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April 17, 2014

Reissue Is Not Remedy to Terminal Disclaimer

Affirming a decision by the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) rejecting a reissue application as improper since it was terminally disclaimed to an expired patent, the U.S. Court of Appeals for the Federal Circuit agreed that reissue proceedings cannot be used to withdraw a terminal disclaimer from an issued patent.  In re Shunpei Yamazaki, Case No. 12-1086 (Fed. Cir., Dec. 6, 2012) (Lourie, J).

During the course of prosecuting its application, Yamazaki filed a terminal disclaimer to overcome an obviousness-type double patenting rejection based on Yamazaki’s earlier-issued U.S. patent.  The terminal disclaimer disclaimed the statutory term of any patent granted on the application that would extend beyond the expiration date of the issued patent.  Yamazaki later amended the independent claims of the pending application, such that, in Yamazaki’s view, the pending claims became patentably distinct over the claims of the issued patent and the terminal disclaimer became unnecessary.  Accordingly, while the application was still pending, Yamazaki submitted a petition requesting that the PTO withdraw the terminal disclaimer.  However, the PTO did not act on the petition.  After a Notice of Allowance issued in the pending application, Yamazaki paid the issue fee, and the application issued as a new U.S. patent.  The terminal disclaimer thus remained a part of the record of the new patent, and as a result, effectively limited the new patent to a term of only 35 months.  Approximately three months after the new patent issued, and more than two years after the petition to withdraw the terminal disclaimer was filed, the PTO dismissed the petition filed in the application (because the application had issued into a patent).  Yamazaki then filed a reissue application, citing Yamazaki’s errors in failing to ensure proper disposition of the petition during prosecution.  The PTO rejected the reissue application as failing to recite an error upon which reissue can be based.  By this time, both the old and the new (i.e., terminally disclaimed) patents had expired. After Yamazaki responded to the rejections, the PTO delayed further action for more than two years before issuing another non-final office action.  Yamazaki then appealed to the Board, which found that § 251 prohibits reissuing an expired patent and precludes expanding a reissued patent’s term beyond that set by the original patent issued.  Yamazaki appealed to the Federal Circuit.

In its appeal, Yamazaki contended that by allowing the new patent to issue with the Petition to Withdraw still pending, the new patent was rendered patent wholly or partially inoperative and caused Yamazaki to claim less than he was entitled to by unnecessarily disclaiming part of the new patent’s full term.  The Federal Circuit disagreed, concluding that when the new patent issued with its terminal disclaimer in effect, that disclaimer became part of the new patent and served to define its term, regardless of any further term that might have been otherwise available in the absence of the disclaimer.  Although acknowledging the various delays Yamazaki experienced in prosecuting the reissue application, characterizing them puzzling and undeniably unfortunate, the Court determined that these delays had no effect on the eventual outcome because § 251 precluded the PTO from allowing the Reissue Application at any point during its pendency.

© 2014 McDermott Will & Emery

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