Tribell

From Patentbarquestions

16. Tribell files a patent application for her aroma therapy kit on November 29, 1999, which

issues as a patent on August 7, 2001. She tries to market her kit but all of her prospects are

concerned that her patent claims are not sufficiently broad. On September 5, 2001, Tribell asks a

registered practitioner for advice on what to do to improve her ability to market her aroma

therapy kit. At the consultation the practitioner learns that in the original patent application,

Tribell had a number of claims which were subjected to a restriction requirement, but were

nonelected and withdrawn from further consideration. The practitioner also determines that the

claims in the patent obtained by Tribell were narrower than the broader invention disclosed in

the specification, and the cited references may not preclude patentability of the broader

invention. Which of the following is the best course of action to pursue in accordance with the

patent laws, rules and procedures as related in the MPEP?

(A) Tribell should file a reissue application under 35 USC 251 within two years of the

issuance of the patent, broadening the scope of the claims of the issued patent.

(B) Tribell should file a reissue application under 35 USC 251any time during the

period of enforceability of the patent to broaden the scope of the claims of the

issued patent, and then file a divisional reissue application of the first reissue

application on the nonelected claims that were subjected to a restriction

requirement in the nonprovisional application which issued as a patent.

(C) Tribell should simultaneously file two separate reissue applications under

35 USC 251, one including an amendment of broadening the claims in the

original patent, and the other including the nonelected claims that were subjected

to a restriction requirement in the nonprovisional application which issued as a

patent.

(D) Tribell should immediately file a divisional application under 37 CFR 1.53(b)

including the nonelected claims that were subjected to a restriction requirement in

the original application.

(E) Tribell should immediately file a reissue application under 35 USC 251, including

the nonelected claims that were subjected to a restriction requirement in the

original application.

16. ANSWER: (A) is the most correct answer. 35 U.S.C. § 251, MPEP § 1402 (fifth paragraph).

MPEP § 1402 states that one of the “most common bases for filing a reissue application [is]

(A) the claims are too narrow or too broad.” The claims may be broadened in a reissue

application filed by the inventor within two years from the patent issue date. (B) is

incorrect since the 4th paragraph of 35 U.S.C. § 251 states that no reissued patent shall be granted

enlarging the scope of the clams of the original patent unless applied for within two years from

the grant of the original patent. (C) and (E) are incorrect. MPEP § 1402, sixteenth paragraph.

An applicant’s failure to timely file a divisional application while the original application is still

pending is not considered to be an error correctable via reissue. See In re Orita, 550 F.2d 1277,

1280, 193 USPQ 145, 148 (CCPA 1977). (D) is incorrect. MPEP § 201.06. In order to claim

benefit under 35 U.S.C. § 120 to a parent application, a divisional application must be filed while

the parent patent application is still pending.