Early 2012 is shaping up to be an exciting time for patent law, particularly for those focused on post grant patent practice.

USPTO–As to the new rule packages necessary to implement the new post grant mechanisms of the America Invents Act (AIA), it is rumored that the supplemental examination rules will issue this week. Due to an administrative delay with the Office of Management & Budget (OMB), the more extensive IPR and PGR rule packages are expected to publish next week. Earlier this month, some less extensive rules packages issued on patent reissue oath practice and changes to ex part patent reexamination practice.

CAFC– The court has agreed to reconsider Marine Polymer Technologies, Inc. v. HemCon, Inc. (here) en banc. As a reminder, this case considers whether or not intervening rights are created for a claim that is not literally amended in a post grant proceeding by a change in verbiage, but instead, by Patentee disclaimer. (earlier post here)

The court also has yet to issue a decision in In re Staats, which presents the USPTO theory that continuation filings in a broadening patent reissue must relate to a broadening that was foreseeable as presented in the original oath.

There is much to look forward to in the weeks to come.

As anyone that has ever filed a patent reissue can attest, the inconsistent application of oath requirements can be maddening. In fact, the vast majority of patent reissue applications are delayed due to such informalities —aggravating an already significant problem.

As the America Invents Act has required that the “deceptive intent” component of patent reissue oaths be stricken, the USPTO has taken the opportunity to fix a few other problems while they were under the hood. Last Friday, a Notice of Proposed Rule making entitled “Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act.” (here)

Major Changes, include:

(1) Delete the requirement for a reissue oath or declaration to include a statement that all errors arose without any deceptive intent on the part of the applicant;

(2) Eliminate the requirement for a supplemental oath or declaration when a claim is amended, and require a corrected oath or declaration only where all errors previously identified in the reissue oath or declaration are no longer being relied upon as the basis for reissue;

(3) Require applicants to specifically identify any broadening of a patent claim, rather than merely provide an alternative statement that applicant is correcting an error of either claiming more or less than a patentee was entitled to claim;

(4) Clarify that a single claim containing both a broadening and a narrowing of the claimed invention is to be treated as a broadening. These changes will provide for more efficient processing of reissue applications and improve the quality of patents, in accordance with the intent of the Leahy-Smith America Invents Act.

(5) In order to implement the conforming amendment made to 35 U.S.C. 251 in Section 4(b)(2) of the Leahy-Smith America Invents Act, the Office is also proposing to amend the rules to permit an assignee of the entire interest who filed an application under 35 U.S.C. 118 that was patented to sign the reissue oath or declaration in a reissue application of such patent (even if the reissue application is a broadening reissue).

(6) Liberalize the use of duplicate oaths in continuation reissue applications.

Additional rules packages detailing procedures for implementing IPR and PGR are expected next week.

On Tuesday the CAFC heard arguments in the case of Pregis Corporation v. Kappos and Free Flow Packaging Intl. At issue in this case was a cross appeal of under the Administrative Procedure Act (APA) alleging that the USPTO had issued U.S. Patent 7,361,397 in an arbitrary and capricious manner. The ‘397 Patent is directed to plastic film used in machines that manufacture the now ubiquitous air pillows found in shipping containers.

Yet, rather than going through the time and effort to necessary to sue a government agency on a seemingly novel cause of action, why didn’t appellant Pregis simply seek reexamination of the ‘397 Patent?

At the time Pregis was approached to take a license, the ‘397 Patent had not yet issued from the USPTO. Pregis was approached to take a license to the Free Flow portfolio. (a notice of allowance had issued for the application underlying the ‘397 Patent). Thus, there was no ‘397 Patent to reexamine at the outset of the dispute between the parties.

Being outside the protest window for the maturing application (rarely used anyway), and believing there to be clear mistakes/capricious action made in the allowance of the case, Pregis filed suit against the USPTO under the APA in the Federal District Court of Virginia (Alexandria).

The initial complaint (here) may have been primarily intended as a “back door” protest to encourage the Office to revisit the allowance. Nevertheless, the patent issued in due course and the APA action continued through the Virginia Court. The dispute made its way to the CAFC on Tuesday. Interestingly, the USPTO was represented by an attorney from the Dept. of Justice on appeal.

At mins 23-45 of the CAFC argument, the APA issues were explored, with significant attention applied to public policy concerns. (recording here).

It would seem unlikely that the Court will endorse the practice, nevertheless the debate is quite interesting in view of recent APA issues explored by the CAFC. (In re Jung, Hyatt v. Kappos)

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.

(emphasis added)

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.

Last week, an important question relating to broadening patent reissue practice was argued before the CAFC. (In re Staats).

At issue in Staats is a third reissue patent application of Apple Computer Patent 5,940,600. The third reissue patent application was a continuation that claimed priority back to the original reissue application. (the original reissue application being properly filed within two years of issuance of the ‘600 Patent). During prosecution of the third continuation the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the two year window for broadening reissue. The examiner reasoned that the error in the original reissue filing was allegedly unrelated to the error presented for correction in the third filing.

