Last week, an important question relating to broadening patent reissue practice was argued before the CAFC. (In re Staats).
At issue in Staats is a third reissue patent application of Apple Computer Patent 5,940,600. The third reissue patent application was a continuation that claimed priority back to the original reissue application. (the original reissue application being properly filed within two years of issuance of the ‘600 Patent). During prosecution of the third continuation the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the two year window for broadening reissue. The examiner reasoned that the error in the original reissue filing was allegedly unrelated to the error presented for correction in the third filing.
An expanded panel of the BPAI affirmed the rejection (Ex Parte Staats) characterizing the issue in dispute as:
This is a case of first impression. Resolution of the case hinges on one fundamental question: Can a continuing reissue application broaden patented claims beyond the statutory two-year period in a manner unrelated to the broadening aspect that was identified within the two-year period? Put another way, is it enough under the law to merely present an intent to broaden that is limited to a particular aspect (e.g., a particular embodiment of the invention) within the two-year period, yet broaden in unforeseeable ways (e.g., pertaining to other embodiments) outside the two-year period?
In last year’s BPAI decision, the Board analyzed the statute based upon their understanding of the equitable principles underlying the two-year limitation provided by the statute. In doing so, the BPAI relied heavily on the aspect of foreseeabilityemphasized in case law addressing prosecution laches. In affirming the rejection, the BPAI surmised:
Since this broadening was completely unforeseeable by the public within the two-year statutory period, a circumstance that is undisputed, it runs counter to the public notice function underpinning § 251 and is therefore improper.
With respect to forseeability, the CAFC appeared to recognize the impracticability of the USPTO’s “forseeability” test during last week’s oral argument. The bulk of the discussion during oral argument (audio here) related to whether or not earlier CCPA precedent controlled. In this regard, In re Doll 419 F.2d 925, 928 (CCPA 1970) was discussed extensively, as well as some early Supreme Court cases pertaining to patent reissue. The Court did not appear to accept the argument that the earlier Supreme Court cases supported the argument of the USPTO ( 21:40) and questioned whether or not Doll was truly distinguishable from the present facts.
The solicitor pointed out that the patent reissue statute has a limited two year window for broadening as a matter of public policy. The solicitor reasoned that the 2 year limit serves to enhance public’s reliance on issued claim scope and protect the public. The Court did not appear persuaded by public policy considerations, noting the seemingly “one-off” nature of the current fact pattern. Nevertheless, the Solicitor warned that a reversal of the agency would encourage filers to seek creative errors to broaden claims until patent term was exhausted.
Of course, most practitioners avoid broadening patent reissue practice altogether by simply maintaining a pending, regular continuation applications. The notion that anyone would pursue broadening patent reissue as a matter of course ignores the significant pendency problems, as well as thorny recapture and intervening rights issues.
Assuming this case were affirmed, is there now grounds to argue for “claim scope laches” vis-a-vis regular patent application continuation practice?