NOTE: This is the first part of a two-part post. This part focuses on US practice; the second part will focus on Israel practice.
During ex parte patent practice in both the USA and Israel, applicants are free to amend their claims, so long as the amendments are supported by the specification. But what are a patentee’s options for amending the claims after grant?
In the USA, a patentee may seek a certificate of correction to rectify clerical or typographical errors (35 U.S.C. §254 and §255), but more substantive matters – like substantive patentability – may be dealt with through two types of proceedings, reexamination and reissue.
Reexamination (35 U.S.C. §§301-307 and §§311-318) can be thought of as a means for correcting a particular type of error by the USPTO: the failure to find and consider certain prior art publications during the examination of a now-issued patent. This is reflected in the fact that re-examination proceedings are predicated on the patentee or a third party presenting to the USPTO one or more printed prior art publications that raise a substantial new question of patentability regarding at least one of the claims of the patent. Unlike prosecution of a regular application, reexamination can only result in the allowance or rejection of each claim; continuations and divisionals cannot be filed in a reexam.
During reexamination, patentees may amend their claims. Although patentees may not broaden the scope of the claims during reexamination, they may add new dependent or even independent claims. Thus, for example, reexamination of US 6047319 resulted in all 17 originally-granted claims being upheld as allowable, and the addition of nine new claims, including a new independent claim 21 as well as claims 18-20 which depend from claim 1.
Reissue, in contrast, can be thought of as a means to correct patentee error in an issued patent. Unlike reexamination, only the patentee can request reissue. As set forth in the first paragraph 35 U.S.C. §251, reissue may be sought for two reasons: a defective specification or drawing, or claims that are overly broad or overly narrow.
Whenever any patent is, through error without any deceptive intention, 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…
As with reexamination, during reissue proceedings the applicant may amend its claims and add new ones. However, in contrast to reexamination, once reissue proceedings have begun, the applicant may file continuations and divisionals. And if the reissue application is filed within two years of the grant of the original patent, the patentee may seek to broaden his claims. Broadening, in this context, means amending or filing a claim that is in some way broader than the originally granted claims, even if the amended or new claim is in other ways narrower than the granted claims. In re Self, 671 F.2d 1344 (CCPA 1982).
An interesting question that is now before the CAFC is whether or not a patentee may seek reissuance of a patent when the only change sought is to add a new dependent claim. According to a memo circulated to the examining corps by then-Deputy Commission John Love in late 2007, as long as one of the two threshold criteria are met – defective specification or drawings, or overly broad/narrow claims – USPTO policy is that the patentee is entitled to seek reissue under the statute. But if the only the failure of the patent alleged by the patentee is the failure to include a dependent claim, that does not constitute “the patentee claiming more or less than he had a right to claim in the patent”, as per 35 U.S.C. §251, and thus the patentee is not entitled to seek reissue.
The result of the PTO’s position is that in cases where there is an error in the specification to which the patentee can point, he can use this to gain entry to the reissue process; once there, he may add dependent claims, without narrowing his already-granted independent claims. Exhibit A: the reissue of US 5945207, which resulted in Re 40005. In that case, the only amendment to the claims that the patentee sought to introduce was the addition of new dependent claims. Under the USPTO’s view, that alone would have been insufficient as a basis for reissue proceedings. But the patentee also sought to correct the units for saturation magnetization recited in the specification, from “kA/m” to “kAm2/kg” (compare col. 3, line 17 of the original patent with col. 3, line 21 of the reissued patent). That opened the door for the reissue process, enabling the patentee to add new dependent claims 8-14.
However, as set forth in a 2009 BPAI decision, Ex Parte Tanaka, in the case in which the patentee seeks only to introduce a new dependent claim, without amending the specification or otherwise amending any of the granted claims, the PTO will not allow the reissue to proceed. In that decision, the BPAI explained why it believes that CCPA and CAFC case law interpreting §251, including Hewlett-Packard Co. v Bausch & Lomb, Inc., 882 F.2d 1556 (Fed. Cir. 1989) and In re Handel, 312 F.2d 943 (CCPA 1963) does not allow reissue applications solely for the purpose of introducing new dependent claims. Inter alia, the Board was of the view that if failure to include dependent claims was an error correctable by reissue, “then virtually every patent could be reissued out of hand”. Tanaka is now on appeal before the CAFC; oral arguments are scheduled for January 10, 2011.
(Interestingly, Tanaka had originally attempted to file a broadening reissue in which only claim 1 would be broadened, but this was rejected as an attempt to recapture subject matter surrendered during prosecution – the portions of claim 1 Tanaka sought to delete had been relied upon during prosecution of the patent to distinguish over the prior art. Since recapture cannot be the basis for a reissue, the application was rejected on this as well as prior art grounds. Eventually Tanaka decided to leave the original seven claims alone and to file two new independent claims and several claims dependent therefrom. These new claims were rejected in 2005 on prior art grounds, not on the grounds that the application failed to qualify as a reissue application under §251. Later Tanaka amended some of the new claims, but after the Examiner maintained his prior art rejections, in March 2007 Tanaka cancelled all the new claims, save for new claim 16, which he amended to depend from originally granted claim 1. The Examiner then rejected the application on the grounds that the amendment necessitated the filing of a new reissue oath, although he indicated that the new claim 16 was in principle allowable. Tanaka then filed a new reissue oath, in which he listed the error in the patent being “the features recited in dependent claim 16 were not included in the original patent”. It was at this stage, in October 2007, that the Examiner rejected the application as not being subject to reissue, because “the error specified in the oath filed 9/24/2007 is not an error correctible by reissue. The applicant has not specified and error that broadens or narrows the scope of the claims of issued patent number 6093991. The original claim 1 remains in the current reissue application, therefore the broadest scope of the patent remains the same.” In an advisory action mailed in December 2007, the Examiner further explained that “Retaining the broad patent claim without amendment is an indication that the broad patent claims [sic] is not inoperative to cover the disclosed invention.”)
As a practical matter, it’s clear that there are several other ways Tanaka could have approached the situation and still managed to get his dependent claim allowed. He could have kept a continuation application pending; claim 16 would apparently have been allowed, pursuant to the filing of a terminal disclaimer. A riskier but viable approach would have been to find some prior art that raises a substantial new question of patentability and to request reexamination on that basis. That would have opened the door to adding new claims, assuming that the claims were allowable over the prior art that served as the basis for the reexamination request. And as mentioned above, he could have pointed to an error in the specification as the basis for reissue; that too would have opened the door for adding new claims.
Another possibility might have been to amend one of the allowed claims in a way that formally narrowed the claim, but without detriment to the commercial value of that claim. Such an approach was used in the reissue of US 6910617. There, the patentee originally sought to only add dependent claims, and was rejected for the same reason Tanaka’s reissue application was rejected. In response, the applicant amended the word “axial” in claim 1 to read “coaxial” (although he also found an error in the specification which also served as the basis for reissue). This narrowing amendment brought the application within the ambit of the §251, enabling the patentee to add independent claims (although he could have added dependent claims as well) and leading to the issuance of Re 41101.
Editorializing for a moment, it seems strange that if a patent has no apparent flaws except for the failure to include some additional dependent claims, the patentee has no recourse to get those additional dependent claims introduced. If, however, there are some flaws, e.g. the patentee made a mistake in the specification or drawings, or found some prior art that calls the validity of the claims into question, then that patentee is rewarded with an opportunity to file new dependent claims.