Don’t Rely on Reissue to Fix Your Patent Claims


Reissue is a post-issuance procedure that enables the correction of certain limited types of errors in a patent, but cannot be used merely for precautionary claim improvements. The Board of Patent Appeals and Interferences (BPAI) at the U.S. Patent & Trademark Office recently decided in a precedential opinion that reissue cannot be used to add a dependent claim “simply as a hedge against possible invalidity of the original claims.” Ex parte Yasuhito Tanaka, Appeal No. 2009-000234 (BPAI, Dec. 9, 2009) (per curiam).

Under 35 U.S.C. § 251, reissue is proper when a patent is “deemed wholly or partly inoperative or invalid” for two reasons: 1) “a defective specification or drawing,” or 2) “the patentee claiming more or less than he had a right to claim in the patent.” A further requirement is that the inoperative or invalid patent arose through “error without any deceptive intent.”

The patentee in this case, Tanaka, filed a reissue application that included a new dependent claim 16 as the only amendment to the issued patent. The subject matter in the new claim was not included in any of the originally issued claims. In the Reissue Declaration, the inventor stated that “I did not fully understand the scope of the claims under U.S. law, and thus when the original application was prepared, I failed to recognize that the disclosed invention was not fully covered by the original claims.” The inventor also asserted that it was “not until after the original patent issued that I discovered that the originally presented claims did not adequately define the invention because they were more specific than necessary.” The Examiner rejected the claims because the error was not one that is correctable by reissue under 35 U.S.C. § 251.

Tanaka appealed, and the BPAI affirmed the Examiner. The BPAI pointed to the policy statement issued by the USPTO concerning its interpretation of 35 U.S.C. § 251 in the Manual of Patent Examining Procedure (MPEP) § 1402 (8th ed., rev. 7, July 2008). The MPEP states that “§ 251 does not allow for a reissue application in which the only error specified to support reissue is the failure to include one or more claims that is/are narrower than at least one of the existing patent claims without either narrowing the broader patent claim by amendment or canceling the broader patent claim.” The BPAI further quoted the MPEP: “Retaining the original broader patent claim(s) in the reissue application without amendment or cancellation of such claim(s), is an indication that the broader claim(s) is/are not in any way inoperative to cover the disclosed invention, or invalid as being too broad.”

The BPAI acknowledged that, although 35 U.S.C. § 251 should be construed liberally, the error in the issued patent must be such that it renders the patent wholly or partly inoperative or invalid. The BPAI noted that the court in In re Altenpohl, 500 F.2d 1151 (CCPA 1974), found it proper to correct indefiniteness in the claims by reissue. In that case, the claims were indefinite due to lack of antecedent basis, which “could render [a claim] invalid under 35 U.S.C. § 112.” Therefore, the error sought to be corrected in In re Altenpohl was found to have satisfied the wholly or partly inoperable or invalid prong of 35 U.S.C. § 251.

The BPAI noted that another case, In re Handel, 312 F.2d 943 (CCPA 1963), did not properly address the issue presented here. The BPAI dismissed as dicta the CCPA’s comment in that case: “the narrower appealed claims are simply a hedge against possible invalidity of the original claims should be prior use be proved, which is a proper reason for asking that a reissue be granted.” The BPAI pointed out that the dicta in Handel cannot be reconciled with the plain wording of 35 U.S.C. § 251. The BPAI reasoned that, in any event, the facts of the present case simply do not meet the requirements for a reissue under the plain language of the statute.

The BPAI thus determined that “the defect in this situation is not the result of the patentee claiming more or less than he had a right to claim in the patent.” Tanaka had failed to “indicate whether the patent is partly inoperative because the original claims are too broad in scope, or whether the patent is partly inoperative because the original claims are too narrow in scope.” The BPAI also noted that the patentee’s assertion that the original patent was in error by covering “less subject matter” than he was entitled to claim, is “inaccurate” because the issued claims used the open-ended “comprising” language, which would cover the invention now presented in the newly-added claim. “It is only if the Appellant were to assert that claim 1 is overly broad or otherwise inoperative or invalid that the original claims may not fully cover the invention now presented in reissue claim 16.” The BPAI pointed out that the patentee did not add narrowing language to claim 1 or cancel claim 1 as being overly broad. Therefore, the BPAI decided that “the only conclusion we can reach . . . is that the patentee is seeking an additional claim . . . in order to hedge against the possible invalidity of one or more of the original claims.” This is contrary to 35 U.S.C. § 251 and is akin to a now-disallowed no defect reissue, where every request for reissue would be granted. The BPAI indicated that the patentee can’t “have it both ways,” by seeking to add narrow claims without specifying the error that causes the patent to be wholly or partly inoperative or invalid.

Practice Tip: Devote the resources to proper prosecution of dependent claims.

The Tanaka case reinforces the requirements of 35 U.S.C. § 251 that must be satisfied when seeking reissue. The error that rendered the patent wholly or partly inoperative or invalid should be stated with some specificity. Further, merely adding dependent claims without changing the scope of the original claims does not satisfy 35 U.S.C. § 251.

If you have any questions regarding your specific situation, feel free to contact any of the patent lawyers at Haynes and Boone, LLP. You may also view the alert in the PDF linked below.

Email Disclaimer