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:

Effective immediately, the following policy is implemented. Where the only change to a patent made in an application for its reissue is the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims, the application claims are not to be rejected as failing to state an error under 35 U.S.C. § 251. In addition, any rejection of record in a pending application on this basis will be withdrawn, and any new Office action issued will inform applicant of the withdrawal, and the resulting status of the application in view of the withdrawal.

MPEP § 1402 will be revised in due course to reflect the holding in Tanaka.

While the Notice simply reiterates the Tanaka holding, its existence will allow examiners to ignore the inconsistent MPEP language.

2011 has been a banner year at the CAFC with respect to patent reissues disputes with Tanaka and  In re Mostafazadeh, and In re Staats still to come. In Mostafazadeh, the CAFC, while siding with the USPTO on the facts, corrected the USPTO’s position on the recapture rule.  The CAFC explained that a claim may be broadened with respect to previously surrendered subject matter (i.e., recapture) if the claim is also materially narrowed with respect to the surrendered subject matter. (previous post here).

On September 8th the CAFC is slated to hear oral arguments relating in another important patent reissue dispute with the USPTO, In re Staats. (previous post here)

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.

With respect to the oath, the Applicant explained the ‘034 Patent to be wholly or partly invalid:

…by reason of my claiming less than I had the right to claim in the patent. Specifically, the patent discloses a method and system that, stated generally, facilitate the presenting of data about an item being offered for sale to a user,and in response to a single action by the user, generating an order for the item. This invention is distinct from the invention claimed in the original patent; and is not in any way claimed in the patent. (emphasis added)

As stated in the oath, the disclosure was directed to a system and method, and the new claims (this invention) included the specific language noted. The original claims were all system claims.

The examiner found this language lacking, explaining:

[t]his statement of error is not sufficient because it does not identify a single word, phrase, or expression in the specification or in an original claim(s) 1-9, and how it renders the original patent wholly or partly inoperative or invalid. The statement filed is no better than saying in the reissue 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.’, see MPEP 1414, II, C.

In reversing the examiner, the Board stated:

We find the phrase “facilitate the presenting of data about an item being offered for sale to a user, and in response to a single action by the user, generating an order for the item” describing what the original claims omitted has sufficient specificity.

Interestingly, the Board did not reference the Tanaka decision. While the original claims were cancelled here (unlike Tanaka), the decision makes clear that the original claims were not surrendered. The originally issued claims remain pending in another proceeding. Prior to Tanaka, the examiner would have likely been affirmed.

This decision, and Tanaka, make clear that presentation of claim errors need not reference original claims at all.  Moreover, as I have explained in the past, comparison between originally issued claims and new claim language in patent reissue should be avoided by Patentees.

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.

In their decision to reverse the Board, the court explained:

As interpreted by this court, the reissue statute imposes two requirements for properly invoking the reissue process. First, the original patent must be “wholly or partly inoperative or invalid.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1564 (Fed. Cir. 1989). Second, “the defective, inoperative, or invalid patent” must have arisen “through error without deceptive intent.” Id. at 1565. There is no dispute in this case that any defect arose without deceptive intent. . . . 

Judge Giles S. Rich wrote the Handel decision reversing the Board’s rejection of the reissue application. He explained that the reissue claims involved subject matter disclosed in the specification and thus were properly directed to “the invention disclosed in the original patent.” Id. at 944. In a footnote, Judge Rich remarked that “[t]he term ‘inoperative’ has been construed to mean inoperative adequately to protect the invention, which may be due to failure of the solicitor to understand the invention.” Id. at 945 n.2 (quoting McGrady, Patent Office Practice 309 (4th ed. 1959)). Judge Rich added that because the original patent claims were all retained in the reissue application the “term ‘less’ [in Handel’s reissue declaration] appears to have been used in the sense of fewer claims than he could properly have made, rather than in the statutory sense of subject matter included within the claims.” Id. at 946 n.2 (emphasis in original). Thus “[t]he narrower appealed claims are simply a hedge against possible invalidity of the original claims should the prior use be proved, which is a proper reason for asking that a reissue be granted.” Id. While this court has since characterized that view as dictum, it has not departed from it. . . . 

