Patents Post Grant Blog

Continuation Practice in Broadening Patent Reissue Applications Examined

Yesterday, the CAFC decided an important question pertaining to broadening patent patent reissue practice. (In re Staats, decision here). The issue before the Court was whether a broadening patent reissue application of Apple Computer Patent 5,940,600 was filed within the proscribed two year window.

During prosecution of the subject patent reissue application (a third, broadening continuation filing) the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the proscribed two year window. The Office reasoned that the error in the original reissue filing (parent) was allegedly unrelated to the error presented for correction in the third filing…presented for the first time 7 years later. In essence, the Office argued that it is not enough to merely present a “place holder” intent to broaden within the proscribed two years only to file a continuation years later that attempts to broaden in “unforeseeable” ways.

The CAFC heard arguments on the BPAI decision back in September of 2011 and strongly hinted that earlier CCPA precedent would control the case. Not surprisingly, the Court reversed the USPTO based on previous precedent Read the rest of this entry »