ass=”alignleft size-full wp-image-3880″ title=”roadblock” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/09/roadblock.jpg” alt=”roadblock” width=”203″ height=”144″ />This 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?
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Broadening Patent Reissue Requires Unequivocal Declaration Statement
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.
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Recapture of Subject Matter Through Patent Reissue
Can Inconsistent Statements Made Outside of the USPTO Surrender Claim Scope for Recapture Purposes?
The recapture doctrine of patent reissue is often a subject of debate before the BPAI. As we discussed last week, the question of the propriety of an intermediate claims scope vis-a-vis recapture was recently decided by the BPAI, and briefing before the CAFC is near complete on the same issue (In re Mostafazadeh). A day after the BPAI decision of last week, the Federal District Court of Ohio considered recapture in the context of statements made outside of the USPTO in Bendix Commercial Vehicle Systems LLC, et al v. Haldex Brake Products Corp., 1-09-cv-00176 (N.D.O.H)
As a reminder, the recapture doctrine exists because a deliberate surrender of subject matter is not an “error” that is correctable by patent reissue. The recapture doctrine prevents Patent Holders from broadening claim scope in patent reissue that was deliberately surrendered during original prosecution. In Bendix, the defendant (Haldex) argued that the asserted broadened reissue patent, RE 38,874, (relating to automotive braking equipment) was invalid under 35 USC § 251 due to statements made during an earlier litigation and in a foreign patent office.
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BPAI Clarifies Patent Reissue Recapture Doctrine
Does Recapture Include an Intermediate Claim Scope?
In a nutshell, the recapture doctrine prevents Patentees from broadening claims via patent reissue to “re-capture” subject matter intentionally surrendered during original prosecution. The recapture doctrine exists because a deliberate surrender of subject matter is not an “error” that is correctable by patent reissue. MPEP § 1412.02 spells out the 3-part test to identify when subject matter claimed in reissue is subject to recapture.
In 2003, the BPAI issued Ex Parte Eggert, which indicated that an intermediate claim scope presented in reissue (i.e., somewhere between what was surrendered and what was ultimately claimed) would not constitute recapture. Thus for example, if the prior art showed a hard-wired communication and the claim that issued was amended during original prosecution to recite an infrared communication, the intermediate scope sought via a broadening patent reissue might be “wireless communication.”
Back in April of this year, we questioned the continued viability of Ex Parte Eggert in view of the CAFC’s decision in North American Container. While the USPTO had publicly taken the position that Eggert would no longer be followed, some wondered whether that decision was actually consistent with the holding of North American Container. Yesterday, a decision issued, amplifying the USPTO’s reading of North American Container.
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Bad Apple! BPAI Rejects Apple Patent Reissue on Equitable Principles
CAFC to Decide Prosecution Laches in Patent Reissue
Earlier this year we discussed the Ex Parte Tanaka decision of the Board of Patent Appeals & Interferences (BPAI) with respect to “bullet claims” in patent reissue, now before the CAFC. On June 24, 2010, a second Board decision relating to patent reissue was appealed to the Federal Circuit (Ex Parte Staats).
Although presented in the context of patent reissue, the point of contention in Staats is actually one of prosecution laches and the application of equitable principles to statutory interpretation. In Staats, the Board upheld a rejection of a broadening reissue application as defective under 35 U.S.C. 251 for failing to include the appropriate broadening oath within two years of the original patent issuance. The Board reasoned that although a parent reissue had filed an appropriate broadening oath and identified at least one error, the continuation reissue was not entitled to rely on that oath, despite the continuity between these reissue applications.
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Zetia Patent Litigation Settles: Reissue Bullet Claims Questioned
Subsequent to the Ex Parte Tanaka BPAI decision (Appeal No. 2009-000234) on December 9, 2009, Judge Jose L. Linares of the U.S. District Court for the District of New Jersey granted partial summary judgment invalidating four claims in the Zetia Reissue Patent U.S. Reissue Patent No. RE37,721 that were added in the reissue application of U.S. Patent No. 5,767,115. The reissued claims were directed to the active ezetimibe species, which was already encompassed by the original ‘115 patent claims to a genus of hydroxyl-substituted azetidinone compounds. As we previously pointed out, reissue patent applications do not fix all errors. Here as in Tanaka, “bullet claiming” via patent reissue is once again disputed as an error that may be corrected by reissue.
The civil action, Schering Corp. et al. v. Glenmark Pharmaceuticals Inc. USA et al., (Case No. 2:07-cv-01334), was filed in 2007, after Mumbai based Glenmark filed an abbreviated new drug application
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Patent Reissue Doesn’t Fix Errors in Portfolio Management
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.
Patent owners seeking reissue within two years of patent issuance are permitted the additional opportunity to broaden the issued claims, subject to intervening rights. Reissue applications filed outside this two year window may not broaden issued claim scope.
Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution. Important limits are placed on patent reissue with respect to
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Treatment of the Recapture Doctrine at the BPAI post North American Container
ass=”alignleft size-full wp-image-2028″ title=”mulligan1″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/04/mulligan1.png” alt=”mulligan1″ width=”225″ height=”225″ />All hackers err… golfers know there are both appropriate and inappropriate times to take a mulligan. When is it OK to take a mulligan via reissue? The 3-step test to determine whether the recapture rule prohibits a mulligan in reissue has been well-established since In re Clement[1] was decided in 1997. As set out by the MPEP in § 1412.02, the 3-step test requires an examiner to make the following determinations:
(1) whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. {Emphasis added.}
You may recall the 2003 Board of Patent Appeals and Interferences (“Board”) precedential decision
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Does Patent Reform Go Too Far in Eliminating Inequitable Conduct?
Section 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,
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Merger Considerations in Patent Reissue and Inter Partes Patent Reexamination Proceedings
–Procedural Alchemy–
The general policy of the USPTO is that the examination of a reissue application and an inter partes reexamination proceeding will not be conducted separately at the same time as to a particular patent. MPEP § 2686.03. The reason for this policy is to permit timely resolution of both the reissue and the inter partes reexamination, to the extent possible, and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two files on behalf of the patent owner. If both a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, a decision will normally be made to merge the reissue application examination and the inter partes reexamination proceeding or to stay one of the two.[1]
Where a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.985. See also MPEP § 1418. In addition, the patent owner should file in the inter partes reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.985 to notify the Office in the inter partes reexamination proceeding of the existence of the two concurrent proceedings.
The decision on whether or not to merge the reissue application examination and the reexamination proceeding or which (if any) is to be stayed (suspended), will generally
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