USPTO delay issue highlighted in Yamazaki, but Yamazaki loses anyway
Related to the topic of delays at the USPTO, the unusual issue in Yamazaki:
On May 10, 2001, approximately three months after the ’991 patent issued and more than two years after Yamazaki first sought to withdraw the terminal disclaimer, the PTO issued a decision dismissing the Petition to Withdraw. The PTO concluded that it could not consider Yamazaki’s petition because a recorded terminal disclaimer may not be nullified after the subject patent has issued. Yamazaki requested reconsideration, which the PTO denied.
Yamazaki timely responded, and on January 4, 2005, the examiner issued a final rejection on similar grounds. An in-person examiner interview oc- curred sometime in the ensuing three months,2 and the examiner entered an interview summary noting that those present at the interview had “agreed . . . that the Reissue can be used to correct an error involving a Termi- nal Disclaimer.” Nevertheless, the PTO delayed further action for more than two years before issuing another non-final office action that once again rejected the Reissue Application as premised on a defective basis for reissue.
Rather than pursue further prosecution, Yamazaki filed an appeal to the Board on September 24, 2007. Yamazaki’s appeal engendered yet another lengthy delay, as the Board did not issue its initial decision until Janu- ary 11, 2011. Board Decision, 2011 WL 109119.
The legal issue-->
The question presented in this appeal is whether § 251 permits the use of reissue proceedings to withdraw a terminal disclaimer that was in effect upon issuance of the ’991 patent. The outcome turns on the correct inter- pretation of § 251, which we consider de novo. In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
In pertinent part, § 251 reads as follows:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the pat- entee claiming more or less than he had a right to claim in the patent, the Director shall, on the sur- render of such patent and the payment of the fee required by law, reissue the patent for the inven- tion disclosed in the original patent, and in accor- dance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
35 U.S.C. § 251 (2006) (emphasis added).
Yamazaki contends that the Board erred in rejecting his reissue application for failure to state an error cor- rectable by reissue under § 251. Specifically, Yamazaki points to errors of his own and of the PTO that, by allow- ing the ’991 patent to issue with the Petition to Withdraw still pending, see supra note 1, rendered the ’991 patent wholly or partially inoperative and caused him to claim less than he was entitled to by unnecessarily disclaiming part of the ’991 patent’s full term.
The analysis by the CAFC:
Two aspects of § 253 are important to our analysis. First, the statute dictates that a terminal disclaimer is treated as part of the original patent—the same bench- mark used to fix the maximum term for reissued patents in § 251. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“The term ‘original patent’ is used in both sections 251 and 253; it cannot be presumed that the term has two different meanings in these closely related statutes.”). More specifically, § 253 describes terminal disclaimers and disclaimers of patent claims in parallel, first describing subject-matter dis- claimers and then instructing that terminal disclaimers operate “[i]n like manner.” Section 253 thus indicates that the provisions describing disclaimers of patent claims—including that such disclaimers “shall thereafter be considered as part of the original patent”—apply with equal force to disclaimers of patent term. As such, it is apparent that a terminal disclaimer’s effects on patent term, whatever those effects might be, must apply to “the term of the original patent” as recited in § 251.
Next, because the disclaimer of any issued claim inheres in the original patent, we have interpreted § 253 to mean that after such disclaimer “the patent is treated as though the disclaimed claims never existed.” Vectra, 162 F.3d at 1383 (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). We conclude that 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.
The CAFC notes the "delay at the USPTO" issue, but finds fault with the patentee:
In this case, the various delays Yamazaki experienced in prosecuting his reissue application,3 while puzzling and undeniably unfortunate, had no effect on the eventual outcome because, as discussed, § 251 precluded the PTO from allowing the Reissue Application at any point during its pendency. Cf. In re Orita, 550 F.2d 1277, 1280–81 (CCPA 1977) (rejecting a reissue application as seeking a correction that would have offended statutory require- ments). We are also unpersuaded that reissue is made appropriate by the PTO’s failure to act on the Petition to Withdraw before the ’991 patent issued in the first place. The PTO surely could have responded to the Petition to Withdraw—whether affirmatively or otherwise—in the 22 months between its filing and the issuance of the ’991 patent. But Yamazaki was similarly inattentive. Yama- zaki simply paid the issue fee upon receiving the PTO’s Notice of Allowance and admittedly bypassed numerous opportunities to prevent the ’991 patent from issuing with his petition still unresolved. See supra note 1. Yamazaki thus shares primary responsibility for allowing the ’991 patent to issue with the terminal disclaimer in place—but again, once it did, reissue was unavailable to remove that disclaimer. In short, “[s]ection 251 is not a panacea designed to cure every mistake which might be committed by an applicant or his attorney, and the case at bar exem- plifies a mistake which this section cannot cure.” Orita, 550 F.2d at 1281.
footnote 3: Those delays included, among others, a wait of more than two years for the first office action after the reissue application was filed, a two-year delay between an in-person examiner interview and the next official action, and a delay of well over three years from the filing of Yamazaki’s appeal brief until the Board issued its initial Board Decision in this case.