Reissue cannot be used to revert an issued continuation-in-part application back to true divisional status. Here, for example, a reissue application filed to revert a continuation-in-part back to a divisional application and thereby invoke safe harbor protection against obviousness-type double patenting with respect to the parent was found to be ineffective in the interest of fairness to the public, despite changes to the priority statement and removal of any new subject matter. “[The patentee] cannot now identify the [original continuation-in-part] application as a divisional of the [parent] application (for purposes of section 121) and retroactively relinquish the new matter in the [original continuation-in-part] application, after having enjoyed years of patent protection for it.” It may therefore be best to ensure that continuity relationships such as divisional status, which may be helpful in warding off obviousness-type double patenting, are properly established prior to issuance.
Background / Facts: The patent being asserted here is a reissue of a continuation-in-part application originally filed in response to a restriction requirement in the parent. Rather than file a divisional application directed to the non-elected claims, the continuation-in-part was filed to at the same time add additional subject matter. The claims in the original continuation-in-part patent prior to reissue covered both the non-elected claims of the parent application and the additional subject matter. Following invalidation of the relevant claims in the original continuation-in-part patent for obviousness-type double patenting over the parent, the reissue patent was obtained to revert the application to a divisional with the additional subject matter being removed.
Issue(s): Whether the safe harbor provision of 35 U.S.C. § 121 applies to the reissue patent and protects it from invalidation based on the parent.
Holding(s): No. “The [original continuation-in-part] application cannot be a divisional of the [parent] application, despite being designated as such in the reissue patent, because it contains new matter that was not present in the [parent] application. [] Simply deleting that new matter from the reissue patent does not retroactively alter the nature of the [original continuation-in-part] application. … [The patentee] cannot now identify the [original continuation-in-part] application as a divisional of the [parent] application (for purposes of section 121) and retroactively relinquish the new matter in the [original continuation-in-part] application, after having enjoyed years of patent protection for it. [] Fairness to the public does not permit [the patentee] to convert the [original continuation-in-part] application into a division of the original [parent] application, and thereby take advantage of the safe harbor provision, simply by designating it as a divisional application years after the fact.”