The American Invents Act (AIA) created a special procedure known as Supplemental Examination by which a patent owner can attempt to cure a multitude of prosecution sins and inoculate a patent against later charges of inequitable conduct. The Supplemental Examination offers the advantages in quick resolution and wide range of issues that can be addressed. It is also an expensive procedure and offers a patent owner limited options on appeal if the Examination leads to final claim rejections.
This note considers the question of whether and when a patent owner might be better served by curing prosecution misconduct through a patent reissue. Some obvious advantages of the reissue process are apparent from language of the reissue statute, 35 U.S.C. §251. Reissue allows a patent owner to correct a defective specification or claims, and to expand claim scope if the reissue request is filed within two years of the original patent issue date, unlike an SE. Also unlike an SE, a patent owner can terminate a reissue proceeding at will, restoring the patent to its original form (albeit with an added file history burden). A reissue proceeding is relatively inexpensive compared to an SE, and the average pendency during reissue is not much different from what the patent owner will encounter if the SE is converted to an ex parte reexamination (2-3 years average pendency in both cases).
The important questions for a patent owner considering a reissue are: what types of prosecution misconduct can be cured through reissue and is the “cured” reissue patent inoculated against inequitable conduct? The latter question stems from the apparently well-settled principle that “a reissue proceeding cannot rehabilitate a patent held to be unenforceable due to inequitable conduct (the basis of the ruling in Aventis Pharma S.A. v. Amphastar Pharmaceuticals, 525 F.3d 1334 (Fed. Cir. 2008).
Assume that the only “error” the applicant wishes to correct is to bring a pertinent reference before a patent examiner, without wanting to amend any of the existing claims. Under the reissue statute as amended by the AIA, it no longer matters whether the reference was originally withheld by deceptive intent. But does the reissue process allow for submission of new art that doesn’t necessitate an amendment to the specification or claims? Probably not; the concept of “error” correctable by a reissue has not been understood to mean mere review of new information without amendment. This shouldn’t be a significant hurdle, however, since Ex Parte Tanaka (BPAI, 2009) allows a patent owner to seek reissue if the only “error” was failure to include specific dependent claims. Once a legitimate “error” is established, e.g., a defect in the specification or drawings, or a “missing” dependent claim, any new art can be submitted as part of an applicant’s duty of candor in reissue prosecution.
If an unamended independent claim is allowed over the newly cited art, the patent should be free of taint of inequitable conduct, since there has now been a determination that the newly-cited art is not material to the claims under the Therasense but-for standard.
In the case where the newly-cited art necessitates an amendment, it could be argued that the newly-submitted reference is material to the originally prosecuted claims, raising the specter of inequitable conduct in obtaining the original patent. However, this result would seem contrary to the purpose of the AIA amendment to §251, which was deliberately designed to allow correction of errors that may have involved deceptive intent.
The same analysis should apply to correcting an affirmative misstatement or misrepresentation made during original prosecution. The fact that the misstatement was made with deceptive intent would not prevent it from being corrected in reissue. If the claims are held to be allowable without amendment, the misstatement or misrepresentation could not have been material under Therasense, and no inequitable conduct should be found. Even if the correction necessitated a claim amendment, it would be hard to argue that any inequitable conduct hasn’t been cured, since the reissue proceeding itself is indifferent to whether the “error” was made with deceptive intent.
A reissue procedure will not cure all forms of inequitable conduct, of course. Egregious misconduct, including deliberate fraudulent statements or actions made with the intent to deceive, are not absolved by the Therasense but-for standard of materiality, and would presumably not be cured by attempting to set the record straight in a reissue proceeding. It is also doubtful that a patent, once it is found unenforceable by reason of inequitable conduct, could be cured by a later reissue process, following the rule in Aventis, discussed above. The Aventis rule, however harsh, nonetheless finds an analogous restriction in a Supplemental Examination, which must be completed prior to the filing of a lawsuit where inequitable conduct may be raised as a defense, and must be filed prior to the inequitable conduct being alleged in a pleading.