Getting Your Case Stayed By Stipulated AccelerationMany inter partes patent reexaminations are conducted concurrent to district court litigation (USPTO statistics indicating 70% ). At one point or another, the defendant(s) will seek a stay of the parallel litigation arguing that the inter partes patent reexamination will reduce issues for trial based upon familiar factors. Of course, in arguing against the stay, the Patentee will cite to the statistics indicating that inter partes patent reexamination take years to conclude through appeal.So, since everyone knows the game, why don’t defendants show some creativity and take matters into their own hands? In other words, there is a rule already in existence by which participants of an inter partes patent reexamination can accelerate the proceeding THEMSELVES. So, why isn’t anyone using it?37 CFR 1.953(b) provides for an expedited Right of Appeal Notice (RAN). At any time after the Patentee’s response to the initial Office action on the merits in an inter partes patent reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a RAN. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding, and must identify all of the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a RAN limited to the identified issues shall be issued. See also MPEP § 2673.02 (II).In other words, significant portions of inter partes patent reexamination prosecution can be compacted, by agreement. Of course, litigating parties never agree on anything, which is why this rule is never used. But, if a defendant were to indicate in their motion for stay that they would stipulate to following this procedure, they would in fact be offering to accelerate the proceeding. In this way, the defendant can take some of the “bite” out of the Patentee’s prejudice (i.e., time delay) argument.In practice very few expedited RANs are sought (I’m not aware of a single one), thus contributing to the prolongation of the inter partes patent reexamination prosecution phase (appeal being a separate phase). If the patent litigation is not stayed and the trial is imminent or underway, the patent owner has little incentive to expedite the inter partes reexamination proceedings. In such circumstances, particularly where the patent owner has not canceled or amended claims for fear of intervening rights applying, expediting the right of appeal where original patent claims are rejected has no benefit. Even where all claims are confirmed or allowed, the patent owner has little incentive to expedite the right of appeal notice to permit the third party requesters to get their appeals heard promptly.On the other hand, where the concurrent patent litigation is stayed pending the outcome of the inter partes reexamination proceeding, the patent owner may want to expedite the right of appeal notice, especially where all claims are confirmed or allowed. In such circumstance, the third party requesters may lack an incentive to seek an expedited right of appeal notice because of fear of the estoppel provisions of 35 U.S.C. § 315(c). Thus, agreeing to fast track the case to appeal is not without risk for either party.Finally, where there are circumstances that may warrant the filing of an expedited right of appeal notice, such as where a parallel litigation is stayed, the USPTO should consider a sua sponte waiver of 37 C.F.R. 1.955. This would permit a joint interview for the purpose of reaching agreement on the issues appropriate for final action and identification of all of the appealable issues. Such would advance the inetrests of the special dispatch requirements of 35 U.S.C. § 314(c). Such a procedure would be in a similiar vein to that of the pilot program seeking waiver of the Patent Owner Statement in ex parte patent reexaminati

Many inter partes patent reexaminations are conducted concurrent to district court litigation (USPTO statistics indicating 70% ). At one point or another, the defendant(s) will seek a stay of the parallel litigation arguing that the inter partes patent reexamination will reduce issues for trial based upon familiar factors. Of course, in arguing against the stay, the Patentee will cite to the statistics indicating that inter partes patent reexamination take years to conclude through appeal.

So, since everyone knows the game, why don’t defendants show some creativity and take matters into their own hands? In other words, there is a rule already in existence by which participants of an inter partes patent reexamination can accelerate the proceeding THEMSELVES. So, why isn’t anyone using it?

37 CFR 1.953(b) provides for an expedited Right of Appeal Notice (RAN). At any time after the Patentee’s response to the initial Office action on the merits in an inter partes patent reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a RAN. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding, and must identify all of the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a RAN limited to the identified issues shall be issued. See also MPEP § 2673.02 (II).

