Recapture Doctrine

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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.
Continue Reading Broadening Reissue Patents Have Limits

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. 
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Continue Reading CAFC Emphasizes Limitation on Patent Reissue Claim Scope

In re Youman Faults BPAI Recapture Analysis

Back in 2010, the BPAI rejected certain claims in Ex parte Youman as attempting to recapture previously surrendered subject matter via a patent reissue application. This case was noteworthy for several reasons, not the least of which was its 10+ year pendency before reaching a Board decision. A link to the earlier BPAI decision is found (here).

As a reminder, Youman sought to broaden certain means-plus-function elements of his issued patent, and modify language relating to the selection of displayed characters of an electronic program guide via a television remote control.

The originally issued claims recited a “selection means…cycling forward and backward” through displayed characters. This feature was added to distinguish over the art of record during the prosecution of the underlying patent application. In the patent reissue application (broadening), this language was broadened to using a wireless remote control for “changing from a first to a second character.” This change was rejected by the BPAI as an attempt to recapture previously surrendered subject matter.

In rejecting the claim as recapturing previously surrendered subject matter, the BPAI relied upon some of the same MPEP language (“overlooked aspects”) later criticized by the CAFC in In re Mostafazadeh. In its most recent consideration of the recapture doctrine, the CAFC focused on the claim language that must be analyzed in the third prong of the recapture test. …

Continue Reading CAFC Again Recalibrates Recapture Doctrine

mistakesLast Friday, In re Mostafazadeh was argued before the CAFC (argument here). The case explored the boundaries of the patent reissue recapture rule. At dispute in the appeal was whether or not the third step of the rule, as outlined in MPEP 1412.02, is tied to the “critical limitation” (i.e., originally surrendered subject matter) or not. {10:30 min. mark}

The three step analysis of In re Clement is as follows:

(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; 

(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. (emphasis added)

In considering the case, the CAFC found both the MPEP discussion of step (3) and BPAI decision on this point to be confusing. {14.50 min mark}
Continue Reading Recapture Doctrine Before The CAFC

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

Does Recapture Include an Intermediate Claim Scope?

In a nutshell, the recapture doctrine prevents Patentees from broadening claims via patent reissue to “re-capture” subject matter intentionally surrendered during original prosecution. The recapture doctrine exists because a deliberate surrender of subject matter is not an “error” that is correctable by patent reissue. MPEP § 1412.02 spells out the 3-part test to identify when subject matter claimed in reissue is subject to recapture.

In 2003, the BPAI issued Ex Parte Eggert, which indicated that an intermediate claim scope presented in reissue (i.e., somewhere between what was surrendered and what was ultimately claimed) would not constitute recapture. Thus for example, if the prior art showed a hard-wired communication and the claim that issued was amended during original prosecution to recite an infrared communication, the intermediate scope sought via a broadening patent reissue might be “wireless communication.”

Back in April of this year, we questioned the continued viability of Ex Parte Eggert in view of the CAFC’s decision in North American Container. While the USPTO had publicly taken the position that Eggert would no longer be followed, some wondered whether that decision was actually consistent with the holding of North American Container. Yesterday, a decision issued, amplifying the USPTO’s reading of North American Container.
Continue Reading BPAI Clarifies Patent Reissue Recapture Doctrine

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

mulligan1ass=”alignleft size-full wp-image-2028″ title=”mulligan1″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/04/mulligan1.png” alt=”mulligan1″ width=”225″ height=”225″ />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 In re Clement[1] was decided in 1997.  As set out by the MPEP in § 1412.02, the 3-step test requires an examiner to make the following determinations:

(1) whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.  {Emphasis added.}

You may recall the 2003 Board of Patent Appeals and Interferences (“Board”) precedential decision
Continue Reading Treatment of the Recapture Doctrine at the BPAI post North American Container

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…