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


At issue in the In re Tanaka case is whether the addition of narrower, dependent claims in patent reissue is an “error” that the reissue statute is supposed to address.  On April 15, 2011, the CAFC  ruled that this is in fact permissible “error” contemplated by the patent reissue statute.  Charles Gorenstein, Partner at Birch Stewart Kolasch & Birch, sent in this article discussing the In re Tanaka decision.

In a decision dated April 15, 2011, the United States Court of Appeals for the Federal Circuit reversed a decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences 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 underlying Board decision would have, additionally, cast a cloud over the validity and value of many already-issued patents

Tanaka filed an application for reissue of his patent.  Ultimately, the correction sought to be made was the addition of 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 U.S. Patent and Trademark Office Board of Appeals and Interferences (the Board) 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, at least implicitly, that the failure to include an additional narrower claim in the patent might be an error without deceptive intention, it was not an error of such a nature that could be corrected by reissue.

Tanaka is hardly alone among patentees seeking 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 claims from a pending application for the purpose of provoking an interference.  A patentee might seek to add more specific claims to an existing set of patent claims by reissue when, as a result of error without deceptive intention, particular features of an invention may not have been adequately protected by the original patent claims.  The Board decision in Tanaka, if permitted to stand, would have undermined retroactively the validity of all existing patents obtained in such circumstances.

The Court of Appeals agreed with Tanaka that the Board’s determination was contrary to long standing precedent of the Court and contrary to principles of stare decisis. The Court’s reasoning focused upon the 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 circumstances virtually identical to those 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 claims additional claims of narrower scope.  The court of Appeals reaffirmed the notion that this exercise is permissible, for example, in order to present claims of narrower scope as a hedge against possible invalidity of the original claims, should the original claims be proven invalid.  The Court further recognized that the inclusion of narrower claims within a patent already including boarder claims serves a variety of other legitimate and proper purposes in the way of protecting the applicant’s invention.

Thus, 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.


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