PTO Begins to Implement Tanaka Reissue Standard

Scott Daniels | August 25, 2011

Last December, the PTO Board affirmed the rejection of claims in a combined reissue-reexamination proceeding (11/430,299-90/007,824) in part, because of a defective reissue oath that asserted failure to include a dependent claim as the reissue error.  Yesterday, the Board reversed the rejection, citing the CAFC’s recent decision in Ex parte Tanaka for the proposition “that the addition of dependent claims as a hedge against possible invalidity is within a reasonable interpretation of the reissue statute…”  (As an aside, the Board maintained a separate rejection of the claims, affirming the Examiner’s claim construction). 

Earlier this month, the PTO issued a notice indicating its intent to comply with Tanaka, stating that

[w]here the only change to a patent made in an application for its reissue is the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims, the applications claims are not be rejected as failing to state an error under 35 U.S.C. § 251.  In addition, any rejection of record in a pending application on this basis will be withdrawn …

Obviously, most patentees wishing that they had more dependent claims will be reluctant to “open-up” their patents by filing a reissue application.  Still, in those cases involving strong prior art against the main claims, reissue may be make sense.

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