Narrowing Patent Claims in Reissue:

Hedging Your Bets Against Invalidity Is

Not An Acceptable Objective

 

By Justin Huddleson

 

T

he Board of Patent Appeals and Interferences (“BPAI”)[1] has rendered an opinion that clarifies the extent to which a patent can be corrected after it issues.  Fearing hordes of reopened applications, the BPAI has stated if a patentee wishes to add narrow claims to an issued patent as a hedge against the risk that all the current claims are invalid, then he must give up some of the broad claims he currently has. 

Not all patents are perfect. Some contain minor typographical errors. Others have much more substantive defects. For example, the patentee may not have realized the full potential or value of his invention and inadvertently claimed less than he had a right. 

Fortunately, the PTO realizes that mistakes happen. Substantive errors in applications and issued patents can be corrected as long as the errors were unintentional and without deceptive intent. However, “I changed my mind” is not sufficient grounds for seeking correction of a patent. If a decision was intentionally made, then the application or patent cannot be corrected to undo that decision.

Once a patent application has been allowed and the patent issues, a patent owner can correct substantive errors in the patent through a process known as reissue (35 U.S.C. § 251). A reissue application is generally examined like a new application. 

However, a reissue application is not without risk. Before the PTO reopens examination, the patent owner must declare that the patent is wholly or partially inoperative or invalid through error and that the error was inadvertently made without deceptive intent. 

Furthermore, the reissue process can expose errors other than those that the patent owner sought to correct. Once the patent is disclaimed, it can be rejected on new grounds or even the same grounds that were successfully overcome in the initial application. 

Why would a patent owner want to take such a risk? Two important reasons are that the claims either cover too little (overly narrow) or too much (overly broad).  The danger of the former is obvious: the claims will offer little protection against infringement. The danger of the latter is that overly broad claims can be challenged and invalidated, either in court or before the PTO in a process known as reexamination.

The patent owner in the recent case of Ex parte Tanaka sought to protect himself against the potential risk that his current claims would be found invalid. The inventor submitted a vaguely worded reissue declaration quoting the statutory language that the patent was at least partially invalid because he claimed more or less than he had a right to claim. Notably, this language did not explicitly identify any errors in the claims. 

Without cancelling or amending any existing claims, the inventor added a new dependent claim that merely limited the scope of his existing broad claims. The inventor asserted that this action was proper in a reissue application because he had failed to recognize that his invention was not fully covered by the original claims. 

The BPAI was not amused by the inventor’s rather inventive “correction.” In its eyes, this was no correction at all. It found that by adding narrower claims without changing the broad existing claims, the patent owner was seeking the benefit of reissue without the risk required by 35 U.S.C § 251. Because the patentee had not changed the existing claims in any way, he could not validly assert that there was an actual error requiring correction.

Rather, the patentee was trying to add narrower claims as a “hedge against possible invalidity of the original claims.” In other words, the patent owner was attempting to have it both ways by seeking to add the protection of narrower claims without actually asserting that the original claims were overly broad or in error. 

The BPAI held that a patentee cannot use the reissue process to reopen prosecution of an otherwise valid patent to add additional protection in the form of narrower claims. An actual correction of the existing claims is required.   

The BPAI was clearly worried about a flood of reissue applications had it allowed this type of “correction.” In essence, it would have allowed reissue of virtually every patent. Considering that the number of patents undergoing reissue proceedings is already at a record high, this would have been an unacceptable outcome. 

It is now clear that the failure to add additional dependent claims (without cancelling the broader claims) is not the type of “error” that can be corrected via reissue. The take-home lesson from Tanaka is that an ounce of prevention is worth a pound of cure. Patentees and patent lawyers will be well served by investing the time and resources to ensure complete coverage for an invention and to anticipate all the claims that might be needed throughout the life of the patent.