Patentee Reissue Policy Reversed

The U.S. Court of Appeals for the Federal Circuit (CAFC) has reversed a decision issued by the United States Patent and Trademark Office (USPTO) concerning the Ex Parte Tanaka appeal.  The reversal once again gives a patentee the right to obtain a reissue of a patent in order to add a dependent claim.  The USPTO initially denied Tanaka’s appeal as the original independent claim was not cancelled or modified and the error could not be rectified under Section 251.

Charles Gorenstein, a partner at the representing firm, Birch, Stewart, Kolasch & Birch, LLP (BSKB) said the court accepted the argument that the addition of narrower claims to a patent without any other changes warranted a reissue because without those specifications the patent would not protect the whole of the invention.  The case’s outcome gives patent holders, under certain circumstances, the ability to appeal for a reissue of a patent with more properly written claims that pertain to the original invention.