Short Update on Reissue Declarations after Tanaka

Scott Daniels | August 29, 2011

Last week we reported on the PTO’s adherence to the holding of In re Tanaka, allowing a patentee to file a reissue application where the only “reissue mistake” in the original prosecution was the failure to include certain dependent claims.  But despite the PTO’s more liberal approach, the patentee must do more in its reissue declaration than check the box indicating that the reason for reissue was “the patentee claiming more or less than he had a right to claim in the patent” – the reissue declaration must actually specify the reissue error, e.g., the failure to include desired dependent claims.

In Reissue Application 12/433,592, filed in April 2009, the patentee, STMicroelectronics, submitted a preliminary amendment leaving the original claims intact, but adding 33 new claims.  The reissue declarant checked the box indicating that a mistake had been made with the claims, but failed to state explicitly what that mistake had been.  At the end of last month, more than two years after the reissue application was filed, the Examiner rejected all claims (under 35 U.S.C. § 251) , stating that the “reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application.”

In light of Tanaka, the path for the patentee to overcome the § 251 rejection is clear, and there will ultimately be a happy conclusion for its reissue application despite the lapse in its reissue declaration.  Still, one has to ask why the PTO took so long to make what is no more than a formal rejection. 

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