United States: Reissue Application Cannot Be Used To Withdraw A Terminal Disclaimer From An Issued Patent

In In re Yamazaki, No. 12-1086 (Fed. Cir. Dec. 6, 2012), the Federal Circuit affirmed the Board's rejection of reissue application No. 10/045,902 ("the Reissue Application") for lack of error correctable under 35 U.S.C. §251 because reissue proceedings cannot be used to withdraw a terminal disclaimer from an issued patent. 

In 1995, Shunpei Yamazaki filed U.S. Patent Application No. 08/426,235 ("the Original Application").  To overcome an obviousness-type double-patenting rejection based on Yamazaki's earlier-issued U.S. Patent No. 4,581,476 ("the '476 patent"), Yamazaki filed a terminal disclaimer, affirmatively disclaiming the statutory term of any patent granted on the Original Application that would extend beyond the expiration date of the '476 patent.

Yamazaki later amended each independent claim of the Original Application, such that, in Yamazaki's view, the pending claims became patentably distinct over the claims of the '476 patent and the terminal disclaimer became unnecessary.  With the Original Application still pending, Yamazaki submitted a petition to withdraw the recorded terminal disclaimer, but the PTO never acted on the petition.  With the petition still pending, a notice of allowance issued, and Yamazaki subsequently paid the issue fee.  The Original Application issued as U.S. Patent No. 6,180,991 ("the '991 patent") while the terminal disclaimer remained in full force, and as a result, substantially curtailed the enforceable term of the '991 patent.

Approximately three months after the '991 patent issued, the PTO dismissed the petition to withdraw the terminal disclaimer, concluding that a recorded terminal disclaimer may not be nullified after the subject patent had issued.  Yamazaki then sought to rescind the terminal disclaimer by filing the Reissue Application.  The PTO rejected Yamazaki's oath and declaration as defective for failing to recite an error upon which a reissue application could be based, and the Board affirmed the PTO's rejection.

On appeal, Yamazaki took the position that the PTO, by failing to act on the petition, caused Yamazaki to claim less than he was entitled to by unnecessarily disclaiming part of the '991 patent's term.  Yamazaki argued further that "the term of the original patent," as used by §251, refers to the maximum statutory grant of exclusivity under 35 U.S.C. §154(a), which provides that "such grant shall be for a term beginning on the date on which the patent issues and ending 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 without altering the statutory term.  The PTO countered that a recorded terminal disclaimer becomes part of the original patent and defines the patent's term, so that the patent must be treated as if the disclaimed term never existed.  The PTO also noted that Yamazaki's reissue is precluded because the '991 patent had expired years earlier, and, thus, no unexpired part of the term of the original patent remains.

"Once the [original patent] issued with [a] terminal disclaimer in place, and the terminal disclaimer consequently became part of the original patent, the PTO was foreclosed from later reissuing the patent for a term greater than that of the original '991 patent."  Slip op. at 11-12.

On appeal, the Federal Circuit affirmed the Board's decision, rejecting Yamazaki's position, and agreeing with the PTO that the recorded terminal disclaimer became part of the original '991 patent and served to define its term, "regardless of any further term that might have been otherwise available in the absence of the disclaimer."  Id. at 8.  The Court relied on 35 U.S.C. §253, which governs both terminal disclaimers and subject matter disclaimers.  First, the Court noted that §253 dictates that a terminal disclaimer is treated as part of the original patent—the same benchmark used to fix the maximum term for reissued patents in §251—and that § 253 describes terminal disclaimers and disclaimers of patent claims in parallel, stating that they operate "[i]n like manner."  Id. at 9-10 (alteration in original).  As such, the Court noted that the provision in §253 dictating that such disclaimers of patent claims "shall thereafter be considered as part of the original patent" applied in equal force to disclaimers of patent term.  Id. at 10.  Thus, the Court concluded that a terminal disclaimer's effect on patent term must apply to the term of the original patent, as recited in §251.

The Court also held that because § 253 has been interpreted as meaning that disclaimed claims never existed in the original patent, the same holds true for Yamazaki's disclaimer of patent term.  "If a patentee's post-hoc disclaimer of an issued patent claim applies as part of the 'original patent' such that the disclaimed subject matter is treated as if it never existed, we see little reason why a terminal disclaimer filed before the issue date should not be afforded the same effect."  Id.

The Court found added support for its conclusion in other provisions of the Patent Act relating to patent term.  For example, 35 U.S.C. §§155, 155A, and 156 codify additional mechanisms for varying the "term" of an "original patent" relative to that provided under §154(a).  The Court refused to hold that §251 used "term" in a manner consistent with §154(a), but distinct from §§155, 155A, 156, and 253, as to do so would "endorse an untenable reading of the statutory scheme."  Id. at 11.

The Court therefore held that Yamazaki's terminal disclaimer eliminated any term from the '991 patent beyond the original term of the '476 patent, and that reissue never existed as a remedy to withdraw the terminal disclaimer.  The Court noted that "[o]nce the '991 patent issued with the terminal disclaimer in place, and the terminal disclaimer consequently became part of the original patent, the PTO was foreclosed from later reissuing the patent for a term greater than that of the original '991 patent."  Id. at 11-12.  Thus, the PTO had no choice but to reject the Reissue Application, "as the alternative would have contravened the express conditions of § 251."  Id. at 12. 

The Court noted that its holding was made in recognition that the reissue statute is remedial in nature and should be construed liberally, but also that the remedial function of the statute is not without limits.  While the Court noted that the various delays Yamazaki experienced in prosecuting the Reissue Application were unfortunate, they had no effect on the eventual outcome because §251 precluded the PTO from allowing the Reissue Application at any point during its pendency.  The Court also noted that the reissue was not made appropriate due to the PTO's failure to act on the petition, as Yamazaki was similarly inattentive and bypassed numerous opportunities to prevent the '991 patent from issuing with the petition unresolved.  The Court therefore noted that Yamazaki shares primary responsibility for allowing the '991 patent to issue with the terminal disclaimer, and that § 251 is not designed to cure every mistake that might be committed by an applicant or his attorney.

Judges:  Lourie (author), Reyna, Krieger (sitting by designation)

[Appealed from Board]

This article first appeared in Last Month at the Federal Circuit, January 2013. To view the original article, please click here.

Copyright © 2013 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | All rights reserved.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
17 Nov 2018, Conference, Washington, DC, United States

Finnegan partner Clare Cornell will present “Covert Trademark Use in the Internet: Licit or Illicit” at the Asian Patent Attorneys Association Conference.

20 Nov 2018, Webinar, Washington, DC, United States

As part of Strafford Publications’ webinar series, Finnegan attorneys Tom Irving, Josh Goldberg, and Cory Bell will analyze Patent Trial and Appeal Board denials and partial denials, offering take-home lessons applicable in

21 Nov 2018, Workshop, London, UK

Finnegan partner Leythem Wall will consider European claim drafting strategy and lead the Chemical Workshop during a two-day course, hosted by Management Forum.

Similar Articles
Relevancy Powered by MondaqAI
Troutman Sanders LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Troutman Sanders LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions