Recently, the Federal Circuit provided some insight about the “error” upon which a reissue patent application can be based under 35 U.S.C. § 251. See In re Dinsmore, No. 2013-1637, 2004 WL 2337372 (Fed. Cir. June 10, 2014).
The current section 251 states:
Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more of 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. 35 U.S.C. § 251 (2012). (The previous version of this statute, which was in effect at the relevant time for the case, included the phrase: “without any deceptive intention.” This change was made Sept. 16, 2012.)
In affirming the rejection of the reissue application, the Court repeatedly referred to “choices made” by the applicants to achieve an issued patent; i.e., the quid pro quo of patent prosecution. For example: “We affirm the Board’s ruling because the applicants have not identified an ‘error’ underlying the choices made in the original patent that they now seek to revise.” Dinsmore at *3 (emphasis added). “It is ultimately no more than a statement of a now-regretted choice, because the applicant’s identify no cognizable false or deficient understanding of fact or law that underlay the choice. This is not ‘error’ as required by section 251.” Id. at *4 (emphasis added). “Section 251 often applies to applicant’s choices, i.e., their deliberate decisions about what to say in their patents, not just slips of the pen. But not every choice that produces inoperativeness or invalidity by reason of a specification, drawing, or claiming problem (within the meaning of section 251) can qualify. Only choices based on ‘error’ count. Id. (emphasis added). “In such cases, the reissue application was held inadequate as being no more than an effort to reverse a later regretted choice made in obtaining the original patent.” Id. (emphasis added).
The Court gives some guidance as to what types of errors are correctable by reissue. “[F]or purposes of narrowing reissue-qualifying choices to those involving ‘error,’ it is important whether deficient understandings, by the applicants or their agents, gave rise to the patenting choice that reissue is being involved to correct.” Id. (emphasis added).
“A deficient understanding” seems to be an important consideration in the decision to accept a reissue application. Some cases where applicants have had success include: In re Tanaka, 640 F.3d 1246, 1247-48 (Fed. Cir. 2011); Medrad, Inc. v. Tyco Healthcare Grp. LP., 466 F.3d 1047, 1052-53 (Fed. Cir. 2006); In re Oda, 443 F.2d 1200, 1206 (C.C.P.A. 1971); and In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511 (Fed. Cir. 2012).
After reaching their decision, the Court stated “applicants simply have not alleged or shown that they had a mistaken belief….that they did, let alone reasonably could, misunderstand…or that their choices….resulted from any mistaken belief.…” Id. at *5.
Finally, the Court proclaimed that: “From all that appears, the applicants…intentionally surrendered a possible right.…in exchange for a benefit.…On the record of this case, applicants are ultimately seeking simply to revise a choice they made, not to remedy the result of a mistaken belief. There is not an error remediable under the reissue statute.” Id. (emphasis added)
In summary, consideration of the deficient understandings or the mistaken beliefs as the basis for the “error” is highly important for reissue applications. A regrettable choice is not the proper basis for reissue.