PAB Clarifies the Requirement of Intention to Protect in a Reissue Application

PAB Clarifies the Requirement of Intention to Protect in a Reissue Application

Re. Patent Application No. 2241368, CD

The patentee submitted an application for reissue of Patent No.
2,241,368 pertaining to improvements in television receivers which provide
interactive services to users. Reissue was sought on the basis that the patent
was defective or inoperative for failing to include additional claims directed
to an embodiment not covered in the patent as originally issued.

The Board recommended, and the Commissioner agreed, that no new patent
be issued based on the application for reissue.

The main issue before the Board was whether or not the requirements of
section 47 of the Patent Act have been met by the present reissue
application, and in particular whether or not the patentee intended to protect
proposed claims 49-55 in the patent.

Intention to Protect the Omitted Subject Matter

The Board found there was no objective evidence that proposed claims
49-55 were intended to be included in the original Canadian patent.

The Applicant argued that he had the right to claim, as new, the subject
matter of claims 49-55 as set out in the claims of attached application. The
Applicant claimed the error arose from inadvertence, accident or mistake,
without any fraudulent or deceptive intention, in the following manner: new
claims 49-55 relate to subject matter contained in the equivalent U.S. Patent
No. 7,389,253 which issued on June 17, 2008. Therefore, the Applicant is
confident that if an appropriate amendment had been filed in the Canadian
Patent Office during the prosecution of Canadian Patent No. 2,241,368, claims
of the scope of claims 49-55 would have issued on such a divisional

Equivalent Foreign Patents

The Board agreed that a patentee cannot obtain protection for claims
with the same scope as claims deliberately cancelled during prosecution before
an examiner.

Although claims issued in equivalent foreign patents may help to
establish an intent to claim accordingly in Canada, they can only do so if they
were submitted to the foreign office before the Canadian patent issued. The
reliance on similar claims in foreign prosecution as objective evidence of
intent is not applicable when said claims were submitted to the foreign office
long after the Canadian patent issued.

Failure to File a Divisional

A failure to file a divisional is not the sort of error that is corrected
by reissue.

While there may have been a general intention to retain and protect the
subject matter of the cancelled claims in a divisional application, this fact
does not indicate an intent to protect this subject matter within the present
patent. A failure to file a divisional does not indicate a failure to obtain
the desired scope of the original patent application which is the subject of
the present application for reissue.

Section 47 of the Patent Act

The Board found that the patentee has not provided a compelling argument
that s. 47(3) provides a remedy in this case to submit a reissue application
for the subject matter of an unfiled divisional application.

A reasonable interpretation of the meaning of s. 47(3) is that should a
patentee, when filing a reissue, consider that the reissue claims pertain to
more than one invention and thus possibly contravene s. 36 of the Patent Act,
the patentee may instead file separate reissue applications for distinct parts
of the invention at that time.

S. 47(3) does not provide a remedy to allow for a
reissue to include unfiled divisional claims absent the requirements of s.
47(1) being met, nor does the Commissioner have any discretion to circumvent
the 4 year post-issuance deadline to file all reissue applications.