MPEP 1490. VIII. B.

After Issuance of Patent or Reexamination Certificate

The mechanisms to correct a patent — certificate of correction (35 U.S.C. 255), reissue (35 U.S.C. 251), reexamination (35 U.S.C. 305 and pre-AIA 35 U.S.C. 314), inter partes review (35 U.S.C. 316), post grant review (35 U.S.C. 326), and covered business method review — are not available to withdraw or otherwise nullify the effect of a recorded terminal disclaimer. As a general principle, public policy does not favor the restoration to the patent owner of something that has been freely dedicated to the public, particularly where the public interest is not protected in some manner — e.g., intervening rights in the case of a reissue patent. See, e.g., Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 24 USPQ 308 (1935).

Although certificates of correction (35 U.S.C. 255) are available for the correction of some mistakes by applicants, this remedial provision is not available to withdraw or otherwise nullify a recorded terminal disclaimer. The scope of this remedial provision is limited in two ways — by the nature of the mistake for which correction is sought and the nature of the proposed correction. In re Arnott, 19 USPQ2d 1049 (Comm’r Pat. 1991). The nature of the mistake for which correction is sought is limited to those mistakes that are:

·       (A) of a clerical nature;

·       (B) of a typographical nature; or

·       (C) of a minor character.

The nature of the proposed correction is limited to those situations where the correction does not involve changes which would:

·       (A) constitute new matter, or

·       (B) require reexamination.

A mistake in filing a terminal disclaimer does not fall within any of the categories of mistake for which a certificate of correction of applicant’s mistake is permissible.

Although the remedial nature of reissue (35 U.S.C. 251) is well recognized, reissue is not available to correct all errors. Reissue is not available to withdraw or otherwise nullify the effect of a terminal disclaimer recorded in an issued patent. First, the reissue statute only authorizes the Director of the USPTO to reissue a patent “for the unexpired part of the term of the original patent.” Because the granting of a reissue patent without the effect of a recorded terminal disclaimer would result in extending the term of the original patent, reissue under these circumstances would be contrary to the statute. In In re Yamazaki, 702 F.3d 1327, 1332, 104 USPQ2d 2024, 2028 (Fed. Cir. 2012), the Federal Circuit stated, as to a terminal disclaimer submitted for a patent, that the statutory patent term calculation begins but does not end with 35 U.S.C. 154(a). When a patent issues subject to a terminal disclaimer, the patentee has reduced the patent’s statutory term by effectively eliminating the disclaimed portion from the original patent, by operation of 35 U.S.C. 253 (which indicates that a disclaimer of patent claims “shall thereafter be considered as part of the original patent” and such applies to disclaimers of patent term). Id.

Second, the principle against recapturing previously patented subject matter that has been intentionally dedicated to the public dates back to Leggett v. Avery, 101 U.S. 256 (1879). The attempt to restore that portion of the patent term that was dedicated to the public to secure the grant of the original patent would be contrary to this recapture principle. Finally, applicants have the opportunity to challenge the need for a terminal disclaimer during the prosecution of the application that issues as a patent. “Reissue is not a substitute for Patent Office appeal procedures.” Ball Corp. v. United States, 729 F.2d 1429, 1435, 221 USPQ 289, 293 (Fed. Cir. 1984). Where applicants did not challenge the propriety of the examiner’s nonstatutory double patenting rejection, but filed a terminal disclaimer to avoid the rejection, the filing of the terminal disclaimer did not constitute error within the meaning of 35 U.S.C. 251. Ex parte Anthony, 230 USPQ 467 (Bd. App. 1982), aff’d, No. 84-1357 (Fed. Cir. June 14, 1985). In In re Dinsmore, 757 F.3d 1343, 111 USPQ2d 1229 (Fed. Cir. 2014), the Federal Circuit held that the filing of a terminal disclaimer to obviate a double patenting rejection over a prior patent, when the prior patent and the patent sought to be reissued were never commonly owned, was not an error within the meaning of the reissue statute. In rejecting applicants' argument, the Dinsmore court noted that applicants had not shown a mistaken belief that the two patents at issue were commonly owned, and stated that the applicants were ultimately seeking to revise a choice they made, not to remedy the result of a mistaken belief.

Finally, the nullification of a recorded terminal disclaimer would not be appropriate in reexamination, inter partes review, post grant review, and covered business method review proceedings. There are statutory prohibitions in 35 U.S.C. 305 and pre-AIA 35 U.S.C. 314, 35 U.S.C. 316, and 35 U.S.C. 326 against enlarging the scope of a claim during reexamination, inter partes review, post grant review, and covered business method review proceedings. As noted by the Board in Anthony,supra, if a terminal disclaimer was nullified, “claims would be able to be sued upon for a longer period than would the claims of the original patent. Therefore, the vertical scope, as opposed to the horizontal scope (where the subject matter is enlarged), would be enlarged.” Id. at 470.

Accordingly, after issuance of a patent, a request to replace or remove a previously recorded terminal disclaimer will not be addressed on the merits. Where a terminal disclaimer was submitted to overcome a nonstatutory double patenting rejection (made during prosecution of an application which has now issued as a patent), and one or more patent or application numbers for the patent(s) or application(s) being disclaimed in the terminal disclaimer were in error, the patent owner may file a paper explaining the error(s) and requesting that the explanation be included in the file history and its request acknowledged. A patent owner may file additional terminal disclaimer(s) disclaiming the correct patent(s) or application(s) accompanied by the fee for such disclaimer(s) for processing by the Office. See subsection IV above. Similarly, if a terminal disclaimer has an error in the naming of the patent owner(s) or applicant, the patent owner may file a paper explaining the error(s) and requesting that the explanation be included in the file history. The patent owner can also request acknowledgement of the paper. A patent owner may also file additional terminal disclaimer(s) naming the correct owner(s) or applicant(s), accompanied by the fee for such disclaimer(s), for processing by the Office.

■■■■■■■■■■■■■■■■■■■■■■■■■■■■■■■■■■