PTO Notice: "Clarification of Criteria for Reissue Error in View of In re Tanaka"
The United States Patent and Trademark Office (the "Office") is providing notification of change in policy based on the recent decision of the U.S. Court of Appeals for the Federal Circuit of In re Tanaka. In a reissue application, the addition of claims that are narrower in scope than the existing claims, without any narrowing of the existing patent claims, may be the basis for correcting an error under 35 U.S.C. Section 251 to support a proper reissue application. A rejection under 35 U.S.C. Section 251 will no longer be made in this scenario, provided that the claims are otherwise compliant with 35 U.S.C. Section 251. This change revises the policy in the current Manual of Patent Examining Procedure (MPEP) that is provided in MPEP Section 1402.