Even though the rule that adding a dependent claim as a hedge against possible invalidity is a proper reason to seek reissue has seemingly never been formally embodied in a holding of this court or its predecessor, articulation of the rule in Handel was not simply a passing observa-tion—it was a considered explanation of the scope of the reissue authority of the PTO in the context of a detailed explanation of the reissue statute. Based on this court’s adoption of that rule and its adherence to the rule in both Muller and Hewlett-Packard, this court rejects the Board’s contrary ruling.

In the dissent, Judge Dyk explains that where all the original claims are still present in the patent reissue proceeding, the addition of narrower dependent claims is a surrender of nothing (i.e., statute requires surrender of original patent). He also notes that the cases relied upon by the majority are distinguishable on their facts.

In essence Judge Dyk seems to be saying that where a patent reissue application seeks only new, dependent claims, it is essentially a continuation application by proxy. I think the USPTO would agree. Certainly, the anti-continuation lobby present at the USPTO back in 2008-2009 spawned quite a few initiatives to combat continuation filings. 

Today’s decision is a very positive development for Patentees.

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.

In Goto, the applicant failed to pursue certain non-elected inventions during prosecution of the original patent application. In a patent reissue application filed thereafter, the applicant pursued substantially similar claims. As explained by the BPAI:

The “Orita doctrine” precludes applicants from obtaining by reissue claims which, because of a requirement for restriction in which they had acquiesced, they could not claim in their patent. In re Orita, 550 F.2d 1277, 1280 (CCPA 1977). 

When applicants acquiesce in the examiner’s requirement for restriction, such action manifestly is not “error” causing patentee to claim “less than he had a right to claim in the patent” in the language of 35 U.S.C. § 251. Id, 550 F.2d at 1280.  

The so-called Orita doctrine precludes reissue applicants from obtaining substantially identical claims to those of non-elected groups identified in an examiner’s restriction requirement when such claims could not have been prosecuted in the application from which they were restricted. In re Doyle, 293 F.3d 1355, 1359 (Fed. Cir. 2002)

In Goto, the original, restricted claims were directed to an inket recording head. In the reissue, the claims were written to emphasize a board member of the recording head. As show in at pages 10-11 of the BPAI decision, the claims were substantially similar in scope, albeit directed to different products. (the reissue claims also recited means-plus-function features to provide further points of distinction, to no avail).

With this decision, practitioners are reminded that patent reissue is a tool to correct mistakes of an issued patent, not a tool to resurrect restricted claims of the original prosecution.

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.

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?

One rarely elected alternative would be to pursue a patent vs. patent interference in a district court under 35 U.S.C. 291.  291 actions are rare due to the arcane nature of interferences.  Most patent owners wisely elect not to assume the uncertainty of how a district court will apply interference laws and/or administer unfamiliar interference procedures.

A more palatable alternative is to file a reissue application and request an interference (a 35 U.S.C. 135(a) interference).  However, in order to adhere to 35 U.S.C. § 251, the patent owner must identify and correct a defect with the reissue application. In years past, Patent Holders may have simply alleged that the defect was the failure to present a dependent claim. Once the reissue proceeding was commenced on this basis, the interference could then be pursued.  However, pending the review of Ex parte Tanaka by the CAFC, such a practice seems like a dead end.

In the case of Regents, the USPTO has concluded that interfering patents exist. Thus, it is clear that a defect as to invalidity is present in accordance with the reissue statute. Yet, unlike other bases for patent reissue, can the existence of an interfering patent alone qualify as an “error” when statutory authority exists for district courts to also address the issue?

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, who should have rightfully been named as an inventor in the patent application or where the application was intentionally and  deceptively filed naming individuals as inventors who could not qualify as joint inventors,  such error may be corrected.

