Expanded BPAI Panel Explains Acquiescence to Restriction Requirement is Not a Correctable ErrorAs 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.

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.