1412.01 Reissue Claims Must Be for Same General Invention [R-07.2022]

I. ORIGINAL PATENT REQUIREMENT

The reissue claims must be for the same invention as that disclosed as being the invention in the original patent, as required by 35 U.S.C. 251. The entire disclosure, not just the claim(s), is considered in determining what the patentee objectively intended as the invention. The determination of the original patent requirement is “an essentially factual inquiry confined to the objective intent manifested by the original patent.” In re Amos, 953 F.2d 613, 618, 21 USPQ2d 1271, 1274 (Fed. Cir. 1991) (quoting In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 (CCPA 1975)) (emphasis added); See also In re Mead, 581 F.2d 251, 256, 198 USPQ 412, 417 (CCPA 1978) (“Thus, in Rowand and similar cases, ‘intent to claim’ has little to do with ‘intent’ per se, but rather is analogous to the requirement of § 112, first paragraph, that the specification contain ‘a written description of the invention, and of the manner and process of making and using it.’”).

The “original patent” requirement of 35 U.S.C. 251 must be understood in light of In re Amos, supra, where the Court of Appeals for the Federal Circuit stated:

We conclude that, under both Mead and Rowand, a claim submitted in reissue may be rejected under the “original patent” clause if the original specification demonstrates, to one skilled in the art, an absence of disclosure sufficient to indicate that a patentee could have claimed the subject matter. Merely finding that the subject matter was “not originally claimed, not an object of the original patent, and not depicted in the drawing,” does not answer the essential inquiry under the “original patent” clause of § 251, which is whether one skilled in the art, reading the specification, would identify the subject matter of the new claims as invented and disclosed by the patentees. In short, the absence of an “intent,” even if objectively evident from the earlier claims, the drawings, or the original objects of the invention is simply not enough to establish that the new claims are not drawn to the invention disclosed in the original patent.

953 F.2d at 618-19, 21 USPQ2d at 1275.

Similarly, the disclosure requirement in Amos must be understood in light of Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares Pharma, Inc., the court found "[n]owhere 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." Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. Specifically, the court stated “[a]lthough 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.” Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. In other words, the court found that the patent only disclosed one invention, which was a particular class of jet injectors, due to the clearly repetitive use of “jet injector” in the title, the abstract, the summary of the invention, and the entirety of the specification of the patent. As a result, the claims in the reissue patent to the safety features on a generic injector (e.g., a non-jet injector) were held to violate the original patent requirement of 35 U.S.C. 251.

To satisfy the original patent requirement where a new invention is sought by reissue, “… the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. Accordingly, claims drawn to an invention comprising a newly claimed combination of features that were only disclosed in the original patent as suggested alternatives (and not as a single combination) or only as part of the original invention and not as an invention separate from the original invention would not satisfy the original patent requirement. See also Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019) (“nowhere do the written description or drawings disclose that arbors are an optional feature of the invention. Even if a person of ordinary skill in the art would understand that the newly claimed, arbor-less invention would be possible, that is insufficient to comply with the standard set forth in Industrial Chemicals [315 U.S. 668 (1942)] and Antares.”). “The ‘original patent’ standard and the written description requirement are not the same. Where the written description requirement is based on what the skilled artisan would have understood was within the possession of the inventor, recent Federal Circuit case law indicates that the original patent requirement under § 251 requires something more.” See Ex parte Sandwick, Appeal No. 2018-008369, op. at 22 (PTAB July 23, 2019) (Rejection under 35 U.S.C. 251 was affirmed because the patent did not describe any fabrication method other than casting. While one of ordinary skill in the art would have understood that other fabrication methods, such as injection molding or 3D printing, were possible or conventional, the reissue claims that did not include casting did not comply with the original patent requirement.)

Examiners should review the reissue application to determine whether the original patent requirement is satisfied, by considering if:

• (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
• (B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
• (C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.

Examiners should discuss any possible rejection under 35 U.S.C. 251 based on failure to meet the original patent requirement with their TQAS or SPRS.

The presence of the disclosure in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be the invention.

The original patent specification would indicate an intent not to claim the subject matter of the claims presented in the reissue application in a situation analogous to the following:

One should understand, however, that the mere failure to claim a disclosed embodiment in the original patent (absent an explicit statement in the original patent specification of unsuitability of the embodiment) would not be grounds for prohibiting a claim to that embodiment in the reissue.

II. FAILURE TO TIMELY FILE A CONTINUING APPLICATION PRIOR TO ISSUANCE OF ORIGINAL PATENT

Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. A reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). In this situation, the reissue claims should be rejected under 35 U.S.C. 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent. In addition, amended reissue claims that clearly fall within the scope of the original non-elected claims should also be rejected under 35 U.S.C. 251. See Ex parte Sandwick, Appeal No. 2018-008369, op. at 25 (PTAB July 23, 2019) (“narrower reissue claims fall clearly within the scope of the broader original non-elected claims, and thus within the scope of the non-elected and restricted inventions that should have been properly pursued in a divisional application, whether claimed more broadly or more narrowly.”). Compare with In re Doyle, 293 F.3d 1355, 63 USPQ2d 1161 (Fed. Cir. 2002) where the court permitted the patentee to file a reissue application to present a so-called linking claim, a claim broad enough to read on or link the invention elected (and patented) together with the invention not elected. The non-elected invention(s) were inadvertently not filed as a divisional application.

III. OVERLOOKED ASPECTS

Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects. In other words, the reissue claims are drawn to a separate invention or separate species or embodiment that was not covered by a claim (e.g., a generic claim) at any point during the prosecution of the original application. For example, if all the claims were drawn to species A in the original application, reissue claims drawn to species B are considered claims to overlooked aspects, assuming that there was not a generic claim that covered both species A and B in the original application. Stated another way, an added limitation that “was within the scope of at least one original claim” cannot be an overlooked aspect. In re General Electric Co., 789 F. App’x 857, 861, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“Because the original claims encompass the jet assembly subcombination, that subcombination is not an overlooked aspect of the invention.”)

Claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was surrendered during the prosecution of the original application. In the decision of In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012), the Federal Circuit explained:

Whereas the recapture rule applies when surrendered subject matter is being reclaimed, overlooked aspects by definition were never claimed and thus never surrendered. See Mostafazadeh, 643 F.3d at 1360 [98 USPQ2d at 1644]. Rather, as we explained in Mostafazadeh, "overlooked aspects" is a separate inquiry under reissue that is independent of whether or not the recapture rule applies.

679 F.3d at 1347, 102 USPQ2d at 1870.

The overlooked aspects inquiry is only applicable when an examiner determines that the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued) in step 2 of the recapture analysis. See MPEP § 1412.02, subsection II.B. Recapture analysis would not need to be continued for claims drawn to overlooked aspects.

“Overlooked aspects, however, are not merely incidental features of the originally claimed invention. Rather, they are distinct elements which ‘were never claimed and thus never surrendered.’" Ex parte Yeo, Appeal No. 2020-001116, op. at 10-11 (PTAB March 2, 2020) (quoting Youman , 679 F.3d at 1347). In determining whether a reissue claim is drawn to overlooked aspects, the examiner must first determine if the claim meets the original patent requirement of 35 U.S.C. 251. “A reissue claim that does not meet the original patent (‘same invention’) requirement under § 251 cannot be an overlooked aspect of the invention because it is not directed to the disclosed invention of the patent. Therefore, as a first step, to determining whether reissue claim 6 is directed to an ‘overlooked aspect,’ we must determine whether reissue claim 6 meets the original patent (‘same invention’) requirement under § 251.” Yeo at 34. See subsection I above for guidance on the original patent requirement. In Yeo, the board found that reissue claim 6 did not meet the original patent requirement, and therefore, was not drawn to an overlooked aspect. Yeo at 34-41. For reissue claim 9, the board found the claim met the original patent requirement but was not drawn to an overlooked aspect because originally filed claim 1 covered the subject matter of reissue claim 9. Yeo at 41-43.

If the examiner determines that claims are drawn to overlooked aspects, the examiner should state which claims are drawn to overlooked aspects on the record.

Note the following example illustrating the above:

Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 1482-83, 46 USPQ2d 1641, 1649-50 (Fed. Cir. 1998), addressed this concept of overlooked aspects, stating:

[T]his principle [i.e., avoidance of the recapture rule], in appropriate cases, may operate to overcome the recapture rule when the reissue claims are materially narrower in other overlooked aspects of the invention.

142 F.3d at 1482-83, 46 USPQ2d at 1649-50.

See also B.E. Meyers & Co. v. United States, 47 Fed. Cl. 200, 56 USPQ2d 1110 (Fed. Cl. 2000), where the Court of Federal Claims permitted the complete removal of a limitation that was added to obtain the patent, where the replacement limitation provided a separate invention. In Meyers, the patented invention pertained to night vision devices. The original patent application, as filed, contained only claims that included a pulsing infrared Light Emitting Diode (LED). The broadening reissue application sought claims that did not include the pulsing LED. The Meyers court found that the reissued claims were to an independent invention that used a light source funneled through a lens system, which had nothing to do with any type of pulsing circuitry.

Even though claims drawn to overlooked aspects are not subject to recapture, the failure to present such claims may not be a proper error under 35 U.S.C. 251. Specifically, where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. See subsection II above for more information.

1412.02 Recapture of Canceled Subject Matter [R-01.2024]

A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984); In re Wadlinger, 496 F.2d 1200, 181 USPQ 826 (CCPA 1974); In re Richman, 409 F.2d 269, 276, 161 USPQ 359, 363-364 (CCPA 1969); In re Willingham, 282 F.2d 353, 127 USPQ 211 (CCPA 1960). The question as to whether a reissue patent violates the rule against recapture of subject matter surrendered during original prosecution is a question of law. Mostafazadeh, 643 F.3d at 1358, 98 USPQ2d at 1642.

Claims to separate inventions/embodiments/species that were not claimed in the original application prosecution (i.e., “overlooked aspects”) are not a part of a recapture analysis. For this reason, none of the examples below involve amending claims to add overlooked aspects. See MPEP § 1412.01, subsection III, for more information on overlooked aspects.

I. DEFINITIONS

Broadening Claim - A reissue claim is “broadened” where at least one limitation of the patent claims is either completely eliminated or is only presented in a broader way in the reissue claim relative to the broadest patented claim(s); see MPEP § 1412.03 for guidance as to the nature of a "broadening claim."

Canceled Claim – A claim canceled from the original application to obtain the patent for which reissue is being sought. In the context of recapture case law, claims are considered canceled if the claims were deleted and not replaced or were replaced (either through cancellation or amendment) by other claims that are more specific than the canceled claims in at least one aspect in order to overcome a rejection in the prosecution of the original application. In other words, claims replacing canceled claims can be new claims that are narrower than the canceled claims or amended claims that are narrower than the canceled version of the claims.

Original Application - The "original application" includes the prosecution record of the application that issued as the patent for which the reissue application was filed. In addition, the “original application” includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316-18, 94 USPQ2d 1598 (Fed. Cir. 2010). See also In re McDonald, 43 F.4th 1340, 1347, 2022 USPQ2d 745 (Fed. Cir. 2022). For example, surrender may occur because of the prosecution history of related applications.

Original Claim – A claim that was presented in the original application prior to surrender. See In re Youman, 679 F.3d 1335,1346 n.4, 102 USPQ2d 1862,1870 n.4 (Fed. Cir. 2012).

Other or Unrelated Aspects/Limitations – Limitations that are not related to surrendered subject matter or surrender generating limitations.

Overlooked Aspects - Claims to separate inventions/embodiments/species that were never presented in the original application. See MPEP § 1412.01, subsection III, for more information on overlooked aspects.

Patent Claim – A claim in the patent for which reissue is being sought. Some court decisions use the phrase "original patent claim" for patent claim. Patent claims are the claims in effect as of the date of filing of the reissue application. See 37 CFR 1.173(g).

Recapture – A doctrine based upon the error requirement in 35 U.S.C. 251 that prevents a reissue applicant from claiming subject matter surrendered during the prosecution of the original application.

