Most practitioners are well aware that disputes with the USPTO over formal oath requirements in patent reissue are the rule, not the exception. I have written extensively in the past as to the significant delays caused by this seemingly straight forward formal requirement.
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.
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In re Staats Argued at CAFC
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 Read the rest of this entry »
USPTO 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 »
Program to Discuss Current & Future Patent Correction Options
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)
Oath 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 »
Recent Changes to Patent Reissue Practice
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.
USPTO Affirmed on Facts, But Corrected as to Proper Recapture Rule Analysis
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.”
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In 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 »
Walker Process Allegation Defeated by Re-issuance of Original Patent Claims
Post grant proceedings before the USPTO cannot cure inequitable conduct. This is because the inequitable conduct inquiry centers on the patentee’s intent during the prosecution of the original application. Still, a finding that a reference lacks materiality by the USPTO in a post grant proceeding can be quite useful to a patentee for rebutting a charge of inequitable conduct. Likewise, a finding of materiality by the USPTO in a post grant proceeding can be quite useful to defendants for bolstering a charge of inequitable conduct. In this same vein, a recent case has demonstrated that a favorable post grant result at the USPTO may be used to completely preclude allegations of fraud that rely upon the “but for” test, such as a Walker Process claim.
A Walker Processclaim seeks to strip a patentee of its exemption from the antitrust laws. Several factors must be present to prove such a claim, one of which is “a clear showing of reliance, i.e., that the patent would not have issued but for the misrepresentation or omission.”
In U.S. Rubber Recycling, Inc. v. ECORE International Inc., et al.(CDCA), plaintiff, U.S. Rubber, alleged that Read the rest of this entry »
Expanded 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 »