IP Update, Vol. 9, No. 3 (25 April 2011)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

CAFC Reverses USPTO Anti-Patentee Reissue Policy: In re Tanaka

BSKB is pleased to note that, in a decision dated April 15, 2011, the CAFC reversed a decision of the United States Patent and Trademark Office by which the USPTO attempted to limit the rights of patentees to file for reissue of patents. In re Tanaka, Appeal No. 2010-1262, April 15, 2011. Had it been permitted to stand, the PTO decision would have, additionally, cast a cloud over the validity and value of many already-issued patents. BSKB represented Appellant Tanaka successfully in the appeal.

In an application for reissue of his patent, Tanaka sought to add a single dependent claim, narrower in scope than the existing patent claims, while retaining all of the original patent claims (and making no changes to the specification or drawings). The USPTO ruled that this was not proper pursuant to the reissue statute, 35 U.S.C. §251. The Board reasoned that if nothing was to be changed in the original patent claims, specification or drawings, the patent could not be deemed “wholly or partly inoperative or invalid” as set forth in §251. While The Board acknowledged that the failure to include an additional narrower claim in the patent might be an error without deceptive intention, as addressed in the reissue statute, it was a type of error that could not be corrected by reissue.

It is not unusual for a patentee to seek reissue for the purpose of adding, to the existing patent claims, claims of narrower scope without otherwise altering the content of the patent. That occurs routinely when a reissue applicant copies one or more claims from a pending application for the purpose of provoking an interference. A patentee might seek to add a more specific claim to existing patent claims by reissue when, as a result of error, particular important features of an invention may not have been adequately protected by the original patent claims. The PTO decision in Tanaka, if permitted to stand, would have prohibited such practice and undermined retroactively the validity of all existing patents obtained in such circumstances.

The CAFC agreed with Tanaka that the PTO’s determination was contrary to long standing precedent of the Court and contrary to principles of stare decisis. The CAFC’s reasoning focused upon the earlier decisions in In re Handel, 312 F.2d 943, 946, n.2 (CCPA 1963) and In re Muller, 417 F.2d 1387 (CCPA 1969). In both Handel and Muller, the Court of Customs and Patent Appeals addressed situations virtually identical to that presented in the Tanaka appeal. In each case, the Court had ruled that it was permissible under the reissue statute, 35 U.S.C. §251, to present in a reissue application the original patent, with claims, drawings and specification unaltered, while adding to the original patent one or more claims additional claims of narrower scope. The CAFC reaffirmed the notion that this exercise is permissible, for example, for presenting claims of narrower scope as a hedge against possible invalidity of the original claims. The Court also recognized that adding narrower claims to a patent already including broader claims serves a variety of other legitimate and proper purposes in the way of protecting the applicant’s invention. The Tanaka Decision affirms the fact that omission of a narrower claim can render a patent wholly or partly inoperative in the sense that, in the absence of the additional, narrower claim, the patent may be inoperative to fully protect the disclosed invention.

Summary provided by Charles Gorenstein

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USPTO Postpones Track–One Implementation

The USPTO has announced that the planned May 4, 2011 implementation of the fast-track patent examination program known as Track-One processing has been postponed until further notice. See the IP Update of April 7, 2011.

In a message to USPTO employees on April 21, 2011, Director Kappos explained that the 2011 Appropriations Act passed by Congress on April 15, 2011 limited USPTO spending authority to $2.09 billion which is below the level requested by the agency. He further indicated that $85-100 million in fees collected this fiscal year would be diverted from Agency use. In view of the funding cuts reflected in the final budget the USPTO announced a series of spending cuts for the remainder of fiscal year 2011 which ends on September 30, 2011. Included in the spending cuts was the indefinite postponement of the Track-One expedited patent examination program.

Summary provided by Nicholas P. Godici

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