Challenge

Our client, a multi-national designer and manufacturer of consumer electronics, acquired a patent. The corporation wanted to expand the scope of protection for the newly obtained patent to cover existing and competitor products and therefore considered filing a broadened reissue application. However, as they also wanted to license the original patent claims, they were concerned about risking the original patent.

Our client was concerned for good reason. By seeking expanded ownership through the filing of a broadened reissue application, for which there is only a two-year execution period, the original patent claims are immediately at risk. While a patent is no longer surrendered during the pendency of a reissue application and therefore may continue to be licensed, the claims of the original patent continue to be subject to further scrutiny.

Solution

The Harness IP team immediately jumped into action.

When filing the reissue application, Harness IP suggested not only adding broad independent claims during the reissue application filing, but also adding new dependent claims, dependent upon the originally patented independent claims. The thought process was that if the original claims were not subject to an immediate rejection, which is often the case in a reissue filing, our client could hopefully have the original claims reissued based merely on the inclusion of the additional dependent claims.

Although the USPTO originally disagreed with our premise, the Court of Appeals for the Federal Circuit agreed with our position. In In re Tanaka, No. 10-1262 (Fed. Cir. Apr. 15, 2011), the Federal Circuit reversed the Board’s holding that “a reissue application that retains all of the original patent claims and adds only narrower claims does not present the type of error correctible by reissue under 35 U.S.C. § 251.” Instead, the Federal Circuit held that the addition of such dependent claims creates a hedge against invalidity of the patented claims and therefore is a correctible error under 35 U.S.C. § 251. Because of Tanaka, our lawyers were able to:

• File the reissue patent with the original and broadened claims, as well the additional claims dependent upon the original claims;
• Obtain a first reissue patent, including the original patent claims and the additional dependent claims (thereby removing the original patent claims from risk under the reissue process); and
• Obtain multiple reissue patents, including much broader claims than those set forth in the original patent.

Even though the original patent claims were initially at risk, our team was able to partition those claims from the reissue process by adding just the dependent claims. By pursuing the broadened reissue patent separately, our client could continue to license the original patent. By obtaining additional broader patent claims, we were also able to substantially increase the value of the initial patent.

As a result, our client was extremely pleased and continues to use Harness IP for complex patent prosecution and licensing projects.