The U.S. Patent and Trademark Office made a change in policy based on the recent decision of In re Tanaka. Basically, the PTO has said that in a reissue application, the addition of claims that are narrower in scope than the existing claims, without any narrowing of the existing patent claims, may be the basis for correcting an error under 35 U.S.C. § 251 to support a proper reissue application.
A rejection under 35 U.S.C. § 251 will no longer be made in this scenario, provided that the claims are otherwise compliant with 35 U.S.C. § 251. This change revises the policy in the current Manual of Patent Examining Procedure (MPEP) that is provided in MPEP § 1402, which was not consistent with the Tanaka decision.
Tanaka sought reissue to add one dependent claim to his original patent. Because the only error alleged was the failure to present the narrower dependent claim during the original patent examination, the examiner rejected the reissue application under 35 U.S.C. § 251, relying on MPEP § 1402. The Board of Patent Appeals and Interferences affirmed the examiner and the matter was appealed to the U.S. Court of Appeals for the Federal Circuit.
On appeal, the Federal Circuit held, in its decision of In re Tanaka, that “the 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.” Tanaka, 640 F. 3d at 1251, 98 USPQ2d at 1334. The court went on to state that:
“[t]his court also rejects the PTO’s assertion that the omission of a narrower claim from an original patent does not constitute an error under § 251 because the omission of a dependent claim does not render the patent inoperative. While the Board correctly recognized that a patent is inoperative under § 251 if it is ineffective to protect the disclosed invention, the Board improperly assumed that Tanaka’s original patent cannot be deemed partly inoperative in the absence of claim 16, whose scope is subsumed by claim 1, from which it depends…. Finally, this court rejects the Board’s conclusion that adding a single dependent claim to the originally issued claims is equivalent to the disallowed practice of filing a ‘no defect’ reissue.” Tanaka, 640 F. 3d at 1250-51, 98 USPQ2d at 1334 [emphasis added].
Even further, the court stated that “…the narrow rule relating to the addition of dependent claims as a hedge against possible invalidity has been embraced as a reasonable interpretation of the reissue statute by this court….” Tanaka, 640 F. 3d at 1251-52, 98 USPQ2d at 1335.
Now, the Patent Office has directed:
Where the only change to a patent made in an application for its reissue is the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims, the application claims are not to be rejected as failing to state an error under 35 U.S.C. § 251. In addition, any rejection of record in a pending application on this basis will be withdrawn, and any new Office action issued will inform applicant of the withdrawal, and the resulting status of the application in view of the withdrawal.