Although the court specifically noted that it “need not address broader questions about the intersection of reissue standards and terminal disclaimers,” at least in cases as here where an applicant knowingly and intentionally files a terminal disclaimer for patents that are not commonly owned, this deficiency is not an “error” correctible by reissue under 35 U.S.C. § 251.
Background / Facts: This appeal concerns a request for reissue under 35 U.S.C. § 251. During the patent’s prosecution, the applicants recorded a terminal disclaimer in response to rejections for obviousness-type double patenting. In accordance with common practice and PTO requirements, the terminal disclaimer declares that the patent “shall be enforceable only for and during such period” as it is commonly owned with the patent that underlay the double-patenting rejections. In their reissue application, however, the applicants sought to modify the recorded terminal disclaimer to delete the common-ownership provision because, as it turns out, the two patents are not and never have been commonly owned.
Issue(s): Whether the voluntary and intentional filing of a terminal disclaimer to overcome a non-statutory obviousness-type double patenting rejection during prosecution of the original patent is an “error” correctible by reissue under 35 U.S.C. § 251.
Holding(s): No. “From all that appears, the applicants—knowing that the patents were not commonly owned—intentionally surrendered a possible right (the ability to obtain all or some of the [] patent claims in a form enforceable independently of the [other] patent) in exchange for a benefit (overcoming an obviousness-type double-patenting rejection of several of the proposed claims). … On the record of this case, applicants are ultimately seeking simply to revise a choice they made, not to remedy the result of a mistaken belief. Theirs is not an error remediable under the reissue statute.”