Limitations of Patent Reissue

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same “public reliance” policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents applicants from obtaining by reissue, claims that because of a requirement for restriction in which they had acquiesced, they could not claim in their patent. Last week, the CAFC explained yet another limitation on patent reissue practice, the “original patent” limitation of patent reissue. 

Antares Pharma, Inc. v. Medac Pharma Inc., (Fed. Cir. 2014), emphasized the original patent requirement of 35 U.S.C. § 251, namely:

Whenever any patent is, through error . . . ,deemed wholly or partly inoperative or invalid. . . by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall . . . reissue the patent for the invention disclosed in the original patent . . . .

35 U.S.C. § 251(a) (emphasis added).

In Antares, the defendant argued that the patent was impermissibly broadened by patent reissue as it had recaptured previously surrendered subject matter. In an attempt to side-step recapture, the patentee argued that the broadened subject matter was an overlooked aspect of the invention, and in fact, was an altogether different invention. This position was ultimately fatal under the “original patent” analysis, as the Court explained:
The original claims are significantly different in scope and coverage than the asserted claims. Claims 1–22 are focused on jet injectors, and every one of those claims contains the “jet injection” limitation. The asserted claims are focused on particular safety features and do not contain the jet injection limitation. Indeed, appellants themselves argue that the asserted reissue claims cover a different invention than that originally claimed * * * * The original specification here does not adequately disclose the later-claimed safety features to meet the [original patent standard]. 

Although safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification. Rather, the safety features were serially mentioned as part of the broader conversation: how to build the patented jet injection device *****

These “suggest[ions]” or “indicat[ions]” of alternative inventions are not sufficient to satisfy the original patent requirement of § 251. * * * Nowhere does the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention. This does not meet the original patent requirement under § 251.

(internal citations omitted)

With the emergence of PTAB patentability trials as a serious road block to patent assertion, patent reissue and patent reexamination are increasingly utilized to refine claims prior to assertion. Where broadening patent reissue is pursued, recapture concerns taken together with the original patent requirement can create quite the Catch-22.