Surrender Generating Limitation (SGL) or Surrendered Subject Matter – An SGL is a “limitation” presented, argued, or stated to make the claims patentable (in the original application) and “generates” the surrender of claimed subject matter. An SGL or surrendered subject matter can be created by presentation of new/amended claims to define the invention over the art or an argument/statement by applicant that a limitation of the claim(s) (including a limitation in an original claim) defines the invention over the art. A patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be created by presentation of new/amended claims or an argument/statement to obviate a rejection based on other grounds. In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022).

II. THREE STEP TEST FOR RECAPTURE:

In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:

We apply the recapture rule as a three-step process:

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

  [NOTE: if the claims are not broader in scope than the original patent claims, there is no recapture; if the claims are broader in scope, then proceed to step (2).]

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

  [NOTE: if the broader aspects of the reissue claims do not relate to surrendered subject matter, there is no recapture; if the broader aspects of the reissue claims do relate to surrendered subject matter, then proceed to step (3).]

• (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.

  [NOTE: if the reissue claims were materially narrowed in aspects related to the surrendered subject matter, there is no recapture; if the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, there is recapture.]

In North American Container, the court cited Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600; Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50; and Clement, 131 F.3d at 1468, 45 USPQ2d at 1164-65 as cases that lead to, and explain the language in, the North American Container recapture test.

A. The First Step - Is There Broadening?

In every reissue application, the examiner must first review each claim for the presence of broadening, as compared with the scope of the claims of the patent to be reissued. A reissue claim is broadened where some limitation of the patent claims is no longer required in the reissue claim; see MPEP § 1412.03 for guidance as to the nature of a "broadening claim." If the reissue claim is not broadened in any respect as compared to the patent claims, the analysis ends; there is no recapture.

B. The Second Step - Does Any Broadening Aspect of the Reissue Claim Relate to Surrendered Subject Matter?

Where a claim in a reissue application is broadened in some respect as compared to the patent claims, the examiner must next determine whether the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued). The "original application" includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir. 2010). Each limitation of the patent claims, which is omitted or broadened in the reissue claim, must be reviewed for this determination. This involves two sub-steps.

1. The Two Sub-Steps:

• (A) One must first determine whether applicant surrendered any subject matter in the prosecution of the original application that became the patent to be reissued.

  If an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable, the omitted limitation relates to subject matter previously surrendered by applicant. The reliance by applicant to define the original patent claims over the art can be by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art. The reliance by applicant can also be created by presentation of new/amended claims or arguments/statements to obviate rejections based on other grounds. See In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022). To determine whether such reliance occurred, the examiner must review the prosecution history of the original application (of the patent to be reissued and any related application(s)) for surrender of claimed subject matter which may result in recapture. The prosecution history includes the rejections and applicant’s arguments made therein.

  With respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome, for example, an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, “[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.” Id.

  If applicant did not surrender any subject matter in the prosecution of the original application, the analysis ends and there is no recapture.

• (B) If applicant did surrender subject matter in the original application prosecution, the examiner must then determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable.

With respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:

[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.

The situation in Mostafazadeh involved substantial recapture of the surrendered subject matter, which was determined under the third step of the recapture analysis. See subsection II.C below for more explanation. The focus in the analysis of the second step must be on the subject matter that was surrendered during the original application prosecution in the context of the then-existing claims (i.e., the original claims).

When an examiner determines that the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued) in step 2 of the recapture analysis, the overlooked aspects inquiry may be applicable. See MPEP § 1412.01, subsection III.

2. Examples of the Second Step Analysis:

• (A) Example (1) - Argument without amendment:

In Hester,supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.

An example of a general "boiler plate" sentence of argument is:

In closing, it is argued that the limitations of claims 1-7 distinguish the claims from the teachings of the prior art, and claims 1-7 are thus patentable.

An argument that merely states that all the limitations of the claims define over the prior art will also not, by itself, be sufficient to establish surrender and recapture. An example is:

Claims 1-5 set forth a power-train apparatus which comprises the combination of A+B+C+D+E. The prior art of record does not disclose or otherwise teach, providing a material-transfer apparatus as defined by the limitations of claim 1, including an A member and a B member, both connected to a C member, with all three being aligned with the D and E members.

This statement is simply a restatement of the entirety of claim 1 as allowed. No measure of surrender could be gleaned from such "boiler-plate" applicant arguments.

In both of the above examples, the argument does not provide an indication of what specific limitations, e.g., specific element or step of the claims, cooperative effect, or other aspect of the claims, are being relied upon for patentability. Thus, applicant has not surrendered anything by the argument.

• (B) Example (2) - Amendment of the claims without argument:

The limitation omitted in the reissue claim(s) was added in the original application claims for the purpose of making the application claims allowable over a rejection or objection made in the application. Even though applicant made no argument on the record that the limitation was added to obviate the rejection, the nature of the addition to the claim can show that the limitation was added in direct reply to the rejection. This too will establish the omitted limitation as relating to subject matter previously surrendered. To illustrate this, note the following example:

The original application claims recite limitations A+B+C, and the Office action rejection combines two references to show A+B+C. In the amendment replying to the Office action, applicant adds limitation D to A+B+C in the claims, but makes no argument as to that addition. The examiner then allows the claims. Even though there is no argument as to the addition of limitation D, it must be presumed that the D limitation was added to obviate the rejection. The subsequent deletion of (omission of) limitation D in the reissue claims would be presumed to be a broadening in an aspect of the reissue claims related to surrendered subject matter. Accordingly, the reissue claims would be barred by the recapture doctrine (absent the addition of a materially narrowing limitation related to the surrendered subject matter). The above result would be the same whether the addition of limitation D in the original application was by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant.

• (C) Example (3) - Who can make the surrendering argument?

Assume that the limitation A omitted in the reissue claims was present in the claims of the original application. The examiner’s reasons for allowance in the original application stated that it was that limitation A which distinguished over a potential combination of references X and Y. Applicant did not present on the record a counter statement or comment as to the examiner’s reasons for allowance, and permitted the claims to issue.

