In re Tanaka, No. 2010-1262 (Fed. Cir. 2011)
Once a patent issues it behooves the patentee to scrutinize the claims to ensure that it has claimed all that it had a right to claim. Where the patentee discovers that without deceptive intent the patent claims more or less than it should have, the patentee can seek a reissue patent under 35 U.S.C. §251. In In re Tanaka, decided today, the Federal Circuit held that the simple omission from a patent of a dependent claim is sufficient reason to allow the patentee to seek reissue. While today’s decision concerned a patent directed at an alternator pulley for improving an automobile alternator’s efficiency, it applies equally to pharmaceutical patents.
In re Tanaka addressed an appeal from a decision of the Board of Patent Appeals and Interferences. The Board had been asked to address the question of whether an examiner “erred in determining that the presentation of a narrower claim in a reissue application that still contains all of the original patent claims does not present the type of error correctible by reissue under 35 U.S.C. § 251.” Procedurally, the Applicant initially had tried to broaden claim 1 with the reissue but during prosecution went back to the original scope of issued claim 1 while including in the reissue application a new claim dependent from original issued claim 1. Thus, the only “error” the Applicant presented was the lack of presence of this dependent claim in the original issued patent. The Board affirmed the Examiner’s decision by interpreting § 251 as not allowing a reissue where the sole correction in the reissue is the addition of a narrower dependent claim while retaining the original claims as issued.
At the Court of Appeals, the PTO took the position that omission of a dependent claim does not make the patent “partially inoperative” because the subject matter of the dependent claim is covered by the independent parent claim. Moreover, the PTO argued that omitting the dependent claim is not a case of “claiming more or less than the patentee had a right to claim in the patent.”
The Federal Circuit disagreed, relying on Judge Rich’s opinion from In re Handel 312 F2d 943 (CCPA 1963), and concluded that “adding dependent claims as a hedge against possible invalidity of original claims is a proper reason for asking that a reissue be granted.” According to the majority opinion, hedging against the possible invalidity of the broader independent claims has been tacitly approved and is in accordance with the remedial purposes of the reissue statute. Further, for the purposes of § 251 “inoperative” is construed as “inoperative adequately to protect the invention” The Federal Circuit advises that contrary to the Board’s assertions, applying for a reissue that adds only narrower claims without amending any of the original claims is not the same as a “no defect” reissue.
Thus, the Federal Circuit holds that omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law. This case thus allows the applicant a second bite at the apple to pick up any additional dependent claims he/she may have forgotten along the way during prosecution. Because the addition of a dependent claim is a “narrowing” amendment it is not subject to the 2 year broadening statute of limitations of the reissue statute and thus a reissue adding an omitted dependent claim could be filed at any time during the lifetime of the patent.
Judge Dyk dissented – mostly reasoning that the precedent relied on by the majority did not address the issue of whether inclusion of a narrower claim is sufficient basis for a reissue. Judge Dyk reasoned that some correction of an error affecting the original claims is required and in the present case the addition of the dependent claim had no impact on the applicants rights under the original patent.
The case was remanded to the PTO.
Comments