Reissue Cannot Merely Add New Dependent Claims (Without Cancelling the Broader Claims)

Ex parte Tanaka (BPAI 2009) (Precedential)

The number of patents undergoing reissue is at an all-time high. [LINK] Often, patentees prefer the reissue route over reexamination. In a reissue, for instance, an applicant may file RCEs and divisional applications. Those common elements of patent prosecution are prohibited during reexaminations. Likewise, claims can be broadened in a reissue, but not during reexamination. Finally, the time-pressure of reissue prosecution on the patentee is small comparable to that of reexamination.

Under 35 U.S.C. § 251, the reissue process is to correct an “error” in a patent that would tend to make the patent “wholly or partly inoperative or invalid.” The statute lists specific types of errors, including “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.”

In this case, the patent applicant (Seiko) started a reissue process claiming that its mistake was in failing to include an additional narrower dependent claim to “hedge against possible invalidity of the original claims.” The patentee did not cancel the broader claims because they were still potentially valid.

Issuing a precedential decision, the BPAI has interpreted Section 251 to bar reissue in this case.

[T]he Examiner found that because the reissue application contains all of the original patent claims and adds by reissue application only a single dependent claim 16, the reissue declaration cannot satisfy the error required under 35 U.S.C. § 251 because it cannot properly allege that the patent is wholly or partly inoperative or invalid by reason of the patentee claiming more or less than he had a right to claim in the patent.

We affirm.

This interpretation of Section 251 falls in-line with MPEP § 1402 and with the dicta of Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1565 (Fed. Cir. 1989).

Notes: Interestingly, Tanaka originally filed the reissue application and submitted a preliminary amendment that would broaden independent claim 1. (App No 10/201,948). After receiving a final rejection for the broadened claim, Tanaka changed its tactics; reinstated the original claim 1 and added a narrowed claim 16 that includes limitations not found in any other claim. At that time, Tanaka also submitted a substitute reissue declaration

37 thoughts on “Reissue Cannot Merely Add New Dependent Claims (Without Cancelling the Broader Claims)

  1. 37

    I recall a case in the late 1990’s (I think its 08/866,020, RE36,098) where the applicant did sucessfully add (but with several rounds against examiner rejections) dependent claims in reissue without altering the independent claims. The applicant argued that, at the time of proscuting the application, he had inadvertantly failed to recognize that he could have written several additional dependent claims, and therefore that the application was defective because it did not claim all that the applicant was entitled to claim. The Examiner finally accepted the applicant’s argument, and the issue did not going to the board. So I know that most practitioners view the language “or by reason of the patentee claiming more or less than he had a right to claim in the patent” as pertaining to the scope of the independent claims, but here is a case where the applicant applied the language to the areas of claim coverage provided by the new dependent claims.

  2. 36

    “obsequiescing is not a real word”

    How many years of post graduate education led you to such an astute conclusion? The funny thing is, everyone, including Max, knew exactly what I meant.

    Now I will leave Max to get back to licking the tard off of the bottom of Mooney’s waffle tread boots.

  3. 35

    Mooney is very busy trying extremely hard to prove to all of us that he might know something…

    LOL

  4. 33

    Re: “I seem to recall that you can’t introduce new references in a reissue but you can in a reexam.”

    ? How could that be possible be true and avoid subsequent inequitable conduct issues for the patent owner for NOT citing in either a reissue or a reexamination any and all material prior art noted before or during the proceedings?
    Perhaps you were thinking of the old so-called “Dann Amendment” reissues which the CAFC struck down as mere requests for an advisory opinion as to the newly cited prior art w/o any claim amendments?
    This is an old article of mine, but it provides a more detailed comparison of reissues and reexaminations you requested:
    “Hobson’s Choice” – “Reexamination or Reissue?” Intellectual Property Law Review 1982, Clark Boardman Co. Ltd., pp. 215-250.

  5. 31

    Malcolm,

    It looks my assailing can work on you too.

    Before we get too happy, let’s see if you can maintain such a substance/snark ratio.

  6. 29

    There is not a poster on these boards that has more snark … than Malcolm

    No applause, folks. Just send money.

