|CREATE Act, Examination Instructions and Guidelines
||Referenced Items (253, 254, 255, 256, 257, 258, 259, 260, 261, 262, 263, 264, 265, 266, 267, 268, 269, 270, 271, 272)
(253) Clarification of Criteria for
Reissue Error in View of In re Tanaka
The United States Patent and Trademark Office (the "Office") is providing
notification of change in policy based on the recent decision of the U.S.
Court of Appeals for the Federal Circuit of In re Tanaka. 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.
The Manual of Patent Examining Procedure (MPEP) § 1402 was revised in
July of 2008 to state:
An error under 35 U.S.C. 251 has not been presented where a reissue
application only adds one or more claims that is/are narrower than one
or more broader existing patent claims without either narrowing the
broader patent claim by amendment or canceling the broader patent claim.
A reissue application in which the only error specified to support
reissue is the failure to include one or more claims that is/are
narrower than at least one of the existing patent claim(s) without an
allegation that one or more of the broader patent claim(s) is/are too
broad together with an amendment to such claim(s), does not meet the
requirements of 35 U.S.C. 251. Such a reissue application should not be
allowed. [Emphasis in original.]
MPEP § 1402, July 2008, page 1400-2.
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 (the "Board") affirmed the examiner
on appeal (see Ex parte Tanaka, 93 USPQ2d 1291, 92 (Bd. Pat. App. & Int.
2009), and the matter was appealed to the U.S. Court of Appeals for the
On appeal, the Federal Circuit held, in its decision of In re Tanaka, 640
F. 3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011), 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
"[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
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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.
The current version of MPEP § 1402 is not consistent with the Tanaka
C. Implementation of New Policy
Effective immediately, the following policy is implemented. 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 is to be withdrawn, and a new Office action issued to inform applicant
of the withdrawal, and the resulting status of the application in view of the
MPEP § 1402 will be revised in due course to reflect the holding in Tanaka.
D. Inquiries: Questions regarding this notice may be directed by phone to
Kenneth M. Schor at (571) 272-7710, Senior Legal Advisor, Office of Patent
August 1, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1369 OG 230]