In other words, significant portions of inter partes patent reexamination prosecution can be compacted, by agreement. Of course, litigating parties never agree on anything, which is why this rule is never used. But, if a defendant were to indicate in their motion for stay that they would stipulate to following this procedure, they would in fact be offering to accelerate the proceeding. In this way, the defendant can take some of the “bite” out of the Patentee’s prejudice (i.e., time delay) argument.

In practice very few expedited RANs are sought (I’m not aware of a single one), thus contributing to the prolongation of the inter partes patent reexamination prosecution phase (appeal being a separate phase). If the patent litigation is not stayed and the trial is imminent or underway, the patent owner has little incentive to expedite the inter partes reexamination proceedings. In such circumstances, particularly where the patent owner has not canceled or amended claims for fear of intervening rights applying, expediting the right of appeal where original patent claims are rejected has no benefit. Even where all claims are confirmed or allowed, the patent owner has little incentive to expedite the right of appeal notice to permit the third party requesters to get their appeals heard promptly.

On the other hand, where the concurrent patent litigation is stayed pending the outcome of the inter partes reexamination proceeding, the patent owner may want to expedite the right of appeal notice, especially where all claims are confirmed or allowed. In such circumstance, the third party requesters may lack an incentive to seek an expedited right of appeal notice because of fear of the estoppel provisions of 35 U.S.C. § 315(c). Thus, agreeing to fast track the case to appeal is not without risk for either party.

Finally, where there are circumstances that may warrant the filing of an expedited right of appeal notice, such as where a parallel litigation is stayed, the USPTO should consider a sua sponte waiver of 37 C.F.R. 1.955. This would permit a joint interview for the purpose of reaching agreement on the issues appropriate for final action and identification of all of the appealable issues. Such would advance the inetrests of the special dispatch requirements of 35 U.S.C. § 314(c). Such a procedure would be in a similiar vein to that of the pilot program seeking waiver of the Patent Owner Statement in ex parte patent reexamination.

Comparing Claims in Reissue Oath Haunts Patent HolderOn Wednesday, the Federal Circuit reversed a decision of the ITC that excluded the imports of Lucky Litter, LLC. The case (here) related to cat litter boxes having an automated cleaning feature. In reversing the ITC, the CAFC found that the “predetermined event” recited in claim 33 of the patent at issue (RE 36,847), was not limited to a cat exiting the litter box.Prior to seeking patent reissue, claim 1 of the patent recited a “cat exit sensor for sensing a cat exit” and a “delay means.” The Patentee filed a broadening patent reissue to remove these features. The reissue application oath explained that “[i]n particular, claim 1 of U.S. Patent 5,477,812 contains recitations regarding a cat exit sensor and delay means which are too limiting of the invention and unnecessary in view of the prior art. Claims 23 through 48 of the reissue application have limitations similar to those of claim 1, but define the invention with greater breadth.”The CAFC performed a traditional Phillips analysis of the ITC claim construction and held that “predetermined event,” by plain meaning, could not be limited to “cat exit.”  Still, the statement in the oath was cited by the court as a guidepost of the broader meaning of the claims added in reissue. Hindsight always being 20/20, what could the Patentee have done to potentially avoid this result?Claim construction issues aside, recent BPAI cases illustrate the importance of oaths in patent reissue. All too often, the preparation of the oath is deemed ministerial, and ignored in favor of prior art/claim drafting concerns. Oath preparation and wording should be a focal point of any patent reissue effort.When identifying an error in an original patent via added/amended claims in patent reissue, comparison to the originally issued claims is very attractive. This practice is not necessarily wrong, but can have unintended consequences as demonstrated by Lucky. By making such direct comparisons, the scope of the newly added claims becomes unnecessarily intertwined with the issued claims. For example, the oath in Lucky Litter would have been better off stating “new claims 23 through 48 are directed to the automated comb operation of a self cleaning cat litter box, albeit independent of any specific sensor or means-plus-function structure of the issued claims.” (I know, easy for me to say 10 years after the fact)It may be that the Patentee in Lucky still would have lost, oath or not. Nevertheless, the case demonstrates that oath filings are far from form practice, and can come back to haunt Patentees.  Finally, the patent is subject to an ongoing ex parte reexamination (90/010,389) and, as you may have guessed, new claims were added expressly reciting “cat exit.”  (see new claim 5