Ex parte Yamaguchi, 61 USPQ2d 1043 (Bd. Pat. App. & Inter. 2001)(precedential) held that a surrender of claimed subject matter cannot be based solely upon an applicant’s failure to respond to, or failure to challenge, an examiner’s statement made during the prosecution of an application. Applicant is bound only by applicant’s revision of the application claims (including examiner's amendments authorized by applicant) or a positive argument/statement by applicant. An applicant’s failure to present on the record a counter statement or comment as to an examiner’s reasons for allowance does not give rise to any implication that applicant agreed with or acquiesced in the examiner’s reasoning for allowance. Thus, the failure to present a counter statement or comment as to the examiner’s statement of reasons for allowance does not give rise to any finding of surrender. The examiner’s statement of reasons for allowance in the original application cannot, by itself, provide the basis for establishing surrender and recapture.

It is only in the situation where applicant does file comments on the statement of reasons for allowance, that surrender may have occurred. Note the following scenarios in which an applicant files comments:

Scenario 1- Limitation C is Surrendered Subject Matter: The examiner’s statement of reasons for allowance in the original application stated that it was limitation C (of the combination of ABC) which distinguished over a potential combining of references X and Y, in that limitation C provided increased speed to the process. Applicant filed comments on the examiner’s statement of reasons for allowance essentially supporting the examiner’s reasons. Limitation C is thus established as relating to subject matter previously surrendered.

Scenario 2- Limitation C is Not Surrendered Subject Matter: On the other hand, if applicant’s comments on the examiner’s statement of reasons for allowance contain a counter statement that it is limitation B (of the combination of ABC), rather than C, which distinguishes the claims over the art, then limitation B would constitute a surrender generating limitation, and limitation C is not surrender generating limitation.

Scenario 3- There is No Surrender: If applicant replies to the examiner’s statement of reasons for allowance with a general statement that the claims are allowable because the prior art of record does not anticipate or render obvious the claims as a whole, then there will be no surrender.

C. The Third Step - Are the Reissue Claims Materially Narrowed in Other Respects, and Hence Avoid the Recapture Rule?

As pointed out above, this third step of the recapture determination, as set forth in North American Container, considers the significance of the claim limitations that were added and deleted, during prosecution of the patent (to be reissued) to determine whether the reissue claims should be barred under the recapture doctrine.

In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated that to avoid the recapture rule "the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured." Id. at 1361, 98 USPQ2d at 1644. Under this third step, it must be determined if there is entire or substantial recapture of the surrendered subject matter because there is no or insufficient material narrowing to avoid the recapture rule.

The following discussion addresses analyzing the reissue claims that have eliminated or modified a surrender generating limitation, as determined under step 2 analysis. In any broadening reissue application, the examiner will determine, under steps 1 and 2 of the recapture analysis on a claim-by-claim basis, whether the broadening relates to subject matter that was surrendered during the examination of the patent for which reissue is requested. Under step 3, it must be determined if such reissue claims are materially narrowed so as to escape the effects of the recapture doctrine. Note, examiners should consider any relevant preliminary applicant arguments of record as part of the recapture determination. See subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,” which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below.

• Situation 1 - SGL entirely eliminated: If an SGL has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 may be proper. For example, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application and not replaced by a new SGL-related limitation, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim.
• Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other unrelated aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. But note that even if the SGL limitation in the patent claims was entirely eliminated, the reissue applicant may have added a new limitation that relates to surrendered subject matter. See situation 3 below.
• Situation 2 - SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows:

  It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture.

  See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870.

  If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

• Situation 3 - Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept).

  The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

III. Example Analysis

The following examples are provided for analyzing the reissue claims for recapture.

A. Comparing Reissue Claims Narrowed/Broadened Vis-à-vis the Canceled Claims1. Reissue Claims Are Same or Broader in Scope Than Canceled Claims in All Aspects:

The recapture rule bars the patentee from acquiring, through reissue, claims that are in all aspects (A) of the same scope as, or (B) broader in scope than, those claims canceled from the original application to obtain a patent. Ball Corp. v. United States, 729 F.2d at 1436, 221 USPQ at 295.

2. Reissue Claims Are Narrower in Scope Than Canceled Claims in at Least One Aspect:

The discussion below is directed to the situation where the reissue claims are narrower than the canceled claims in some aspect, but are broader than the patent claims in some other aspect. Note, as discussed above in subsection II.A, if the reissue claims are equal in scope to, or narrower than, the patent claims (as opposed to the canceled claims) in all aspects, then there can never be recapture and the discussion that follows is not applicable.

If the reissue claims are narrower in scope than the claims canceled from the original application by inclusion of the entirety of the limitation addedto define the original application claims over a rejection, there will be no recapture, even if the reissue claims are broader than the canceled claims in some other aspect (i.e., an aspect not related to the surrender made in the original application).

For example, assume combination AB was originally claimed in the application, and the claim was amended in response to a rejection to add element C, and thus, provide ABC (after which the patent issued). The prosecution history of the original application does not include any patentability arguments based on limitation B alone or in combination with A, C, or A and C. The reissue claims are then directed to combination AB_broadenedC. The AB_broadenedC claims are narrower in scope when compared with the canceled claim subject matter AB with respect to the addition of C (which was added in the application to overcome the art). Because the reissue claim retains surrender-generating limitation C and the broadening was not in the area of the surrendered subject matter, there is no recapture. On the other hand, if the amendment paper that added element C in the prosecution of the original application included arguments that the combination of B and C defined the claimed invention over the prior art (e.g., there is synergistic effect of B and C), then there will be recapture unless the claim is materially narrowed in a manner related to the surrendered subject matter. See example (4) in subsection B below.

As another example, assume combination ABZ was originally claimed in the application, and the claim was amended in response to a rejection to add element C and thus provide ABZC (after which the patent issued). The prosecution history of the original application does not include any patentability arguments based on limitation Z. The reissue claims are then directed to combination ABC (i.e., element Z is deleted from the canceled claims, while element C remains present). The ABC claims of the reissue are narrower in scope as compared to the canceled claim subject matter ABZ with respect to the addition of C (which was added in the application to overcome the art). Because the reissue claims retain surrender-generating limitation C, there is no recapture.

