Recent Changes to Patent Reissue Practice

As discussed here at length, there have been two recent decisions of the CAFC that will impact patent reissue practice before the USPTO, In re Tanaka and In re Mostafazadeh. In Tanaka, the CAFC held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. In Mostafazadeh, the CAFC, while siding with the USPTO on the facts, corrected the USPTO’s position on the recapture rule.  The CAFC explained that a claim may be broadened with respect to previously surrendered subject matter (i.e., recapture) if the claim is also materially narrowed with respect to the surrendered subject matter. (previous post here).

Another important question relating to patent reissue practice remains pending at t he CAFC(In re Staats)

On June 2, 2011, my partner Steve Kunin will speak on these issues and more in a Webinar entitled “Recent Federal Circuit Decisions on Reissue”  To register for this 1 hour program click here.