In re Yamazaki, No. 12-1086 (Fed. Cir. Dec. 6, 2012)

In In re Yamazaki, the Court of Appeals for the Federal Circuit affirmed a USPTO Board of Patent Appeals and Interferences (“BPAI”) decision affirming the rejection of a reissue application for lack of error correctable under 35 U.S.C. § 251. Specifically, the Federal Circuit stated that reissue proceedings cannot be used to withdraw a terminal disclaimer from an issued patent.

Yamazaki filed a terminal disclaimer in 1996 linking his application, which issued as Patent No. 6,180,991, to his prior Patent No. 4,581,476. After amending the independent claims, Yamazaki deemed the terminal disclaimer to be unnecessary and filed a petition to withdraw the terminal disclaimer under 37 C.F.R. § 1.182. While the petition was pending, the examiner allowed the case, Yamazaki paid the issue fee, and the '991 patent issued. The USPTO took no action on the petition while the application was pending. After the ‘991 patent issued, and more than two years after the petition was filed, the USPTO dismissed the petition, concluding that a terminal disclaimer may not be nullified after a patent has issued.

In January 2002, Yamazaki filed a reissue application seeking to rescind the terminal disclaimer. Due to the terminal disclaimer, the '991 patent expired in December 2003, but otherwise would not have expired until January 2018. Slip Op. at 3. The USPTO did not act on the reissue application for over two years, until after the patent had expired. Pursuant to a personal interview in 2005, the examiner agreed, in writing, that a reissue application could be used to correct terminal disclaimer errors. Slip Op. at 5. However, after two more years of delay, the USPTO rejected the reissue application for lack of error correctable under 35 U.S.C. § 251. Slip Op. at 5. In 2007, Yamazaki appealed to the BPAI and in 2011 the BPAI issued its decision that a reissue could not be used to remove a terminal disclaimer. See Ex parte Yamazaki, No. 2010-002033, 2011 WL 109119 (B.P.A.I. Jan. 10, 2011) (“Board Decision”), reh’g denied, 2011 WL 3605913 (B.P.A.I. Aug. 12, 2011) (“Rehearing Decision”).

On appeal, Yamazaki argued that the USPTO, by failing to act on the petition before issuing the patent, caused him to claim less than he was entitled to by unnecessarily disclaiming part of the patent's term. In particular, Yamazaki argued that the phrase “the term of the original patent” in §251 refers to the maximum statutory grant of exclusivity under 35 U.S.C. §154(a), which ends 20 years from the date on which the application for the patent was filed. Slip op. at 7. According to Yamazaki, a terminal disclaimer “does not alter that statutorily defined patent term, but merely adjusts the patent’s expiration date.” Id. (emphasis original).

The PTO countered that a recorded terminal disclaimer becomes part of the original patent and defines the patent's term. Slip Op. at 7-8. As such, the patent must be treated as if the disclaimed term never existed. The PTO also noted that Yamazaki's reissue application was precluded because the '991 patent had expired and, thus, no unexpired part of the term of the original patent remained. Id.

The Federal Circuit affirmed the denial, stating that the effect of the terminal disclaimer is to define the term of the original patent. Slip Op. at 8. Section 251, which authorizes the correction of errors through reissue, states that after a correction is made, the USPTO will reissue the patent “for the unexpired part of the term of the original patent.” Slip Op. at 6-7. Furthermore, under § 253, a terminal disclaimer is considered part of the original patent and, as such, defines the term of the original patent. Slip Op. at 9- 10. The Federal Circuit thus held that a consistent reading of the word “term” throughout the Patent Act prohibits using a reissue to expand a patent’s term. Slip Op. at 10-11.

In view of In re Yamazaki, patent practitioners should take care to review any outstanding issues in patent applications, such as undecided petitions, before paying an issue fee. In addition, where possible, it may be advisable to defer the filing of a terminal disclaimer until all other issues have been resolved in a patent application.