  7. 28

    Value is, evidently, in the eye of the beholder, and MaxDrei, your sense of value is notably different than quite a few posters (this is not a comment that applies uniformly to all of your posts).

    …unless, of course, you were merely making that post out of fun without engaging your critical faculties…

    Jesting aside, Malcolm’s point does not add value. You have not yet learned that Malcolm’s comment was indeed NOT a serious question on jurisdictional matters concerning the evolutionary standards of legal bodies and how or to what level of impact should legal decisions have from one court to another.

    If you had your critical faculties engaged, you would have been aware that Malcolm was using the historical differences as a glib dismissal without substance. You would be very hard pressed to actually find a post from Malcolm that contained substance on any of the very many threads and posts, under the vary many pseudonyms that he posts under. Plenty of snark, sure. Plenty of straw – you bet, but substance – sorry, none there.

    The question was neither sharp nor interesting given the context and person from whom it was coming from. I believe that you are better than that, that you actually do, on occasion, have worthwhile comments to add, and am concerned that your credibility may become damaged beyond repair by the “company you keep”. There is not a poster on these boards that has more snark and less substance than Malcolm – including those that live to post in retaliation to anything the Malcolm throws out.

  8. 27

    Oh come on Lexicographer. As a new portmanteau word, “obsequiescing” isn’t bad at all. I rather like it and might use it myself.

    But as to our new correspondent “InTheBriefs” I see another boring individual who is fond of writing “we” and thinks that it’s smart to use a word like “Tardlicker”.

    In reply, I obsequiesce to Mooney (and scarioriate the “we” crowd) because a comment from him adds value to the thread, whereas the comments from Briefs and his like-minded colleagues do not.

  9. 26

    Speaking of useless and inflammatory snarks, I’m pretty sure that “obsequiescing” is not a real word.

  10. 25

    “Mooney’s sharp and interesting question.”

    LOL (in the US we call it useless and inflammatory snark)

    Max: why are you obsequiescing to Mooney? Are you his paid tardlicker?

  11. 24

    I have semi-functional questions – “You only surrender the original patent upon issuance of the reissue.” Anon @ 2:50. What if the reissue is a narrowing reissue in which all claims are finally rejected, and the reissue is subsequently abandoned? Is this a ridiculous scenario that would never happen in real life?

    “Using a reexamination is usually better than doing a narrowing reissue for additional reasons anyway” Paul F. Morgan @ 3:28. What are the additional reasons? I seem to recall that you can’t introduce new references in a reissue but you can in a re-exam; is that one of the reasons?

  12. 23

    “These spiralling threads are quite long enough without the presence of afunctional noise.”

    So says the master of afunctional noise.

  13. 22

    How does a sour grape “sound” then? More like a giraffe than a baboon, no?

    Comparing what you wrote with what Mooney wrote, I know which contribution has added value to this thread. And it isn’t yours. These spiralling threads are quite long enough without the presence of afunctional noise.

    Here’s a thought. Desist, until you’ve got something useful to contribute, or can usefully answer Mooney’s sharp and interesting question.

  14. 20

    I think the BPAI decision is correct, just not inevitable based on the prior case law.

    Ah, so we do disagree. I thought so.

    CCPA opinions are precedent for the BPAI in exactly the same way FC opinions are.

    Do you think the Federal Circuit views it that way?

  15. 19

    >>but CCPA opinions are precedent for the BPAI >>in exactly the same way FC opinions are.

    Actually, CCPA opinions are binding precedent whereas only en banc opinions of the federal circuit are binding precedent.

  16. 18

    “Or confusing the Federal Circuit with the (chuckle) CCPA?”

    I made this error, but CCPA opinions are precedent for the BPAI in exactly the same way FC opinions are.

    Also, as the BPAI acknowledges, HP does not squarely address the question here. HP leaves open the possiblity that some reason could justify a reissue like Tanaka’s under 251. The BPAI opinion completely closes off that possibility.

    I think the BPAI decision is correct, just not inevitable based on the prior case law.

  17. 17

    “The clients hire me to clean up the mess”

    Point #1) LOL – if this was even true, it would be because they don’t trust you with a new case.