B. Comparing Reissue Claims Narrowed/Broadened Vis-à-vis the Patent Claims

As pointed out above, where the reissue claims are narrower than the patent claims in all aspects, then there can never be recapture. If reissue claims are equal in scope to the patent claims, there is no recapture as to those reissue claims. Where, however, reissue claims are both broadened and narrowed as compared with the patent claims, the nature of the broadening and narrowing must be examined to determine whether the reissue claims are barred as being recapture of surrendered subject matter. If the claims are "broader than they are narrower in a manner directly pertinent to the subject matter... surrendered during prosecution" (Clement, 131 F.3d at 1471, 45 USPQ2d at 1166), then recapture will bar the claims. This narrowing/broadening vis-à-vis the patent is broken down into four possibilities that will now be addressed.

If a claim is presented in a reissue application that omits, in its entirety, the surrender-generating limitation, that claim impermissibly recaptures what was previously surrendered, and that claim is barred under 35 U.S.C. 251. Note, however, subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,” which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.

1. Reissue Claims Are Broader by Entirely Omitting Surrender Generating Limitation(s) and Are Narrower in Unrelated Aspect(s):

In this case, there is recapture.

Recapture exists because there is no addition of a new limitation that is related to the surrendered subject matter or if there is a new limitation that is related to the surrendered subject matter but it fails to materially narrow the claim (e.g., only adds what is known in the prior art).

This situation is where the patent claims are directed to combination ABC and the reissue claims are directed to ABD (which is not an overlooked aspect). Element C was either a limitation added to AB to obtain allowance of the original patent, or was argued by applicant to obviate a rejection (or both) in the prosecution of the original application. Thus, addition of C (and/or argument as to C) has resulted in the surrender of any combination of A & B that does not include subject matter related to C. Element C is a surrender generating limitation. Element D, on the other hand, is not related to the surrendered subject matter. Thus, the reissue claim, which completely eliminates C, is broadened in an area related to the surrender. The narrowing of the claim by the addition of D will not save the claim from recapture because D is not related to the surrendered subject matter. If, however, element D were related to the surrendered subject matter and materially narrowed the claim compared to the canceled claim, recapture may be avoided. See example 4 below.

Reissue claims that are broader than the original patent claims by entirely omitting the surrender-generating limitation (element C, in the example given) without a related replacement limitation will be barred by the recapture rule even though there is narrowing of the claims by adding limitation(s) not related to the surrendered subject matter. As stated in the decision of In re Clement, 131 F.3d at 1470, 45 USPQ2d at 1165, if the reissue claim is broader in an aspect germane to a prior art rejection, but narrower in another aspect completely unrelated to the rejection (e.g., fails to materially narrow the claim relative to the surrendered subject matter), the recapture rule bars the claim. Pannu, 258 F.3d 1366, 59 USPQ2d 1597, provides a fact situation in which this scenario was held to be recapture.

2. Reissue Claims Are Narrower or Equal in Scope in Area Related to Surrendered Subject Matter and Are Broader in Unrelated Aspect(s):

In this case, there is no recapture.

This situation is where the patent claims are directed to combination ABCDE and the reissue claims are directed to ABDE (element C is omitted). Assume that the combination of ABCD was present in the original application as it was filed, and element E was later added to overcome a rejection. No patentability argument was ever presented based on elements A-C.

In this situation, the ABCDE combination of the patent can be broadened (in the reissue application) to omit element C, and thereby claim the combination of ABDE, where element E (the surrender generating limitation) is not omitted. There would be no recapture in this instance. (If an argument had been presented as to element C defining over the art, in addition to the addition of element E, then the ABCDE combination could not be broadened to entirely omit element C and thereby claim combination of ABDE. This would be recapture; see the discussion above as to surrender and recapture based upon argument and see example 4 below.)

Additionally, the reissue claims are certainly permitted to recite combination ABDE_specific (where surrender-generating element E is narrowed). The patent claims can be broadened in an area not directed to the surrender (by omitting element C) and narrowed in the area of surrender (by narrowing element E to E_specific) without violating the recapture doctrine.

As another example, assume limitation C was added to application claims AB to obtain the patent to ABC, and now the reissue application presents claims to AC or AB_broadC. Such reissue claims avoid the effect of the recapture rule because they are broader in a way that does not attempt to reclaim what was surrendered earlier. Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 994, 27 USPQ2d 1521, 1525 (Fed. Cir. 1993). Such claims are considered to be broader in an aspect not "germane to a prior art rejection," and thus are not barred by recapture. In re Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.

Reissue claims that are broader than the original patent claims by deletion of a limitation or claim requirement other than the "surrender-generating limitation" will avoid the effect of recapture, regardless of the nature of the narrowing in the claims, and even if the claims are not narrowed at all from the scope of the patent claims.

3. Reissue Claims Retain Surrender Generating Limitation(s) without Change and Are Narrower or Broader in Unrelated Aspect(s):

In this instance, there is clearly no recapture. In the reissue application, there has been no change in the claims related to the matter surrendered in the original application for the patent.

In this instance, element C was added to the AB combination to provide ABC and overcome a rejection, and the patent was issued. The reissue omits element B and adds element Z, to thus claim ACZ. There is no recapture because the surrender generating element C has not been modified in any way. (Note, however, that if, when element C was added to AB, applicant argued that the association of newly added C with B provides a synergistic (unexpected) result to thus define over the art, then neither element B nor element C could be entirely omitted in the reissue application. See the discussion above as to surrender and recapture based upon argument and example 4 below.)

4. Reissue Claims Retain, in Broadened Form, the Surrender Generating Limitation(s):

In this case, there may be recapture.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC_broadened. The ABC_broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C_broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC_broadened is narrower than canceled claim subject matter AB, if C_broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

IV. REISSUE TO TAKE ADVANTAGE OF pre-AIA 35 U.S.C. 103(b):

For patents issued on an application subject to the pre-AIA prior art regime (pre-AIA patents), a patentee may file a reissue application to permit consideration of process claims which qualify for pre-AIA 35 U.S.C. 103(b) treatment if a patent is granted on an application entitled to the benefit of pre-AIA 35 U.S.C. 103(b), without an election having been made as a result of error without deceptive intent. See MPEP § 2147. This is not to be considered recapture. The addition of process claims, however, will generally be considered to be a broadening of the invention (Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such addition must be applied for within two years of the grant of the original patent, or in an appropriate continuing broadening reissue application claiming the benefit of a prior-filed broadening reissue application filed within two years of the grant of the original patent. See also MPEP § 1412.03 as to broadened claims.