On Wednesday, the Federal Circuit reversed a decision of the ITC that excluded the imports of Lucky Litter, LLC. The case (here) related to cat litter boxes having an automated cleaning feature. In reversing the ITC, the CAFC found that the “predetermined event” recited in claim 33 of the patent at issue (RE 36,847), was not limited to a cat exiting the litter box.

Prior to seeking patent reissue, claim 1 of the patent recited a “cat exit sensor for sensing a cat exit” and a “delay means.” The Patentee filed a broadening patent reissue to remove these features. The reissue application oath explained that “[i]n particular, claim 1 of U.S. Patent 5,477,812 contains recitations regarding a cat exit sensor and delay means which are too limiting of the invention and unnecessary in view of the prior art. Claims 23 through 48 of the reissue application have limitations similar to those of claim 1, but define the invention with greater breadth.”

The CAFC performed a traditional Phillips analysis of the ITC claim construction and held that “predetermined event,” by plain meaning, could not be limited to “cat exit.”  Still, the statement in the oath was cited by the court as a guidepost of the broader meaning of the claims added in reissue. Hindsight always being 20/20, what could the Patentee have done to potentially avoid this result?

Claim construction issues aside, recent BPAI cases illustrate the importance of oaths in patent reissue. All too often, the preparation of the oath is deemed ministerial, and ignored in favor of prior art/claim drafting concerns. Oath preparation and wording should be a focal point of any patent reissue effort.

When identifying an error in an original patent via added/amended claims in patent reissue, comparison to the originally issued claims is very attractive. This practice is not necessarily wrong, but can have unintended consequences as demonstrated by Lucky. By making such direct comparisons, the scope of the newly added claims becomes unnecessarily intertwined with the issued claims. For example, the oath in Lucky Litter would have been better off stating “new claims 23 through 48 are directed to the automated comb operation of a self cleaning cat litter box, albeit independent of any specific sensor or means-plus-function structure of the issued claims.” (I know, easy for me to say 10 years after the fact)

It may be that the Patentee in Lucky still would have lost, oath or not. Nevertheless, the case demonstrates that oath filings are far from form practice, and can come back to haunt Patentees.  Finally, the patent is subject to an ongoing ex parte reexamination (90/010,389) and, as you may have guessed, new claims were added expressly reciting “cat exit.”  (see new claim 54).

64ChangingHorsesAs I noted last week, patents exit reexamination everyday. Most such occurrences pass without much notice to the public (aside from typical Business Wire fanfare manufactured by some Patent Owners). Yesterday was different, since the greatest invention EVER exited reexamination…no not the business method patent for the NFL Redzone Channel (probably doesn’t exist, but should), even better, the Tivo time warp patent, U.S. Patent 6,233,389….known to couch potatoes the world over as the “fast forward through commercials patent.”

This is the second go-round for the Tivo Patent in reexamination, now the subject of a very interesting dispute with Echo Star relating to a $300 million dollar judgment.

Although the NIRC is not yet posted to PAIR, it appears that claims 31 and 61 (the only claims subject to reexamination) were confirmed. Looking at the last response, the USPTO must have been convinced that the secondary indicia of non-obviousness for such a household name was persuasive; of course, there were technical distinctions made as well. Also apparent from the last response is that Tivo changed reexamination counsel once they received the final rejection. Continue Reading Tivo’s Change in Horses Leads to Termination of Patent Reexamination

EndAroundThe greatest season of the year, is neither winter, spring, summer or fall, it is football season. Despite the fact that my Eagles are looking hapless these days, and my fantasy football teams are already in the toilet (thanks a lot Larry Fitzgerald), still the NFL season is always exciting. Teams once left for dead rise again, Hail Mary’s are answered (unless Jason Avant is involved, curse his name) and last second strategies rule the day.

