[Editor Note: This MPEP section is only applicable to reissue applications filed before September 16, 2012. For reissue applications filed on or after September 16, 2012, the requirement to state that the errors arose “without any deceptive intention” was eliminated consistent with the America Invents Act (AIA) amendments to 35 U.S.C. 251.]
Questions of “fraud,” “inequitable conduct,” or violation of “duty of disclosure” or “candor and good faith” can arise in reissue applications.
“ERROR WITHOUT ANY DECEPTIVE INTENTION”
For reissue applications filed prior to September 16, 2012, both pre-AIA 35 U.S.C. 251 and pre-AIA 37 CFR 1.175 require that the reissue oath or declaration must state that the error arose “without any deceptive intention.” Further, the examiner should determine whether applicant has averred in the reissue oath or declaration, as required by pre-AIA 37 CFR 1.175(a)(2), (b)(1), and (b)(2), that all “errors” arose “without any deceptive intention.” However, the examiner should not normally comment or question as to whether the averred statement as to lack of deceptive intention appears correct or true. See MPEP § 1414.
In re Heany, 1911 C.D. 138, 180 (1911), unequivocally states:
Where such a condition [fraudulent or deceptive intention] is shown to exist the right to reissue the patent is forfeited.
Similarly, the court in In re Clark, 522 F.2d 623, 627, 187 USPQ 209, 213 (CCPA 1975) indicated:
Reissue is not available to rescue a patentee who had presented claims limited to avoid particular prior art and then had failed to disclose that prior art . . . after that failure to disclose has resulted in invalidating of the claims.
It is clear that “fraud” cannot be purged through the reissue process. See conclusions of Law 89 and 91 in Intermountain Research and Eng’g Co. v. Hercules Inc., 171 USPQ 577, 631-32 (C.D. Cal. 1971).
Clearly, where several patents or applications stem from an original application which contained fraudulent claims ultimately allowed, the doctrine of unclean hands bars allowance or enforcement of any of the claims of any of the applications or patents. See Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 245, 19 USPQ 228, 230 (1933); East Chicago Machine Tool Corp. v. Stone Container Corp., 181 USPQ 744, 748 (N.D. Ill.), modified, 185 USPQ 210 (N.D. Ill. 1974). See also Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295 (D.Del. 1972) and Strong v. General Electric Co., 305 F. Supp. 1084, 162 USPQ 141 (N.D. Ga. 1969), aff’d, 434 F.2d 1042, 168 USPQ 8 (5th Cir. 1970), cert. denied, 403 U.S. 906 (1971) where fraud or inequitable conduct affecting only certain claims or only one of related patents was held to affect the other claims or patent. Clearly, “fraud” practiced or attempted in an application which issues as a patent is “fraud” practiced or attempted in connection with any subsequent application to reissue that patent. The reissue application and the patent are inseparable as far as questions of “fraud,” “inequitable conduct,” or “violation of the duty of disclosure” are concerned. See In re Heany, supra; and Norton v. Curtiss, 433 F.2d 779, 792, 167 USPQ 532, 543 (CCPA 1970), wherein the court stated:
We take this to indicate that any conduct which will prevent the enforcement of a patent after the patent issues should, if discovered earlier, prevent the issuance of the patent.
Clearly, if a reissue patent would not be enforceable after reissue because of “fraud,” “inequitable conduct” or “violation of the duty of disclosure” during the prosecution of the patent sought to be reissued, the reissue patent application should not be allowed. Where no investigation is needed to establish such circumstances, an appropriate remedy would be to reject the claims in the reissue application in accordance with 35 U.S.C. 251.
See MPEP § 1448 for information pertaining to the examination of a resissue application when there is an admission or judicial determination of fraud, inequitable conduct or violation of the duty of disclosure.