In a precedential opinion, the Board of Patent Appeals and Interferences (BPAI) held that 35 U.S.C. § 251 does not permit reissue if only narrower claims were added as a “hedge” against invalidity of the original claims. Ex parte Yasuhito Tanaka, Appeal No. 2009-000234, (BPAI, Dec. 9, 2009) (per curiam).

The statue 35 U.S.C. § 251 states that for reissue of a defective patent, the patent must be wholly or partly inoperative or invalid because of defects in the specification or drawing, or because the patentee has claimed more or less than he or she had a right to claim. Further according to the statute, the inoperative or invalid patent must have arisen through error without any deceptive intent.

Yasuhito Tanaka (Tanaka) filed a reissue application in which the only amendment was the addition of a dependent claim. Tanaka filed a declaration that stated “the original patent is at least partially inoperative by reason of claiming more or less than [he] had a right to claim in the original patent,” and that it was “not until after the original patent issued that I discovered that the originally presented claims did not adequately define the invention because they were more specific than necessary.” The examiner rejected the claims as being based upon a defective reissue declaration, because the error identified in the reissue declaration is not an error correctible by reissue under 35 U.S.C. § 251. Tanaka appealed.

The BPAI noted that although the U.S. Court of Appeals for the Federal Circuit has acknowledged that 35 U.S.C. § 251 should be construed liberally, it does not enable correction of every error. The BPAI pointed out that the error presented appeared to be based on the fact that the patentee included too few claims. Pointing to the Manual of Patent Examining Procedure (MPEP) at § 1402 (8th ed., rev. 7, July 2008), the BPAI stated that the U.S. Patent and Trademark Office (USPTO) does not allow for a reissue application in which the only error specified to support reissue is the failure to include one or more claims that are narrower than at least one of the existing patent claims unless there is an allegation that one or more of the broader patent claims is overly broad. The BPAI also determined that the declaration was vague as to whether the claims were inoperative as too broad or too narrow and noted that a mere reiteration of the statutory language “more or less” does not clearly identify the error to be corrected by reissue. The BPAI concluded that Tanaka was seeking an additional claim in order to hedge against the possible invalidity of one or more of the original claims. Affirming the examiner’s decision, the BPAI added that the appellant was attempting to have it both ways by seeking to add narrower claims to the original patent without complying with the requirements of the statute.

Practice Note: When seeking reissue, be sure to address the specific requirements of the statute. Merely adding a dependent claim is not enough to satisfy the error requirement under 35 U.S.C. § 251.