What does all of this have to do with patent law?….nothing really, patent law is nowhere near as exciting. Yet, every once in awhile a new strategy appears that changes the game. Much like the NFL, patent practice is a “copycat league,” so, very likely coming to a patent litigation near you….the “ITC end-around.” Continue Reading The ITC End-Around District Court Stays Pending Patent Reexamination

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Updated October 6th (see end of post)

While living dangerously, Star Scientific seems to have somehow avoided disaster. Although the petition decisions have not yet been posted to PAIR, a press release issued yesterday noted that the USPTO had revoked the NIRCs of May 12, 2010. (petitions granted-in-part). A revised press release seems to have issued later noting that the PTO was just “considering” reopening prosecution.

Back in May, we discussed Star’s submission of an interview agenda in place of an interview summary. (See 90/009,372 and 90/009,375). Subsequently, Star tried to convince the USPTO that the proposed agenda (which was submitted prior to the interview) actually was a summary of the the interview itself. On May 17, 2010, Star submitted the agenda again, with an expert declaration explaining that the PTO rules were satisfied by the interview agenda.

While the actual petition decisions are not yet available, it is clear that the PTO is accepting that Star submitted “something” thus avoiding termination (for now anyway), but is requiring Star either explain how the agenda reflects the actual discussion of the interview, or to petition for revival of the proceeding under 37 C.F.R. § 1.137 along with an actual interview summary. In their press release, Star reports the later action as the simple filing of a “routine petition”….which begs the question: Why didn’t Star just do that in the first place? Continue Reading Star Scientific Avoids Termination of Patent Reexaminations

USPTO Seeks Chief Administrative Patent JudgeAs discussed here daily, many important patents will, at one time or another, be the subject of a patent reexamination or patent reissue proceeding. In such post grant proceedings, the Board of Patent Appeals & Interferences (BPAI) plays a prominent role in reviewing the decisions of the Examining Corps….eventually.Progress toward the reduction of reexamination appeal pendency has been slow. Of course, post grant proceedings are not the only responsibility of the BPAI. Indeed, the Board continues to languish under the weight of the ex parte appeal backlog, primarily patent application appeals. Roughly 17,000 ex parte appeals are currently pending at the BPAI. (along with interferences and inter partes reexamination appeals).Former Chief Judge Fleming championed the reform of the appeal process by advocating a rule package designed, arguably anyway, to allow for more focused review. (proposed appeal practice rules). Yet, the proposed changes to appeal practice, like the more infamous rules package of Tafas v. Dudas fame, were not greeted with much enthusiasm by stakeholders.Once again, the winds of change have seemingly swept over USPTO management as the Office is currently in the market for a new, Chief APJ. (apply here)  The next chief will have quite a mandate, especially should patent reform ever become reality (i.e., transformation to Patent Trail & Appeal Boar

As discussed here daily, many important patents will, at one time or another, be the subject of a patent reexamination or patent reissue proceeding. In such post grant proceedings, the Board of Patent Appeals & Interferences (BPAI) plays a prominent role in reviewing the decisions of the Examining Corps….eventually.

Progress toward the reduction of reexamination appeal pendency has been slow. Of course, post grant proceedings are not the only responsibility of the BPAI. Indeed, the Board continues to languish under the weight of the ex parte appeal backlog, primarily patent application appeals. Roughly 17,000 ex parte appeals are currently pending at the BPAI. (along with interferences and inter partes reexamination appeals).

Former Chief Judge Fleming  championed the reform of the appeal process by advocating a rule package designed, arguably anyway, to allow for more focused review. (proposed appeal practice rules). Yet, the proposed changes to appeal practice, like the more infamous rules package of Tafas v. Dudas fame, were not greeted with much enthusiasm by stakeholders.

