Reissue/Reexamination Defects

  • BASICS: “Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.” 35 U.S.C. § 251(a).
  • Improper Purpose For Reexamination Claim Amendment May Invalidate Claim: Southwestern Bell (Fed. Cir. 05/27/08) (non-precedential) (amended claims invalid because amended not in light of prior art raising a substantial new question of patentability but rather to address an adverse claim construction in a district court action.)
  • (Pre-AIA) Reissue Requires Error Without Deceptive Intent: Proof of deceptive intent must be as rigorous as in context of inequitable conduct. AstraZeneca (Fed. Cir. 12/14/12).
  • Filing Terminal Disclaimer (So That Patent Not Enforceable When Not Co-Owned) Was Not “Error” Correctable By Reissue: There is “no deficient understanding behind a choice” (suggesting an “error”) when applicant files terminal disclaimer where it does not deny knowing that patent and application were separately owned. In re Dinsmore (Fed. Cir. 06/10/14); cf. Fleming (Fed. Cir. 12/24/14) (reissue-suitable error when applicant “failed to appreciate the full scope of his invention and the inadequacy of the original claims for properly capturing the full scope.”)
  • May Not Merely Add Narrower Claim In Reissue As a Hedge Against Possible Invalidity Of Issued Claims: Ex parte Tanaka (BPAI 12/09/09) (reissue requires that patent is partially inoperative).
  • “Original Patent Requirement”: Reissue Must Be For “Same Invention” Expressly Disclosed In Original Patent: “Reissue claims broadening a limitation to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical, or essential part of the invention, do not meet the original patent requirement of § 251.” In re Float’N’Grill (Fed. Cir. 07/22/23) (aff’g rejection of reissue under original patent requirement where Spec. limited to single embodiment in which plural magnets were non-optional, and reissue claims omitted that element; analyzing several precedents). “‘It is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’” 315 U.S. at 676. Rather, the Spec. must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares (Fed. Cir. 11/17/14) (declaring patent invalid on appeal from preliminary injunction denial, citing S. Indus. Chem. (U.S. 03/30/1942).); Forum US (Fed. Cir. 06/17/19) (aff’g Summ. J. invalidity where original claims required arbors, reissue claims omit arbors, and Spec. “does not even suggest an arbor-less embodiment of the disclosed invention; “for broadening reissue claims, … ‘[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original,’” but no need to show intent to claim what is now claimed in reissue); Cioffi II (Fed. Cir. 04/18/23) (rev’g no invalidity under “original patent” requirement, because no “express disclosure” of the “exact embodiment claimed on reissue” (two web browser processes) in original patent, even if skilled artisan would understand patent’s broader disclosed encompassed two web browser processes).

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