    Point #2) If they had ever seen the inside of your baboon cage, or the condition of your steam grate, (or the state of your lingerie drawer) they would think twice about engaging you to “clean up” messes.

  18. 16

    “a substantial fraction of my docket”

    LOL – a substantial fraction of zero is still zero…

  19. 15

    On this subject of reissues and 35 U.S.C. § 251:
    Yes, their current long PTO delays are seriously inexcusable, because they are almost always far more important than a normal application.
    Using a reexamination is usually better than doing a narrowing reissue for additional reasons anyway, and both are subject to “intervening rights” defenses.
    Broadening reissues [broadening of any part of any claim in any respect] not only have a time limit and a potential false oath problem, they can also run afoul of the “recapture rule,” as in Pannu v. Storz Instruments, Inc. (Fed. Cir. 2001) for broadening claims in a manner directly pertinent to subject matter surrendered during prosecution of the original patent.
    But, the CAFC is not going to fix your issued claims for you, so you may have to choice.

  20. 14

    The BPAI opinion acknowledges that the FC had said exactly the opposite on several occasions.

    You’re wrong. Maybe you are referring to a different BPAI opinion? Or confusing the Federal Circuit with the (chuckle) CCPA?

    Here’s the incontrovertible statement of the Federal Circuit in the controlling case here (Hewlett-Packard):

    Were that theory correct, it is
    difficult to conceive of any extant patent for which a right of reissue would not exist, a view which this court has unequivocably and repeatedly rejected.

    The real source of confusion, it appears, is that the BPAI had previously screwed up in Ex Parte Parks and allowed a reissue applicant to do what the Hewlett-Packard court said could not be done.

  21. 13

    Wilton @ 1:13 — If your client is unwilling to pay for a continuation, it is doubtful that they would pay for a reissue application, wouldn’t you agree? I mean, c’mon, if the patent is important enough to go through the hassle of reissue to obtain an additional dependent claim ….

  22. 12

    Question – “I’m unclear on one thing. So the reissue does not occur. Does Tanaka get his original patent back?”

    You only surrender the original patent upon issuance of the reissue.

  23. 11

    I’m unclear on one thing. So the reissue does not occur. Does Tanaka get his original patent back?

  24. 10

    “How could the result have been different?”

    The BPAI opinion acknowledges that the FC had said exactly the opposite on several occasions.

  25. 9

    What’s a sockpuppet?

    The baboon blusters, “I would have guessed that this was settled law.”

    You guessed wrong.

    “The clients hire me to clean up the mess”

    When I’m looking for glib and facile analysis to the tune of, “Don’t worry about the claim, it’s facially invalid” I’ll give you a call.

  26. 8

    That’s why it’s good practice to always keep a continuation application pending.

    The sockpuppet finds an obvious nut! As this one could probably guess, a substantial fraction of my docket includes cases transferred in by clients whose previous counsel failed to do the right thing. The clients hire me to clean up the mess, which sometimes requires the filing a reissue.

    This interpretation of Section 251 falls in-line with MPEP § 1402 and with the dicta of Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1565 (Fed. Cir. 1989).

    I would have guessed that this was settled law. How could the result have been different? I guess if you’re desperate and you have the money, might as well throw the Hail Mary.

  27. 7

    “That’s why it’s good practice to always keep a continuation application pending.”

    Assuming your client is willing to pay for that…

  28. 6

    One of the regular baboons says:

    “If an application is pending, of course.”

    That’s why it’s good practice to always keep a continuation application pending.

  29. 3

    But it seems perhaps you could satisfy the error requirement by adding a new independent claim…

    It would be safer to file a continuation. Alleging error to satisfy 251 can be construed as evidence of malpractice.

  30. 1

    That’s interesting. I wonder if a patent could be partially inoperative because the applicant failed to claim as broadly as s/he had a right to, thus necessitating the addition of claims without the cancellation of any existing ones. This might occur if the original prosecuting attorney asserts error is mis-understanding or mis-communication with the inventor. In other words, was the applicant’s reason (which seems more strategic rather than invention-oriented) a reason that the BPAI rejected this effort?

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