Once again, the winds of change have seemingly swept over USPTO management as the Office is currently in the market for a new, Chief APJ. (apply here)  The next chief will have quite a mandate, especially should patent reform ever become reality (i.e., transformation to Patent Trail & Appeal Board).

Unwary Practitioners Often Inadvertently Surrender Claim Scope in Patent ReexaminationWith so much patent reexamination going on at the USPTO these days, my inbox is always full of the latest press releases and news stories. Recently, Card Activation Technologies’ update on their concluded ex parte reexamination (U.S. Patent 6,032,859) has been popping up on my radar. Typically, I don’t have much to say about concluded reexaminations; they happen every day. Of course, sometimes the press releases can be entertaining, or perhaps the case may have a larger impact on a concurrent litigation, yet aside from that, there is not much to discuss for the average case.Card Activation Technologies is one of those common cases in many respects. Yet, this case is worth discussing, as it demonstrates the most common mistake made by Patentees during patent reexamination.In the reexamination of the CAT patent only claims 20-22, 25-33 and 36-38 were subject to reexamination (The ‘859 Patent issued with claims 1-38). Claims 20 and 29 are independent claims. Claims 21,22 and 25-28 all depended directly from independent claim 20. Likewise, claims 30-33 and 36-38 all depend directly from claim 29.During reexamination, dependent claims 21 and 32 were confirmed. (both reciting the same limitation, but dependent from claims 20 and 29, respectively)To conclude the reexamination, the Patentee amended independent claims 20 and 29 to include the limitations of dependent claims 21 and 32. This manner of amendment is almost always a bad practice in patent reexamination, but why?To answer this question one must appreciate the manner in which reexamination certificates are printed.  When a claim is canceled in patent reexamination, the text will still appear (enclosed in brackets). In this way, any originally issued dependency can be maintained. Because of the continued existence of the text of a canceled claim, in some cases, it is preferred to leave the dependent claim as-is and cancel the independent claim. See MPEP § 2260.01But, what difference does it make if the independent claim is amended?The amending of independent claims 20 and 29 to add the limitations of the canceled dependent claims necessarily changes the scope of all their dependent claims. Of course, this was the goal in this reexamination, as the other dependent claims, subject to reexamination were rejected. However, claims 23, 24, 34 and 35, which also depended from independent claims 20 and 29 were not subject to reexamination. Thus, these claims retain their presumption of validity, albeit now narrowed in claim scope. Stated another way, by amending the independent claims, the scope of these claims is now unnecessarily narrowed.The best way to accomplish the Patentee’s goal of terminating the reexamination would have been to cancel independent claims 20 and 29 and change the dependency of the allowed dependent claims to be dependent on claims 21 and 32 (now canceled). This would have maintained the scope of claims 23, 24, 34 and 35 as originally issued. Likewise, in cases where there are intervening dependent claims, it is usually best to present new claims rather than amend independent claims.Giving CAT the benefit of the doubt, it may be that they just didn’t care about the dependent claims not subject to reexamination, but that is rarely the case. In any event, there is now a pending reexamination request (90/011,146) attacking all claims of the CAT patent (including the amended claims) so, perhaps this is all academ

With so much patent reexamination going on at the USPTO these days, my inbox is always full of the latest press releases and news stories. Recently, Card Activation Technologies’ update on their concluded ex parte reexamination (U.S. Patent 6,032,859) has been popping up on my radar. Typically, I don’t have much to say about concluded reexaminations; they happen every day. Of course, sometimes the press releases can be entertaining, or perhaps the case may have a larger impact on a concurrent litigation, yet aside from that, there is not much to discuss for the average case.

Card Activation Technologies is one of those common cases in many respects. Yet, this case is worth discussing, as it demonstrates the most common mistake made by Patentees during patent reexamination.

