Reissue proceedings cannot be used to withdraw a terminal disclaimer from an issued patent. The lesson here is therefore as clear as it is important – do not file a terminal disclaimer until all other issues have been resolved in the case. Ask that all obviousness-type double patenting rejections be held in abeyance until such time.
Background / Facts: In response to an obviousness-type double patenting rejection based on Yamazaki’s earlier-issued patent, Yamazaki filed a terminal disclaimer in a later filed application. The terminal disclaimer was drastic, cutting down patent term by 15 years, from a projected 2018 expiration to 2003. After further amendment during prosecution, Yamazaki filed a petition under 37 C.F.R. § 1.182 requesting that the PTO withdraw the recorded terminal disclaimer. The PTO failed to act on the petition for two years, during which time the application was allowed, Yamazaki paid the issue fee, and the resultant patent was issued. Following issuance, the PTO dismissed the petition as being untimely, stating that it believed it “could not consider Yamazaki’s petition because a recorded terminal disclaimer may not be nullified after the subject patent has issued.” Yamazaki subsequently filed a reissue application, surrendering the original patent and seeking to rescind the terminal disclaimer through reissuance of the patent. By the time the PTO got around to considering the reissue, the patent had expired. Despite convincing the Examiner during an interview that a reissue was permissible in this instance, the PTO issued a further rejection (two years after the interview) reversing course. In a subsequent appeal, a special seven panel board held (another two years later) that the PTO could not reissue the patent to remove the terminal disclaimer under 35 U.S.C. § 251 because that statute (1) prohibits reissuing an expired patent, and (2) precludes expanding a reissued patent’s term beyond that set when the original patent issued.
Issue(s): Whether § 251 permits the use of reissue proceedings to withdraw a terminal disclaimer that was in effect upon issuance of the original patent.
Holding(s): No. 35 U.S.C. § 251 authorizes the PTO to reissue a patent only “for the unexpired part of the term of the original patent.” Once a patent has issued, a recorded terminal disclaimer becomes part of the original patent and defines its term, regardless of any further term that might have been otherwise available in the absence of the disclaimer. This is merely a matter of statutory interpretation.