Bad Apple!
BPAI Rejects Apple Patent Reissue on Equitable Principles
CAFC to Decide Prosecution Laches in Patent Reissue
Earlier this year we discussed the Ex Parte Tanaka decision of the Board of Patent Appeals & Interferences (BPAI) with respect to “bullet claims” in patent reissue, now before the CAFC. On June 24, 2010, a second Board decision relating to patent reissue was appealed to the Federal Circuit (Ex Parte Staats).
Although presented in the context of patent reissue, the point of contention in Staats is actually one of prosecution laches and the application of equitable principles to statutory interpretation. In Staats, the Board upheld a rejection of a broadening reissue application as defective under 35 U.S.C. 251 for failing to include the appropriate broadening oath within two years of the original patent issuance. The Board reasoned that although a parent reissue had filed an appropriate broadening oath and identified at least one error, the continuation reissue was not entitled to rely on that oath, despite the continuity between these reissue applications. Read the rest of this entry »
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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 






