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.
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