V. REISSUE FOR ARTICLE CLAIMS WHICH ARE FUNCTIONAL DESCRIPTIVE MATERIAL STORED ON A COMPUTER-READABLE MEDIUM:

A patentee may file a reissue application to permit consideration of article of manufacture claims (not presented in the patent to be reissued) which are functional descriptive material stored on a computer-readable medium, where these article claims correspond to the process or machine claims which have been patented. The addition of these “article” claims will generally be considered to be a broadening of the invention (Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such addition must be applied for within two years of the grant of the original patent. See also MPEP § 1412.03 as to broadened claims.

VI. REJECTION BASED UPON RECAPTURE:

Reissue claims which recapture surrendered subject matter should be rejected using form paragraph 14.17.

VII. REBUTTAL BY THE REISSUE APPLICANT

The reissue applicant may rebut a recapture rejection by demonstrating that a claim rejected for recapture includes one or more claim limitations that “materially narrow” the reissue claims in a way that relates to the subject matter surrendered during original prosecution.

Examples of reissue application claims that are to be rejected for recapture under 35 U.S.C. 251 include:

Assume that the original application claim ABCD was amended during prosecution and results in a patent claim ABCDE.

1. ABCD → Eliminates E, the surrender generating limitation (SGL).

2. ABCDF → Eliminates E, the SGL; adds narrowing limitation F, which was determined to be not materially narrowing under step 3.

3. ABCDE_broader → Broadens E, the SGL; E_broader is well known in the art.

4. ABCDE_broaderF → Broadens E; E_broader is well known in the art; adds narrowing limitation F, which was determined to be not materially narrowing under step 3.

In these four examples, a recapture rejection would be made. For examples 2 and 4, applicant may try to rebut the recapture rejections by showing that limitation F “materially narrows” the reissue claims in a way that relates to the subject matter surrendered during original prosecution. If such is the case, the reissue applicant should point out explicitly what limitation has been added to the claims (in this case, limitation F) and how it materially narrows the claims.

VIII. FLOWCHART

See the recapture-analysis flow chart which follows for assistance in determining whether recapture is present, consistent with the case law discussed above.

1412.03 Broadening Reissue Claims [R-10.2019]

35 U.S.C. 251(d) and the corresponding final paragraph of pre-AIA 35 U.S.C. 251 prescribe a 2-year limit for filing applications for broadening reissues.

I. MEANING OF “BROADENED REISSUE CLAIM”

A broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent. If a disclaimer is filed in the patent prior to the filing of a reissue application, the disclaimed claims are not part of the “original patent” under 35 U.S.C. 251. The court in Vectra Fitness Inc. v. TNWK Corp., 162 F.3d 1379, 1383, 49 USPQ2d 1144, 1147 (Fed. Cir. 1998) held that a reissue application violated the statutory prohibition under 35 U.S.C. 251 against broadening the scope of the patent more than 2 years after its grant because the reissue claims are broader than the claims that remain after the disclaimer, even though the reissue claims are narrower than the claims that were disclaimed by the patentee before reissue. The reissue application was bounded by the claims remaining in the patent after a disclaimer is filed.

A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects. See, e.g., 37 CFR 1.175(b). A claim in the reissue application which includes subject matter not covered by the patent claims enlarges the scope of the patent claims. For example, if any amended or newly added claim in the reissue contains within its scope any conceivable product or process which would not have infringed the patent, then that reissue claim would be broader than the patent claims. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603, 120 USPQ 185, 186 (CCPA 1958). A claim which covers something that the original claims do not is a broadened claim. A claim would be considered a broadening claim if the patent owner would be able to sue any party for infringement who previously could not have been sued for infringement. Thus, where the original patent claims only the process, and the reissue application newly adds product claims, the scope of the claims has been broadened because a party could not necessarily be sued for infringement of the product based on the claims of the original patent (if it were made by a different process).

The addition of combination claims in a reissue application where only subcombination claims were present in the original patent could be a broadening of the invention. The question which must be resolved in this case is whether the combination claims added in the reissue would be for “the invention as claimed” in the original patent. See Ex parte Wikdahl, 10 USPQ2d 1546, 1549 (Bd. Pat. App. & Inter. 1989). The newly added combination claims should be analyzed to determine whether they contain every limitation of the subcombination of any claim of the original patent. If the combination claims (added in the reissue) contain every limitation of the subcombination (which was claimed in the original application), then infringement of the combination must also result in infringement of the subcombination. Accordingly, the patent owner could not, if a reissue patent issues with the combination claims, sue any new party for infringement who could not have been sued for infringement of the original patent. Therefore, broadening does not exist, in spite of the addition of the combination.

II. SCOPE OF DEPENDENT CLAIM ENLARGED - NOT BROADENING

As pointed out above, a claim will be considered a broadened reissue claim when it is greater in scope than each and every claim of the patent to be reissued. A corollary of this is that a claim which has been broadened in a reissue as compared to its scope in the patent is not a broadened reissue claim if it is narrower than, or equal in scope to, any other claim which appears in the patent. A common example of this is where dependent claim 2 is broadened via the reissue (other than the addition of a process step to convert an intermediate to a final product), but independent claim 1 on which it is based is not broadened. Because a dependent claim is construed to contain all the limitations of the claim upon which it depends, claim 2 must be at least as narrow as claim 1 and is thus not a broadened reissue claim.

III. NEW CATEGORY OF INVENTION ADDED IN REISSUE - GENERALLY IS BROADENING

The addition of process claims as a new category of invention to be claimed in the patent (i.e., where there were no method claims present in the original patent) is generally considered as being a broadening of the invention. See Ex parte Wikdahl, 10 USPQ2d 1546, 1549 (Bd. Pat. App. & Inter. 1989). A situation may arise, however, where the reissue application adds a limitation (or limitations) to process A of making the product A claimed in the original patent claims. For example:

• (1) a process of using the product A (made by the process of the original patent) to make a product B, disclosed but not claimed in the original patent; or
• (2) a process of using the product A to carry out a process B disclosed but not claimed in the original patent.

Although this amendment of the claims adds a method of making product B or adds a method of using product A, this is not broadening (i.e., this is not an enlargement of the scope of the original patent) because the newly claimed invention contains all the limitations of the original patent claim(s).

