Wednesday, July 6, 2011

BPAI holds that reissue cannot be used to remove a terminal disclaimer

A patentee filed a reissue in order to remove a terminal disclaimer. The patentee appealed the Examiner's decision that removal of a terminal disclaimer is not an error correctable by reissue. The BPAI, in an expanded seven-judge panel, held that reissue cannot be used to remove a terminal disclaimer because the patent's term is fixed at issue. (Ex parte Yamazaki.)


Ex parte Yamazaki
Appeal 2010002033; Appl. 10/045,902; US. 6,180,991; Tech. Center 2800
Decided  January 11, 2011

During prosecution of the '991 Patent, the Applicant filed a terminal disclaimer to overcome double patenting rejection. Later in prosecution, the Applicant filed a § 1.181 Petition to Withdraw Terminal Disclaimer after amending such that the claims were no longer subject to the double patenting rejection. Before the petition was decided, Applicant received a Notice of Allowance and paid the issue fee. After the '991 Patent issued, the PTO dismissed the petition, stating that the "USPTO will not remove a recorded terminal disclaimer once a patent issues," and also stating that reissue is not available to nullify a terminal disclaimer.

Before the expiration of '991 Patent, the Applicant filed a reissue. The reissue declaration referred to several errors related to the Petition to Withdraw Terminal Disclaimer. The Examiner rejected the claims during reissue as having a defective declaration, stating that nullification of a terminal disclaimer is not an  error correctable in reissue. The Applicant appealed the Examiner's rejection.

The Board interpreted the reissue statute (§ 251) to hold that the PTO cannot reissue a patent having no remaining unexpired term. The BPAI found that the patent in question had already expired – due to the terminal disclaimer – before the first reissue Office Action was mailed. Since the patent on appeal had expired, the Board found that reissue was not available.

The Board went further than the facts of the case to hold that reissue is never available to remove a terminal disclaimer. The Board reasoned that removing the terminal disclaimer would extend the term of the patent, yet the patent's term is fixed at issue. In explaining its position, the Board cited Ex Parte Wellerdieck, Appeal No. 2007-1119, (BPAI 2007) (informative).  In Wellerdieck, the Board held that "§ 251 does not permit reissue of a patent to extend the term of the original patent, as set upon issuance of the patent."

In reaching its decision, the Board also explicitly overruled a non-precedential decision, Ex parte Durckheimer, Appeal No. 94-2004,  (BPAI 1996). The Board in Durckheimer interpreted “the term of the original patent” § 251 to mean the full term of the patent granted by § 154 without taking into account the terminal disclaimer. Here, the Board noted that § 154 was amended after Durckheimer to specifically recognize that patent term can expire based upon a terminal disclaimer.

My two cents: Most BPAI decisions affect only the Applicant/Patentee. This one affects every patent   that includes a terminal disclaimer. Let's hope this patentee has enough at stake to appeal to the Federal Circuit.

The patentee did file a Request for Rehearing by the BPAI. It's possible the BPAI will change its mind -- two judges in the expanded panel of seven did file a concurrence which disagreed with the broad holding. I expect this decision to be marked Precedential, or at least Informative.

At oral arguments before the BPAI, one of the judges asked about the Petition to Withdraw Terminal Disclaimer that was filed during prosecution of the original patent, then commented that "I'm more concerned with the issue that we are not the proper place to be with this issue before the Director." I'm not sure where the judge was going with this. Any remedies related the petition (filed in 1999) have long since expired. Perhaps that was the judge's point: it was a petitionable issue and you failed to handle it in the appropriate manner. Though the appropriate manner – Withdraw from Issue and/or ask the PTO to hold the issuance until the petition was decided (suspension of rules?) – isn't very satisfactory either. This case, like Frye, is yet another fine example how appeals and petitions don't play together very well.

If you want more details about how the Board interpreted the reissue statute, you'll have to read the decision yourself. I blogged about this one because I think it's an important decision, but arguments about statutory construction don't interest me too much.


  1. What about filing a reissue to withdraw a terminal disclaimer that is to a wrong patent number, like one digit in the number is wrong, so it references a patent not to a common assignee, totally different subject matter?

  2. This is a good reason to hold off on filing terminal disclaimers until claims are otherwise indicated as allowable. Why file a TD when you don't know whether the allowed claims will eventually still be considered double patenting?

  3. ^ not so much the TD, the dummies paid the issue fee when there was an outstanding petition

    and this should be rejected on principle. just like how reexam broadening is scrutinized for deceptive intent because you may have deceived your competitions into making a produce that now infringes. here, competitors may be readying to make/use the claimed invention at expiration only to find out the term is longer than they thought, when the applicant knew full well of the TD issues from before patent issue

  4. I agree about holding off on filing the TD until the last possible moment. You never know what the final allowable form of the claims are going to be. Also, it never hurts to traverse the double-patenting rejection where it's pretty clear that the Examiner made only a perfunctory analysis of the claims.