Decision No. 1333 re: Patent 2,241,368

The Commissioner concurred with the findings of the Reissue Board and held that the patent did not meet the requirements under subsection 47(1) of the Patent Act as it was not inoperative or defective. Furthermore, the Commissioner held that the patentee failed to provide sufficient subjective evidence that the proposed claims were intended to be part of the original patent. Thus, no new patent was to be issued and the patent would remain in its original granted form. The Commissioner held that stating that the claims are defective for claiming less than the patentee intended is an acceptable defect. However, the patentee must explain how the error arose, which led to the original patent being defective, or inoperative.

The Commissioner held that an application for reissue cannot be amended other than to correct an obvious typographical error. If the facts are incorrect, then the only remedy is to file a new application, including any prescribed fees, within four years of the issue date of the original patent. Furthermore, a patentee can not obtain protection for claims with the same scope as those deliberately cancelled during prosecution. The only evidence of intent regarding the error of not including the newly sought claims, was a US patent. However, those claims were introduced into the US prosecution only after the Canadian issue date. Thus there is no substantiation for the position that similar claims were intended to be part of the original Canadian patent. In addition, the Commissioner held that a failure to file a divisional application is not a direct error or defect pertaining to the original patent document. It is a second patent. Thus, it provides no evidence as to the intent regarding the original patent. Section 47(3) does not provide a remedy to allow for a reissue to include unfiled divisional claims without meeting the requirement of section 47(1). Thus, the application for reissue was denied.