Print PDF

Only Adding Dependent Claims Can Be a Proper Basis for Reissue

April 15, 2011

Decision icon Decision

Last Month at the Federal Circuit - May 2011

Judges: Bryson, Linn (author), Dyk (dissenting)

[Appealed from: Board]

In In re Tanaka, No. 10-1262 (Fed. Cir. Apr. 15, 2011), the Federal Circuit reversed the Board’s holding that “a reissue application that retains all of the original patent claims and adds only narrower claims does not present the type of error correctible by reissue under 35 U.S.C. § 251.” 

The PTO issued U.S. Patent No. 6,093,991 (“the ’991 patent”) to Yasuhito Tanaka, with one independent claim and six dependent claims.  The claims are directed to an alternator pulley used to improve power generation efficiency of an automobile alternator.  Tanaka eventually filed a reissue application seeking to add a new claim that depended on claim 1.  The examiner rejected this request on the ground that the error specified was not correctible by reissue because it failed to broaden or narrow the scope of the claims of the issued ’991 patent.  The Board affirmed the rejection, stating that the error cited is “not correctible by reissue under 35 U.S.C. § 251.”  Slip op. at 2.

On appeal, Tanaka argued that the Board’s decision was contrary to precedent.  The PTO, however, maintained that the omission of a dependent claim fails to meet the standard necessary for a reissue.

According to the Court, in order for § 251 to apply, the inventor error must make the original patent “wholly or partly inoperative” and must have arisen “without deceptive intent.”  Id. at 6.  Since there is no dispute that the defect arose without deceptive intent, the Court considered whether the omission of a dependent claim can render a patent partly inoperative.

In considering this appeal, the Court referenced several precedential cases.  First, in In re Handel, 312 F.2d 943, 946 n.2 (CCPA 1963), the Court of Customs and Patent Appeals (“CCPA”) held that Handel had claimed “less” than he could have because he mistakenly included fewer claims than possible.  The missing narrower claims would serve as a hedge against potential invalidity of the original claims.  The CCPA found that this sort of hedging is a “proper reason for asking that a reissue be granted.”  Slip op. at 7.

The Court also cited In re Muller, 417 F.2d 1387 (CCPA 1969), another CCPA case involving the rejection of a reissue application.  Although the CCPA did not reference Handel, it clearly stated that “the inclusion of dependent claims . . . [are] proper in a reissue proceeding” as long as the error occurred without deceptive intent.   Slip op. at 8.

Next, the Court considered Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1564 (Fed. Cir. 1989), one of its own cases involving a reissue for the purpose of including narrower dependent claims.  Despite the fact that the claims were eventually found invalid, the Court stated unequivocally that the “practice of allowing reissue for the purpose of including narrower claims as a hedge against the possible invalidation of a broad claim has been tacitly approved” and “is in accordance with the remedial purpose of the [§ 251] statute.”  Slip op. at 8.

Like the CCPA, the Court reasoned that omitting a narrower dependent claim can render a patent partly inoperative because “dependent claims [of a narrower scope] are also less vulnerable to validity attacks.”  Id. at 9.  As such, in the event that another claim might be invalidated, the dependent claim would then play a critical role in protecting the invention.  Therefore, failing to include a dependent claim could “render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.”  Id.

The Court also addressed the Board’s assertion that adding a dependent claim is equivalent to filing a no defect reissue.  A no defect reissue is where an applicant seeks a reissue in light of new prior art, but no defect in the patent is cited.  The Court has previously noted that this practice is no longer permitted as it allows a patentee to essentially “obtain an advisory opinion from the PTO.”  Id.  The Court, however, distinguished Tanaka’s reissue application from a no defect reissue because of Tanaka’s admission of error in the original prosecution.  In addition, the Court noted that adding a narrower claim without amending the original claims is not equivalent to a no defect reissue.  In sum, the Court concluded that an inventor may seek a reissue application when the inventor seeks to add a dependent claim as a hedge against possible invalidity.

Judge Dyk dissented with the majority in two respects.  First, he found that the Board’s decision was not contrary to long-standing precedent.  Judge Dyk asserted that the cases cited by the majority failed to “address[] or decide[] whether seeking to include narrower claims while retaining the original claims is a proper basis for reissue under § 251.”  Dyk Dissent at 3.  Second, he reasoned that the “language and the purpose” of § 251 support the Board’s decision to reject Tanaka’s request for reissue.  Although the Court has ruled that a reissue can be proper where the original claims have not been modified, it should not be allowed in this instance.  In Judge Dyk’s view, a reissue under this circumstance is only proper when “the correction of [the] error . . . [has] a direct and identifiable effect on the applicant’s rights under the original patent.”  Id. at 6.


Summary authored by Huzefa Kapadia, Esq.