English
Treatment of the Recapture Doctrine at the BPAI post North American Container
All hackers err… golfers know there are both appropriate and inappropriate times to take a mulligan. When is it OK to take a mulligan via reissue? The 3-step test to determine whether the recapture rule prohibits a mulligan in reissue has been well-established since In re Clement[1] was decided in 1997. As set out by the MPEP in § 1412.02, the 3-step test requires an examiner to make the following determinations:
(1) whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. {Emphasis added.}
You may recall the 2003 Board of Patent Appeals and Interferences (“Board”) precedential decision Read the rest of this entry »