In the reexamination of the CAT patent only claims 20-22, 25-33 and 36-38 were subject to reexamination (The ‘859 Patent issued with claims 1-38). Claims 20 and 29 are independent claims. Claims 21,22 and 25-28 all depended directly from independent claim 20. Likewise, claims 30-33 and 36-38 all depend directly from claim 29.

During reexamination, dependent claims 21 and 32 were confirmed. (both reciting the same limitation, but dependent from claims 20 and 29, respectively)

To conclude the reexamination, the Patentee amended independent claims 20 and 29 to include the limitations of dependent claims 21 and 32. This manner of amendment is almost always a bad practice in patent reexamination, but why?

To answer this question one must appreciate the manner in which reexamination certificates are printed.  When a claim is canceled in patent reexamination, the text will still appear (enclosed in brackets). In this way, any originally issued dependency can be maintained. Because of the continued existence of the text of a canceled claim, in some cases, it is preferred to leave the dependent claim as-is and cancel the independent claim. See MPEP § 2260.01

But, what difference does it make if the independent claim is amended?

The amending of independent claims 20 and 29 to add the limitations of the canceled dependent claims necessarily changes the scope of all their dependent claims. Of course, this was the goal in this reexamination, as the other dependent claims, subject to reexamination were rejected. However, claims 23, 24, 34 and 35, which also depended from independent claims 20 and 29 were not subject to reexamination. Thus, these claims retain their presumption of validity, albeit now narrowed in claim scope. Stated another way, by amending the independent claims, the scope of these claims is now unnecessarily narrowed.

The best way to accomplish the Patentee’s goal of terminating the reexamination would have been to cancel independent claims 20 and 29 and change the dependency of the allowed dependent claims to be dependent on claims 21 and 32 (now canceled). This would have maintained the scope of claims 23, 24, 34 and 35 as originally issued. Likewise, in cases where there are intervening dependent claims, it is usually best to present new claims rather than amend independent claims.

Giving CAT the benefit of the doubt, it may be that they just didn’t care about the dependent claims not subject to reexamination, but that is rarely the case. In any event, there is now a pending reexamination request (90/011,146) attacking all claims of the CAT patent (including the amended claims) so, perhaps this is all academic.

Tax Group Seeks Special Legislation Banning Tax Strategy PatentsAs if the prospects of any meaningful patent reform this year weren’t dim enough, another special interest group has joined the fray. Yesterday, the AICPA sent a letter to Congress (here) urging the enactment of legislation banning tax strategy patents. The letter states that even though consideration of patent reform is unlikely in the remaining weeks of the 111th Congress, their patent issue should be considered anyway.In the letter, the group explains: To date, 117 tax strategy patents have been issued by the U.S. Patent and Trademark Office.  We fear an even greater explosion in both applications and patents issued over the next several years. While Bilski does not outlaw tax patents per se, getting any patent through the USPTO relating to financial strategies would seem like a significant uphill battle. Congress should focus on advancing the full reform legislation that has been years in the making….. wait your turn nerds!! 

As if the prospects of any meaningful patent reform this year weren’t dim enough, another special interest group has joined the fray. Yesterday, the AICPA sent a letter to Congress (here) urging the enactment of legislation banning tax strategy patents. The letter states that even though consideration of patent reform is unlikely in the remaining weeks of the 111th Congress, their patent issue should be considered anyway.

In the letter, the group explains: To date, 117 tax strategy patents have been issued by the U.S. Patent and Trademark Office.  We fear an even greater explosion in both applications and patents issued over the next several years.

While Bilski does not outlaw tax patents per se, getting any patent through the USPTO relating to financial strategies would seem like a significant uphill battle. Congress should focus on advancing the full reform legislation that has been years in the making….. wait your turn nerds!!

 

roadblockass=”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? Continue Reading What to do with an Interfering Patent in Patent Reexamination?

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.