilized in another under appreciated aspect of reissue application practice, namely the pursuit of non-elected claims. When claims are restricted during original prosecution of the underlying patent application, and those claims are not pursued in a divisional application, such claims cannot be obtained by patent reissue. (very limited exceptions for linking claims in a genus/species sense). This prohibition is known as the “Orita Doctrine,” was applied yesterday in ex parte Goto et al. Read the rest of this entry »

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? Read the rest of this entry »

What to do with an Interfering Patent in Patent Reexamination?

roadblockThis past Monday the BPAI pointed out that a Patent Holder may not swear behind a patent that claims the same invention, the proper forum for such a priority contest being a patent interference proceeding. The decision, Ex parte Regents of the University of California (“Regents”) (decision here), affirmed-in-part the rejection of U.S. patent No. 5,916,912 in ex parte reexamination. 

In particular, the Board held that Regents could not antedate U.S. Patent No. 5,998,474 (“Cavazza”) because the ‘912 patent and Cavazza were claiming the same patentable invention. Applying, 37 C.F.R. 41.203(a), the Board reasoned that the two patents were directed to “the same patentable invention” since a claim of the Regents patent is obvious in view of a claim of Cavazza, and vice versa.

This leaves the Regents in a bind, aside from challenging the BPAI decision to the CAFC, how can an interfering patent applied in patent reexamination be overcome? Read the rest of this entry »

Does Patent Reform Go Too Far in Eliminating Inequitable Conduct?

Posted On: Mar. 28, 2010   By: Stephen G. Kunin

OopsSection 17 of the March 5, 2010 version of S. 515 (the Patent Reform Act of 2010) makes certain curious changes to Sections 116 (Joint Inventions), 184 (Filing in a Foreign Country), 185 (Foreign Filing Without a License), 251 (Reissue of Defective Patents), and 253 (Disclaimer) that would eliminate the “without deceptive intent” eligibility proscription.  The effect of these changes would be to eliminate the prohibition against gaining access to these statutory provisions where the applicant had committed fraud on the Patent Office.

If these so called technical amendments were enacted into law applicants could  add or delete named inventors to correct an error in inventorship that was made with deceptive intent.  That is, even where the applicants filed the patent application with the deceptive intent to exclude an inventor, Read the rest of this entry »

Ex Parte Tanaka Heading to CAFC

Posted On: Feb. 25, 2010   By: Scott A. McKeown
Topics: Error, Reissue

updateLast 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.

PEELING BACK THE LAYERS OF TANAKA: PATENT OWNER INITIATED REEXAMINATION AS AN ALTERNATIVE TO REISSUE

Shift_keyEx 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 »