For this reissue appeal, the issue was whether the reissue declaration can satisfy the error required under 35 U.S.C. § 251 when the
Appellant is only adding a narrower dependent claim by reissue to the existing patented claims simply as a hedge against possible invalidity of the original claims.
Section 251 of the Patent Act states, in pertinent part:The reissue statute 35 U.S.C. § 251 requires that for a patent to be eligible for reissue, a patent must (1) be wholly or partly inoperative or invalid, (2) by reason of an existing error, (3) without any deceptive intention.
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, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
37 C.F.R. § 1.175(a)(1) implements the requirement of 35 U.S.C. § 251, and requires that an applicant for a reissue
patent must state:
1. That the applicant believes the original patent to be whollyThe court found that the applicant’s adding a dependent claim does not under 35 U.S.C. § 251 show the patent is “partly inoperative or invalid, .. by reason of the patentee claiming more or less than he had a right to claim in the patent”. The applicant did not allege the patent claims were invalid. The applicant parent claim was open ended (comprising) and therefore covered the subject matter of the new dependent claim.
or partly inoperative or invalid, and
2. At least one such error that is being corrected at the time of
filing the reissue oath or declaration.
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd09000234.pdf
tag:BPIA, reissue
