BPAI Once Again Shoots Down Broadening Reissue

Patent reissue has been a recurring topic here as of late. More recently, the breadth of the recapture doctrine has been discussed. Earlier this year, I discussed ex parte Staats relative to a pending CAFC appeal, and the pending CAFC appeal of ex parte Tanaka.

While the main issue in ex parte Tanaka is whether or not the addition of narrower dependent claims via patent reissue can be said to correct an “error” pursuant to the reissue statute, Tanaka, to a lesser extent, also illustrates the danger of a generically worded reissue declaration. As the BPAI decision of last Friday once again emphasizes, (ex parte Matthew Howard Fronk et al.,) a proper broadening declaration must not only identify at least one error in the issued patent (made without deceptive intent), but must also unequivocally indicate an intention to broaden. More importantly, this unequivocal intent to broaden must be communicated to the USPTO by declaration only, within two years of original patent issuance.
Continue Reading Broadening Patent Reissue Requires Unequivocal Declaration Statement

Can Inconsistent Statements Made Outside of the USPTO Surrender Claim Scope for Recapture Purposes?

The recapture doctrine of patent reissue is often a subject of debate before the BPAI. As we discussed last week, the question of the propriety of an intermediate claims scope vis-a-vis recapture was recently decided by the BPAI, and briefing before the CAFC is near complete on the same issue (In re Mostafazadeh). A day after the BPAI decision of last week, the Federal District Court of Ohio considered recapture in the context of statements made outside of the USPTO in Bendix Commercial Vehicle Systems LLC, et al v. Haldex Brake Products Corp., 1-09-cv-00176 (N.D.O.H)

As a reminder, the recapture doctrine exists because a deliberate surrender of subject matter is not an “error” that is correctable by patent reissue. The recapture doctrine prevents Patent Holders from broadening claim scope in patent reissue that was deliberately surrendered during original prosecution. In Bendix, the defendant (Haldex) argued that the asserted broadened reissue patent, RE 38,874, (relating to automotive braking equipment) was invalid under 35 USC § 251 due to statements made during an earlier litigation and in a foreign patent office.
Continue Reading Recapture of Subject Matter Through Patent Reissue

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.
Continue Reading Bad Apple! BPAI Rejects Apple Patent Reissue on Equitable Principles

mistakesAs 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 was made without deceptive intent that renders an issued patent wholly, or partly, inoperative.

Patent owners seeking reissue within two years of patent issuance are permitted the additional opportunity to broaden the issued claims, subject to intervening rights. Reissue applications filed outside this two year window may not broaden issued claim scope.

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution.  Important limits are placed on patent reissue with respect to
Continue Reading Patent Reissue Doesn’t Fix Errors in Portfolio Management

office-sign-brain–Procedural Alchemy–

The general policy of the USPTO is that the examination of a reissue application and an inter partes reexamination proceeding will not be conducted separately at the same time as to a particular patent. MPEP § 2686.03.  The reason for this policy is to permit timely resolution of both the reissue and the inter partes reexamination, to the extent possible, and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two files on behalf of the patent owner.  If both a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, a decision will normally be made to merge the reissue application examination and the inter partes reexamination proceeding or to stay one of the two.[1]

Where a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.985.  See also MPEP § 1418.  In addition, the patent owner should file in the inter partes reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.985 to notify the Office in the inter partes reexamination proceeding of the existence of the two concurrent proceedings.

The decision on whether or not to merge the reissue application examination and the reexamination proceeding or which (if any) is to be stayed (suspended), will generally
Continue Reading Merger Considerations in Patent Reissue and Inter Partes Patent Reexamination Proceedings

If a patent owner has disclosed, but not claimed some embodiments of the invention, resort to the doctrine of equivalence to protect such unclaimed embodiments may be lost through the doctrine of prosecution history estoppel. Let’s assume, for sake of argument, that the patent application that led to the patent contained no claims to the