Patentee May Add Narrower Claims in Reissue, at Least for Now

Scott Daniels | April 19, 2011

The CAFC’s decision last Friday, In re Tanaka, addressed the question of whether a patentee’s failure to have included a dependent claim during the original prosecution is an error correctible by reissue, i.e., an error on which a reissue application may be based.  The CAFC panel said yes, but that might not be the final word on the issue.

The reissue provisions of the Patent Statute allow a patentee to correct errors in its patent if the patent is “deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patent claiming more or less than he had a right to claim in the patent….”  In Tanaka, the patentee filed a reissue application seeking to obtain claims broader in scope than those of the original patent; the application included a reissue declaration stating that there was error because the patent claimed less than he had a right to claim.  When the patentee determined that the examiner would not allow broader claims, he withdrew the broader claim and added a dependent claim, i.e., a claim that fell completely within the scope of the independent claim; the patentee also filed a substitute reissue declaration stating that his failure to include the dependent claim during the original prosecution was an error justifying the reissue application.

The examiner and later the PTO Board rejected the application, holding that a reissue application that retains all the original claims and adds only narrower claims, does not present the type of error correctible by reissue.

On Friday, two members of the CAFC panel, Judges Bryson and Linn, reversed the examiner and the Board, concluding that the failure in the original prosecution to include a dependent claim is, by itself, an error justifying a reissue application.  In doing so, they cited passages from a series of CCPA and CAFC cases, most notably Judge Rich’s remark in his 1963 decision In re Handel: “”[t]he narrower appealed claims are simply a hedge against possible invalidity of the original claims should the prior use be proved, which is a proper reason for asking that a reissue be granted.” 

The third panel member, Judge Dyk, however, dissented, and with some force.  He began by dismissing as dicta the passages from the precedents relied upon by the majority.  He then noted the literal wording and purpose of the reissue statute, specifically to correct errors, and found that adding a dependent claim corrected no error in the patent.  For good measure Judge Dyk cited the Supreme Court’s 1883 decision Gage v. Herring for proposition that there is no reissue error where the patentee seeks merely to add new claims, but not to correct anything in the original patent.  (The majority asserts that Gage is distinguishable from Tanaka, arguing that the patentee in Gage sought to add a broader claim under the reissue statute then in force that permitted only narrowing of patent claims).  Judge Dyk also cited the Supreme Court’s 1881 decision Miller v. Bridgeport Brass for the statement that “a claim may be enlarged in a reissued patent, [but] this can only be done when an actual mistake has occurred; not from a mere error of judgment.”

Given the force of Judge Dyk’s dissent – including its reliance on two 19th Century Supreme Court decisions, the gold standard of judicial precedent in recent years – there is a genuine possibility of review of the panel opinion by the full court.

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