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Reissue Application Cannot Be Used to Withdraw a Terminal Disclaimer from an Issued Patent

December 06, 2012

Decision icon Decision

Last Month at the Federal Circuit - January 2013

Judges: Lourie (author), Reyna, Krieger (sitting by designation)

[Appealed from: Board]

In In re Yamazaki, No. 12-1086 (Fed. Cir. Dec. 6, 2012), the Federal Circuit affirmed the Board’s rejection of reissue application No. 10/045,902 (“the Reissue Application”) for lack of error correctable under 35 U.S.C. § 251 because reissue proceedings cannot be used to withdraw a terminal disclaimer from an issued patent.

In 1995, Shunpei Yamazaki filed U.S. Patent Application No. 08/426,235 (“the Original Application”). To overcome an obviousness-type double-patenting rejection based on Yamazaki’s earlier-issued U.S. Patent No. 4,581,476 (“the ’476 patent”), Yamazaki filed a terminal disclaimer, affirmatively disclaiming the statutory term of any patent granted on the Original Application that would extend beyond the expiration date of the ’476 patent.

Yamazaki later amended each independent claim of the Original Application, such that, in Yamazaki’s view, the pending claims became patentably distinct over the claims of the ’476 patent and the terminal disclaimer became unnecessary. With the Original Application still pending, Yamazaki submitted a petition to withdraw the recorded terminal disclaimer, but the PTO never acted on the petition. With the petition still pending, a notice of allowance issued, and Yamazaki subsequently paid the issue fee. The Original Application issued as U.S. Patent No. 6,180,991 (“the ’991 patent”) while the terminal disclaimer remained in full force, and as a result, substantially curtailed the enforceable term of the ’991 patent.

Approximately three months after the ’991 patent issued, the PTO dismissed the petition to withdraw the terminal disclaimer, concluding that a recorded terminal disclaimer may not be nullified after the subject patent had issued. Yamazaki then sought to rescind the terminal disclaimer by filing the Reissue Application. The PTO rejected Yamazaki’s oath and declaration as defective for failing to recite an error upon which a reissue application could be based, and the Board affirmed the PTO’s rejection.

On appeal, Yamazaki took the position that the PTO, by failing to act on the petition, caused Yamazaki to claim less than he was entitled to by unnecessarily disclaiming part of the ’991 patent’s term. Yamazaki argued further that “the term of the original patent,” as used by § 251, refers to the maximum statutory grant of exclusivity under 35 U.S.C. § 154(a), which provides that “such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed.” Slip op. at 7. According to Yamazaki, a terminal disclaimer does not alter that statutorily defined patent term, but merely adjusts the patent’s expiration date without altering the statutory term. The PTO countered that a recorded terminal disclaimer becomes part of the original patent and defines the patent’s term, so that the patent must be treated as if the disclaimed term never existed. The PTO also noted that Yamazaki’s reissue is precluded because the ’991 patent had expired years earlier, and, thus, no unexpired part of the term of the original patent remains.

On appeal, the Federal Circuit affirmed the Board’s decision, rejecting Yamazaki’s position, and agreeing with the PTO that the recorded terminal disclaimer became part of the original ’991 patent and served to define its term, “regardless of any further term that might have been otherwise available in the absence of the disclaimer.” Id. at 8. The Court relied on 35 U.S.C. § 253, which governs both terminal disclaimers and subject matter disclaimers. First, the Court noted that § 253 dictates that a terminal disclaimer is treated as part of the original patent—the same benchmark used to fix the maximum term for reissued patents in § 251—and that § 253 describes terminal disclaimers and disclaimers of patent claims in parallel, stating that they operate “[i]n like manner.” Id. at 9-10 (alteration in original). As such, the Court noted that the provision in § 253 dictating that such disclaimers of patent claims “shall thereafter be considered as part of the original patent” applied in equal force to disclaimers of patent term. Id. at 10. Thus, the Court concluded that a terminal disclaimer’s effect on patent term must apply to the term of the original patent, as recited in § 251.

The Court also held that because § 253 has been interpreted as meaning that disclaimed claims never existed in the original patent, the same holds true for Yamazaki’s disclaimer of patent term. “If a patentee’s post-hoc disclaimer of an issued patent claim applies as part of the ‘original patent’ such that the disclaimed subject matter is treated as if it never existed, we see little reason why a terminal disclaimer filed before the issue date should not be afforded the same effect.” Id.

The Court found added support for its conclusion in other provisions of the Patent Act relating to patent term. For example, 35 U.S.C. §§ 155, 155A, and 156 codify additional mechanisms for varying the “term” of an “original patent” relative to that provided under § 154(a). The Court refused to hold that § 251 used “term” in a manner consistent with § 154(a), but distinct from §§ 155, 155A, 156, and 253, as to do so would “endorse an untenable reading of the statutory scheme.” Id. at 11.

The Court therefore held that Yamazaki’s terminal disclaimer eliminated any term from the ’991 patent beyond the original term of the ’476 patent, and that reissue never existed as a remedy to withdraw the terminal disclaimer. The Court noted that “[o]nce the ’991 patent issued with the terminal disclaimer in place, and the terminal disclaimer consequently became part of the original patent, the PTO was foreclosed from later reissuing the patent for a term greater than that of the original ’991 patent.” Id. at 11-12. Thus, the PTO had no choice but to reject the Reissue Application, “as the alternative would have contravened the express conditions of § 251.” Id. at 12.

The Court noted that its holding was made in recognition that the reissue statute is remedial in nature and should be construed liberally, but also that the remedial function of the statute is not without limits. While the Court noted that the various delays Yamazaki experienced in prosecuting the Reissue Application were unfortunate, they had no effect on the eventual outcome because § 251 precluded the PTO from allowing the Reissue Application at any point during its pendency. The Court also noted that the reissue was not made appropriate due to the PTO’s failure to act on the petition, as Yamazaki was similarly inattentive and bypassed numerous opportunities to prevent the ’991 patent from issuing with the petition unresolved. The Court therefore noted that Yamazaki shares primary responsibility for allowing the ’991 patent to issue with the terminal disclaimer, and that § 251 is not designed to cure every mistake that might be committed by an applicant or his attorney.

Summary authored by Jameson Q. Ma, student associate at Finnegan.