• Summary of In re Shunpei Yamazaki, 2012-1086
  • February 21, 2013
  • Law Firm: Sughrue Mion PLLC - Washington Office
  • Federal Circuit, December 6th, 2012, 2012-1086

    In this case, the Court must decide whether a Reissue application can be used to remove a terminal disclaimer.

    Prior to issuance of U.S. Patent No. 6,180,991 (“the ‘991 patent”), Yamazaki filed a petition to withdraw a previously-filed Terminal Disclaimer. However, the Office did not act on the petition before issuing the ‘991 patent, thus keeping the Disclaimer in force. Subsequently, Yamazaki filed a Reissue application that sought only to rescind the Terminal Disclaimer. On appeal, the Board of Patent Appeals and Interferences ruled that the USPTO could not reissue a patent to remove a terminal disclaimer.

    The Federal Circuit agrees with the Board, and holds that expanding a patent term by eliminating a terminal disclaimer during Reissue proceedings would contradict the explicit provisions of 35 U.S.C. §251, which prohibits reissuing an original patent for beyond the unexpired part of its term, and 35 U.S.C. §253, which specifies that a terminal disclaimer is considered as part of the original patent.