BPAI Once Again Shoots Down Broadening Reissue
Patent reissue has been a recurring topic here as of late. More recently, the breadth of the recapture doctrine has been discussed. Earlier this year, I discussed ex parte Staats relative to a pending CAFC appeal, and the pending CAFC appeal of ex parte Tanaka.
While the main issue in ex parte Tanaka is whether or not the addition of narrower dependent claims via patent reissue can be said to correct an “error” pursuant to the reissue statute, Tanaka, to a lesser extent, also illustrates the danger of a generically worded reissue declaration. As the BPAI decision of last Friday once again emphasizes, (ex parte Matthew Howard Fronk et al.,) a proper broadening declaration must not only identify at least one error in the issued patent (made without deceptive intent), but must also unequivocally indicate an intention to broaden. More importantly, this unequivocal intent to broaden must be communicated to the USPTO by declaration only, within two years of original patent issuance.
When prosecuting reissue patent applications, defective declarations are the norm due to the USPTO’s heightened interest in ensuring the declaration specifically identify the error sought to be corrected. Further, when presenting a broadening reissue, it is not uncommon for such an application to be filed very close to, or on the date of the two year anniversary of original patent issuance. When filing such “last minute” broadening reissue applications, failure to identify an unequivocal intent to broaden could be fatal.
In deciding a case last Friday the BPAI shot down an ambiguously worded declaration that attempted to cover both narrowing and broadening, explaining:
In the instant case, we cannot agree with Appellants’ contentions that the statement “by reason of a patentee claiming more or less than he had a right to claim in the patent” in the Reissue Application Declaration is a clear statement of intent to file a broadening reissue application. . . . .(emphasis added)
In the present case, Appellants’ description fails to indicate that the reissue is a broadening reissue and does not explain the nature of the broadening. . . . Accordingly, Appellants’ argument that the Examiner was required to make findings that intent may be inferred from the reissue application declaration is not well taken. (App. Br. 8-9.) Appellants’ belated explanation of why the amendment to claim 1 broadens the claims of the ‘376 Patent in the preliminary amendment of October 20, 2004 and in the Appeal Brief (FF 6; App. Br. 11) are insufficient to rectify the deficiencies of the Reissue Application Declaration. Arguments of counsel cannot take the place of or supplement the Reissue Application Declaration. Oetiker, 1997 WL 1883795 at *5-6. Therefore, the Examiner did not err in rejecting claims 9-172 under 35 U.S.C. §251 as being directed to a broadening reissue improperly filed after two years from the issue date of the ‘376 Patent.
Clearly, the USPTO considers a broadening declaration proper ONLY when unequivocal, and presented within two years of original patent issuance.
As recent cases demonstrate, the nuances of patent reissue practice are significant and largely underappreciated by Patentees.