U.S applicants are forbidden from filing a patent application in a foreign country prior to six months after filing in the U.S., unless they have obtained a foreign filing license.  If they fail to obtain a foreign filing license in such circumstance, they are barred from obtaining a U.S. patent.  However, by statute, applicants in such circumstances can apply for and obtain a retroactive foreign filing license.  The revisions to Sections 184 and 185 would, if passed into law, permit the grant of such foreign filing license, even where the premature foreign filing was done with through error and with deceptive intent.  Thus, applicants could deceptively  attempt to circumvent the prohibition against foreign filing without a license and still be able to obtain a retroactive foreign filing license.  One might be concerned by the national security threat implications of this change, especially where the foreign filing relates to subject matter that may be export controlled.  This is especially true, if the foreign filing occurs prior to the applicants’ U.S. filing and the application has not been subjected to a security review by a defense agency, NASA or the Department of Energy.

If enacted into law, reissue applications will be eligible for filing to correct substantive errors in the original patent even where such errors arose with deceptive intent.  Furthermore,  if the patent is litigated and a claim is found invalid because of a finding of deceptive intent, the remaining claims would not be rendered “invalid”.  The effect of such changes would seem not only to provide for curing of inequitable conduct through the filing of a reissue application, but also, perhaps, affecting the enforceability of the patent by insulating the claims of the patent that were not infected by the deceptive intent in relation to other patent claims found to be invalid.  It appears, by implication, that the change to Section 253 would create a “but for” standard for materiality as a basis for unenforceability of only the affected claims of the patent.

The bill is unclear on these points since, unlike the new Section 10 introducing Supplemental Examination as a means to cure inequitable conduct, the proposed changes to Sections 116, 184, 185, 251 and 253 do not have corresponding amendments that address the question of patent enforceability, where there was deceptive intent involved in the procurement of the original patent.  Only time will tell as to whether these sections of the bill will need to be clarified or whether they will be stricken, because they seem to encourage and reward fraudulent conduct in the procurement of patents.

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

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 an increased number of patent owner initiated ex parte reexaminations.  As such, the Central Reexamination Unit (“CRU”) may very quickly be burdened with the work of the Examining Corps by patent holders seeking results now clearly foreclosed through patent reissue.

An expanded panel of the BPAI concluded that adding a dependent claim to “hedge against possible invalidity of the original claims” does not constitute an error correctible by a reissue application.  The panel did not accept as binding the “dicta” from In re Handel, 312 F.3d, 136 USPQ 460 (CCPA 1963) (opining that reissue as a hedge against possible invalidity is proper).  This may set up a basis for a possible appeal to the Federal Circuit by the reissue applicant.  In short, according to the Tanaka opinion, if the basis of the § 251 error is claiming more than the patentee was entitled to, then an original patent claim must be narrowed to satisfy § 251.  When original patent claims are retained, neither more nor less is claimed and hence no basis for reissue is presented.

When a patent owner is confronted with possible claim invalidity, rather than making an admission in reissue regarding the possible invalidity of an original patent claim as appears to be required by Tanaka, a patent owner may now choose to initiate ex parte reexamination.

In contrast to the error required under 35 U.S.C. § 251, a patent owner can establish a substantial new question (SNQ) of patentability without making an admission of claim invalidity.  Further, pursuant to current PTO policy, the CRU examines only claims identified in a reexamination request.  Therefore, reexamination is more attractive as it does not subject all claims to review like reissue, and does not consider patentability issues such as statutory subject matter under 35 U.S.C. § 101, or 35 U.S.C. § 112 for original claims.[1]

Patent owner initiated reexamination can be therefore be leveraged to add new dependent claims by presenting a narrowly tailored SNQ for those claim[s] where invalidity is at issue.  The patent owner can file a proposed amendment along with the reexamination request presenting a narrowing dependent claims to hedge against possible invalidity of original patent claims with or without amendment to the original patent claims. MPEP 2221

As patent reissue options are restricted, or are made less attractive by the USPTO, patent owner initiated ex parte reexamination may soon be on the rise.