Recapture, Orita Doctrine & Same Invention Limit Scope

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 — not even when broadening. 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 Patent Owners from obtaining by reissue, restricted claims that were never pursued.

This week, the Federal Circuit revisited a further limit on broadening patent reissues it last addressed in 2014.

Back in 2014, the Court considered the “original patent” requirement of the reissue statute in Antares Pharma, Inc. v. Medac Pharma Inc., (Fed. Cir. 2014), explaining that “suggestions or “indications” of alternative inventions are not sufficient to satisfy the original patent requirement of § 251.

The Court revisited the original patent requirement this week in Forum US, Inc. v. Flow Valve, LLC (here).  As in its 2014 Antares decision, the Court explained:

[F]or broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; it must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original. Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.

(emphasis in original, internal quotations omitted)

Thus, when filing a broadening reissue, even aside from avoiding the recapture of disclaimed subject matter, it is not a do-over.  As the Court stated:

It is well settled that for broadening reissue claims, it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.

(internal citations omitted)

It may be that patent reissue becomes more critical going forward should the recalibration of 101 end up being a prospective change. That is, Patent Owners may find reissue post-legislative adjustment to be a path to inoculate claims from the previous (i.e., current) 101 regime.