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IP Alert
IP Alert—UPDATE: USPTO Revises Policy to Comply with Tanaka Decision

August 25, 2011

UPDATE: In a notice published August 23, 2011, the U.S. Patent and Trademark Office (USPTO) announced a revision to the Manual of Patent Examining Procedure. As held in the Tanaka case (discussed below in the IP Law Alert from April 18, 2011), the reissue statute permits the filing of a reissue application solely to add dependent claims to an application. The USPTO is now changing its internal guidelines to comply with Tanaka.

The original alert follows:

On April 15, 2011, in a split decision, In re Tanaka, Appeal No. 2010-1262, the U.S. Court of Appeals for the Federal Circuit reversed the U.S. Patent and Trademark Office (USPTO) Board of Patent Appeals and Interferences, holding that a reissue application retaining its original claims while adding only a dependent claim is permitted under the reissue statute.

In its original 2009 decision, the Board interpreted the reissue statute so that “presentation of a narrower claim in a reissue application that still contains all of the original patent claims does not present the type of error correctible by reissue under 35 U.S.C. § 251” and affirmed the rejection against Tanaka’s reissue application.

On appeal to the court, the USPTO argued that merely adding a dependent claim does not satisfy the statutory criteria of “partly inoperative” or “claiming more or less than the patentee had a right to claim in the patent,” as the reissue statute requires. The USPTO reasoned that the dependent claim is already covered by the original claims and does not detract from the scope of the original claims.

The court’s reasoning commenced with “the Board’s determination is contrary to longstanding precedent of this court and flies counter to principles of stare decisis.”

The court cited the reissue statute, 35 U.S.C. 251, which provides in part that “Whenever any patent is, through error without deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent.…”

Next, the court pointed out the two predicate statutory requirements: (1) the original patent must be “wholly or partly inoperative or invalid”; and (2) the correction sought must have arisen “through error without deception intention.”

The court drew upon a trilogy of cases contrary to the Board’s interpretation of §251, starting with In re Handel, 312 F.2d 943, 946 n.2 (CCPA 1963) (Judge Giles S. Rich). As Judge Rich explained, “the term ‘less’ [in Handel’s reissue declaration] appears to have been used in the sense of fewer claims than he could properly have made, rather than in the statutory sense of subject matter included in the claims.” According to Judge Rich’s commentary, “[t]he narrower appealed claims are simply a hedge against possible invalidity of the original claims should the prior use be proved, which is a proper reason for asking that a reissue be granted.”

In rejecting the USPTO’s further contention that omitting a narrower dependent claim does not render the original patent “wholly or partly inoperative,” the court pointed out each claim defines a separate invention, and that “omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.”

The court noted concerns by a third party who may be affected by any newly added narrower dependent claims are “already addressed by the equitable intervening rights statute, 35 U.S.C. § 252.…”

Echoing Judge Rich’s footnote, the panel majority concluded “the narrow rule relating to the addition of dependent claims as a hedge against possible invalidity has been embraced as a reasonable interpretation of the reissue statute by this court and its predecessor for nearly fifty years without any obvious adverse consequences. To deviate from that longstanding interpretation would be contrary to the doctrine of stare decisis and is unwarranted.”

Judge Timothy B. Dyk dissented because, in his view, the application for reissue retained all the original claims unchanged, the addition of narrower dependent claims did not surrender anything, and the decisions relied upon by the majority were factually distinguishable from Tanaka’s situation.

The Tanaka decision confirms the reissue statute provides flexibility in repairing perceived defects in patents, especially since adding narrower dependent claims is not subject to the two-year time limit within which to file a broadening reissue application.

If you have questions concerning this decision, please contact Fitch Even partner Kendrew H. Colton, the author of this alert.

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