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. (more…)