IV. WHEN A BROADENED CLAIM CAN BE PRESENTED

A broadened claim can be presented within two years from the grant of the original patent in a reissue application. In addition, a broadened claim can be presented after two years from the grant of the original patent in a broadening reissue application which was filed within two years from the grant. Where any intent to broaden is unequivocally indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. (Note: A statement that “the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim” is NOT an unequivocal statement of an intent to broaden.) Thus, a broadened claim may be presented in a reissue application after the two years, even though the broadened claim presented after the two years is different than the broadened claim presented within the two years. Finally, if intent to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing (continuation or divisional) reissue application after the two year period. See In re Staats, 671 F.3d 1350, 101 USPQ2d 1930 (Fed. Cir. 2012) which dealt with a continuation of a first reissue application in which the first reissue application was filed within two years of the patent grant. The broadened claims in the continuation reissue application were to an embodiment “alternative” to, and “unrelated” to, the broadened claims of the first reissue application that were filed within the 2-year limit. Notice of broadening was found to be sufficient in this instance, with the court holding that there is no basis for requiring the later broadened claims in the continuation reissue application to be related to, or directed to the same embodiment as in the first reissue application. Id. at 1355, 101 USPQ2d at 1934. “[A]fter a broadening reissue application has been filed within the two year statutory period, an applicant is ‘not barred from making further broadening changes’ after the two year period” regardless of whether the further broadening changes are unrelated to the prior broadening reissue application. Id. A reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) for a similar rule in interferences.

See also the following cases which pertain to broadened reissues:

In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing reissue application were properly rejected under 35 U.S.C. 251 because the proposal for broadened claims was not made (in the parent reissue application) within two years from the grant of the original patent and the public was not notified that broadened claims were being sought until after the two-year period elapsed.)

In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The failure by an applicant to include an oath or declaration indicating a desire to seek broadened claims within two years of the patent grant will bar a subsequent attempt to broaden the claims after the two year limit.)

In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985) (en banc) (A reissue application with broadened claims was filed within two years of the patent grant; however, the declaration was executed by the assignee rather than the inventor. The Federal Circuit permitted correction of the improperly executed declaration to be made more than two years after the patent grant.)

In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970) (If the reissue application is timely filed within two years of the original patent grant and the applicant indicates in the oath or declaration that the claims will be broadened, then applicant may subsequently broaden the claims in the pending reissue prosecution even if the additional broadening occurs beyond the two year limit.).

Form paragraphs 14.12 and 14.13 may be used in rejections based on improper broadened reissue claims.

V. BROADENING REISSUE - OATH/DECLARATION REQUIREMENTS

A. Reissue Application Filed On or After September 16, 2012

Any reissue application filed on or after September 16, 2012 must be applied for by all of the patentees. However, in a broadening reissue application filed on or after September 16, 2012, the original reissue oath or declaration must be signed by all of the inventors, unless the application for the patent (for which reissue is requested) was filed under 37 CFR 1.46 by the assignee of the entire interest (see 37 CFR 1.175(c)(2)). See also MPEP § 1414. A supplemental oath or declaration to account for errors corrected subsequent to the original oath or declaration is not needed for the application; however, a replacement oath or declaration would still be required where there is a failure to identify any error, or a failure to identify at least one error of the type that would support a reissue. Such a replacement oath or declaration must be signed by all of the inventors, unless the application for the patent (for which reissue is requested) was filed under 37 CFR 1.46 by the assignee of the entire interest.

For any broadening reissue application filed on or after September 16, 2012, the inventor’s oath or declaration must identify a specific claim that the application seeks to broaden. See 37 CFR 1.175(b). A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement.

B. Reissue Application Filed Before September 16, 2012

A broadening reissue application filed before September 16, 2012 must be applied for by all of the inventors (patentees), that is, the original reissue oath or declaration must be signed by all of the inventors. See also MPEP § 1414. The error in not presenting broader claims must have been made without deceptive intent. If a supplemental oath or declaration in a broadening reissue application is needed in the application in order to fulfill the requirements of 37 CFR 1.175, the supplemental reissue oath or declaration must be signed by all of the inventors. See In re Hayes, 53 USPQ2d 1222 (Comm’r Pat. 1999) and MPEP § 1414.03.

1412.04 Correction of Inventorship By Reissue [R-11.2013]

The correction of misjoinder of inventors has been held to be a ground for reissue. See Ex parte Scudder, 169 USPQ 814, 815 (Bd. App. 1971) wherein the Board held that 35 U.S.C. 251 authorizes reissue applications to correct misjoinder of inventors where 35 U.S.C. 256 is inadequate. See also A.F. Stoddard & Co. v. Dann, 564 F.2d 556, 567 n.16, 195 USPQ 97, 106 n.16 (D.C. Cir. 1977) wherein correction of inventorship from sole inventor A to sole inventor B was permitted in a reissue application. The court noted that reissue by itself is a vehicle for correcting inventorship in a patent.

See MPEP §§ 602.01(c)et seq. for correction of inventorship in an application other than a reissue application.

I. CERTIFICATE OF CORRECTION AS A VEHICLE FOR CORRECTING INVENTORSHIP

While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected under the provisions of 35 U.S.C. 256 and 37 CFR 1.324 by filing a request for a certificate of correction if:

• (A) the only change being made in the patent is to correct the inventorship; and
• (B) all parties are in agreement and the inventorship issue is not contested.

See MPEP § 1481.02 for the procedure to be followed to obtain a certificate of correction for correction of inventorship.

II. REISSUE AS A VEHICLE FOR CORRECTING INVENTORSHIP

Where the provisions of 35 U.S.C. 256 and 37 CFR 1.324 do not apply, a reissue application is the appropriate vehicle to correct inventorship. The failure to name the correct inventive entity is an error in the patent which is correctable under 35 U.S.C. 251. The reissue oath or declaration pursuant to 37 CFR 1.175 must state that the applicant believes the original patent to be wholly or partly inoperative or invalid through error of a person being incorrectly named in an issued patent as the inventor, or through error of an inventor incorrectly not named in an issued patent, and, for applications filed before September 16, 2012, must also state that such error arose without any deceptive intention on the part of the applicant. The reissue oath or declaration must, as stated in 37 CFR 1.175, also comply with one of 37 CFR 1.63, 1.64, or 1.67 if the reissue application is filed on or after September 16, 2012, or comply with pre-AIA 37 CFR 1.63 if filed before September 16, 2012.

