In a prior post, I discussed the BPAI’s recent precedential decision of Ex parte Tanaka (BPAI 2009). In that case, Board held that a patentee’s failure to add an additional dependent claim (without cancelling the broader claims) was not the type of “error” that is correctable via reissue. Tanaka had wanted to add the aditional claim as a hedge against the potential that the broader claims were found invalid.
Oblon’s Chico Gholz e-mailed me with a likely caveat to this decision based on his 2008 IP Today article. In that article he suggests that is should be proper in a reissue to merely add an additional narrower claim if the purpose is to provoke an interference. [Link]