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]
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“there is no reasonable interpretation of those words that would permit a narrowing reissue without the identification and amendment/cancellation of an originally issued claim containing an error.”
The words “more or less than he had a right to claim” can be viewed as referring to
(1) the scope of the broadest claim;
(2) the number of claims; or
(3) the scope of each dependent claim.
For example, if patentee found that an existing dependent claim recited a compound with X instead of Y, that there was no support for X, and there support for Y, he should properly be able to fix that in reissue, even though the independent claim has not changed scope. Having decided it can be fixed, he should be able to fix it by amendment, or by cancelling it and adding a new corrected dependent claim.
In the above case, the inventor certainly had the “right” to a dependent claim reciting Y, but through error, he did not get it. In one sense, he did in fact claim “more than he had a right to claim” because there was no support for the X claim in the first place. He also claimed “less than he had a right to claim” because he certainly had the right to a dependent claim reciting Y.
looking in on this from the outside, what intrigues me is the interplay between the verbatim text of 251 and what Malcolm writes. According to MM, 251 recites:
“Whenever any patent is, through error without any 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, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.”
in which the Director SHALL re-issue, as soon as there is i) surrender and ii) fee payment.
I should have thought there ought also to be required the filing of an amendment that overcomes the defect that prompted the surrender and the fee.
And I should have thought the barn door of 251 is quite wide enough for any patent owner to walk his amendment through, regardless of his motive for so doing. All that is required is that he deems himself to have made an error.
So, Mooney’s:
“absolute right of reissue for every extant patent”
is, in practice, there already, no, at least for any party brave enough to deem itself to have made an error.
But that shouldn’t be a problem. After all, we’re all human, aren’t we?
“251 states…”
Yaaawn. Gonna sleep well tonight.
I don’t see any “caveat to the decision” in that 2008 paper. The paper relies quite a bit on Ex parte Parks and that case is now dead as a doornail.
I can sympathize with Mr. Gholz, perhaps, because he and other members of the interference bar may have gotten into the habit of doing something that should never have been permitted.
35 USC 251 states:
Whenever any patent is, through error without any 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, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.
With respect to errors in the claims, as noted in Hewlett-Packard, there is no reasonable interpretation of those words that would permit a narrowing reissue without the identification and amendment/cancellation of an originally issued claim containing an error.
On page 1 of his paper, Mr. Gholz presents 37 CFR 41.202(a) as if it somehow contradicts or provides a “loophole” in 35 USC 251. But there is no contradiction or loophole. 37 CFR 41.202(a) merely states that “a reissue applicant may suggest an interference.” Nothing in Ex parte Tanaka or Hewlett-Packard would prevent a reissue applicant from suggesting an interference based on a claim first presented in a reissue application.
The statute and case law, however (with the exception of the erroneous Ex parte Park) do clearly prevent a reissue from being filed merely to add a dependent claim. An applicant’s reasons for wanting to add a dependent claim are irrelevant, and properly so. Nothing in section 251 or 37 CFR 41.202(a) or any other statute sanctions the filing of a reissue merely to add dependent claims. As noted in Hewlett-Packard, allowing the filing of narrowing reissues solely for strategic reasons, e.g., “to provoke an interference” or to “include a dependent claim that reads more clearly on a competitor’s product” effectively guts 35 USC 251 and creates an absolute right of reissue for every extant patent.
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