The reissue application with its reissue oath or declaration under 37 CFR 1.175 provides a complete mechanism to correct inventorship. See A.F. Stoddard & Co. v. Dann, 564 F.2d at 567, 195 USPQ at 106. A request under 37 CFR 1.48 or a petition under 37 CFR 1.324 cannot be used to correct the inventorship of a reissue application. If a request under 37 CFR 1.48 or a petition under 37 CFR 1.324 is filed in a reissue application, the request or petition should be dismissed and the processing or petition fee refunded. The material submitted with the request or petition should then be considered to determine if it complies with 37 CFR 1.175. If the material submitted with the request or petition does comply with the requirements of 37 CFR 1.175 (and the reissue application is otherwise in order), the correction of inventorship will be permitted as a correction of an error in the patent under 35 U.S.C. 251.

The correction of inventorship does not enlarge the scope of the patent claims. Where a reissue application does not seek to enlarge the scope of the claims of the original patent, the reissue oath may be made and sworn to, or the declaration made, by the assignee of the entire interest under 37 CFR 1.172. An assignee of part interest may not file a reissue application to correct inventorship where the other co-owner did not join in the reissue application and has not consented to the reissue proceeding. See Baker Hughes Inc. v. Kirk, 921 F. Supp. 801, 809, 38 USPQ2d 1885, 1892 (D.D.C. 1995). See 35 U.S.C. 251. On the other hand, an assignee of the entire interest can consent to and sign the reissue oath/declaration that adds or deletes the name of an inventor by reissue (e.g., correct inventorship from inventor A to inventors A and B) without the original inventor’s consent. Thus, the assignee of the entire interest can file a reissue to change the inventorship to one which the assignee believes to be correct, even though an inventor might disagree. The protection of the assignee’s property rights in the application and patent are statutorily based in 35 U.S.C. 118. For additional information pertaining to the right of an assignee to take action, see MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012). Where the name of an inventor X is to be deleted in a reissue application to correct inventorship in a patent, and inventor X has not assigned his/her rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the reissue (37 CFR 1.172(a)), even though inventor X’s name is being deleted as an inventor. If X’s name is being deleted as an inventor, X consents to the reissue application, and the remaining inventors sign the reissue oath or declaration, X need not sign. If, however, an assignee signs the reissue oath or declaration, inventor X’s signature must also be included in the reissue oath or declaration as an assignee.

1412.05 Correction of Inventorship in a Broadening Reissue Application [R-08.2017]

I. REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012

[Editor Note: See subsection II, below, for reissue applications filed before September 16, 2012.]

Where a reissue application to correct inventorship is filed on or after September 16, 2012, and the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest, the assignee may sign the inventor’s oath or declaration even where the application also seeks to enlarge the scope of the claims of the original patent. If the application for the original patent was not filed under 37 CFR 1.46 by the assignee of the entire interest, then the signature of all of the inventors is needed on the oath or declaration except as provided for in 37 CFR 1.64. Note that under 37 CFR 1.64, the assignee of the entire interest may sign a substitute statement where the inventor is deceased, legally incapacitated, refuses to execute the reissue oath or declaration, or cannot be found or reached after diligent effort. See MPEP § 604.

In situations where a reissue application seeks to correct inventorship in the patent and the inventors sign the reissue oath or declaration for a broadening reissue application, the correct inventive entity must sign the reissue oath or declaration.

If an inventor is being deleted in a reissue application to correct inventorship in a patent and the inventors are required to sign the oath or declaration, the inventor being deleted need not sign the reissue oath or declaration. For example, a reissue application is filed to correct inventorship from inventors A, B, and C (listed as inventors on the patent) to inventors A and B. Inventor C is being deleted as a named inventor. In such a case, A and B are the correct inventors, and accordingly, (in situations where the assignee is not permitted to sign) inventors A and B must sign the reissue oath or declaration but inventor C need not sign the reissue oath or declaration.

If an inventor is being added in a reissue application to correct inventorship in a patent or to correct an error in the scope of the claims that results in the addition of one or more inventors, the inventor being added must sign the reissue oath or declaration together with the inventors previously designated on the patent.

In both examples, A, B, and C are the correct inventors in the reissue application, and accordingly, each of A, B, and C must sign the reissue oath or declaration. If inventor C refuses to sign, the assignee of the entire interest may sign a substitute statement under 37 CFR 1.64. Thus, even where an application changes the claims to enlarge the scope of the patent claims in addition to the inventorship change, and the application for the original patent was not filed under 37 CFR 1.46 by the assignee of the entire interest, the assignee can add an inventor who refuses to sign by making use of 37 CFR 1.64.

II. REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012

[Editor Note: See subsection I, above, for reissue applications filed on or after September 16, 2012.]

Where a reissue application to correct inventorship is filed before September 16, 2012, and that application also changes the claims to enlarge the scope of the patent claims, the signature of all the inventors is needed. However, if an inventor refuses to sign the reissue oath or declaration because the inventor believes the change in inventorship (to be effected) is not correct, the reissue application can still be filed with a petition under pre-AIA 37 CFR 1.47 without that inventor’s signature, provided the written consent of all owners/assignees as required by pre-AIA 37 CFR 1.172(a) is also submitted. Compare, however, the situation where a patent to inventors X and Y has no assignee, a reissue application is filed by inventor Y to delete the name of inventor X as an inventor and to broaden the patent. Inventor X refuses to sign the reissue oath or declaration and refuses to provide the consent as required by pre-AIA 37 CFR 1.172(a). In this instance, a pre-AIA 37 CFR 1.47 petition would not be appropriate to permit the filing of the reissue application because the consent requirement of pre-AIA 37 CFR 1.172(a) for each owner/assignee is not met. Resort to the courts would be required to delete the name of inventor X as an inventor where X will not consent to the filing of a reissue application. As stated in the second paragraph of pre-AIA 35 U.S.C. 256, “[t]he court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.”