An expanded panel of the BPAI affirmed the rejection (Ex Parte Staats) characterizing the issue in dispute as:

This is a case of first impression. Resolution of the case hinges on one fundamental question: Can a continuing reissue application broaden patented claims beyond the statutory two-year period in a manner unrelated to the broadening aspect that was identified within the two-year period? Put another way, is it enough under the law to merely present an intent to broaden that is limited to a particular aspect (e.g., a particular embodiment of the invention) within the two-year period, yet broaden in unforeseeable ways (e.g., pertaining to other embodiments) outside the two-year period?

In last year’s BPAI decision, the Board analyzed the statute based upon their understanding of the equitable principles underlying the two-year limitation provided by the statute. In doing so, the BPAI relied heavily on the aspect of foreseeabilityemphasized in case law addressing prosecution laches. In affirming the rejection, the BPAI surmised:

Since this broadening was completely unforeseeable by the public within the two-year statutory period, a circumstance that is undisputed, it runs counter to the public notice function underpinning § 251 and is therefore improper.

With respect to forseeability, the CAFC appeared to recognize the impracticability of the USPTO’s “forseeability” test during last week’s oral argument. The bulk of the discussion during oral argument (audio here) related to whether or not earlier CCPA precedent controlled. In this regard, In re Doll 419 F.2d 925, 928 (CCPA 1970) was discussed extensively, as well as some early Supreme Court cases pertaining to patent reissue. The Court did not appear to accept the argument that the earlier Supreme Court cases supported the argument of the USPTO ( 21:40) and questioned whether or not Doll was truly distinguishable from the present facts.

The solicitor pointed out that the patent reissue statute has a limited two year window for broadening as a matter of public policy. The solicitor reasoned that the 2 year limit serves to enhance public’s reliance on issued claim scope and protect the public. The Court did not appear persuaded by public policy considerations, noting the seemingly “one-off” nature of the current fact pattern. Nevertheless, the Solicitor warned that a reversal of the agency would encourage filers to seek creative errors to broaden claims until patent term was exhausted.

Of course, most practitioners avoid broadening patent reissue practice altogether by simply maintaining a pending, regular continuation applications. 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.

Assuming this case were affirmed, is there now grounds to argue for “claim scope laches” vis-a-vis regular patent application continuation practice?

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)

In 2010, there were more reissued patents than in any year in history. While patent holders can benefit from using the reissue process to correct patent defects, there are limitations that must be understood and considered.

For those looking for some CLE credit in the month of July, I will be presenting Patent Reissue: Benefits, Limitations & Strategies on July 12th. The program will provide guidance to counsel for parties impacted by the patent reissue process. Topics will include recent developments, such as recent BPAI and CAFC rulings, as well as patent reform initiatives relating to patent correction.

Additional information, and registration information may be found (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.

As discussed here at length, there have been two recent decisions of the CAFC that will impact patent reissue practice before the USPTO, In re Tanaka and In re Mostafazadeh. In Tanaka, the CAFC held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. 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).

Another important question relating to patent reissue practice remains pending at t he CAFC(In re Staats)

On June 2, 2011, my partner Steve Kunin will speak on these issues and more in a Webinar entitled “Recent Federal Circuit Decisions on Reissue”  To register for this 1 hour program click here.

Back in February I recounted the oral agument of In re Mostafazadeh. This case explored the degree to which a claim limitation added to distinguish over the prior art during original prosecution may be broadened during patent reissue. In patent reissue, Mostafazadeh sought an intermediate scope to the “circular attachment pad” limitation added to his claims during original prosecution. In the reissue claims, the terminology “circular” was removed. To justify this broadening, the Patentee argued that the claim was materially narrowed in “other respects.”

On appeal, the CAFC considered whether or not the “materially narrowed in other respects” aspect of the rule established in In re Clement, (MPEP 1412.02), must be related to the “critical limitation” (i.e., circular attachment pad) or whether the narrowing must relate to an “overlooked aspect,” such as an unclaimed species or embodiment as advanced by the USPTO.

In their affirmance of the USPTO. the CAFC characterized the BPAI analysis as “perplexing” and found their interpretation of “materially narrowing” as “contrary to our precedent.”

The CAFC decision (here) explained that the materially narrowing necessary to avoid recapture must relate to the surrendered subject matter, not an “overlooked aspect” of the invention as required by the USPTO, stating:

[A] limitation that is added during prosecution to overcome prior art cannot be entirely eliminated on reissue because doing so would constitute recapture of the surrendered subject matter. The limitation may be modified, however, so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.     

 

 .           .           .           .           .           .           .

 

[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. (emphasis added)

Mostafazadeh did not eliminate the attachment pad limitation, only modified it by removing “circular.” Still, the Board found that the narrowing limitations added in the patent reissue did not relate to the attachment pad limitation, thus step (3) of the Clement test could not save the Patentee. Had the Patentee added narrowing language that related to the circular pads, such as requiring that the attachment pads be formed of a specific alloy, or oriented in a certain way, the removal of “circular” may have been acceptable.

This case, much like In re Tanaka, will provide Patentees a greater degree of flexibility, and opportunity to pursue patent reissue going forward.