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Patent Correction: Navigating the Confusing Terrain of Broadening Reissue

BY Edward Van Gieson
July 29, 2010

There are times when a patent owner may discover that an issued patent does not claim everything that the patent should have covered. When such defects are discovered, one strategy a patent owner may wish to consider is filing a request with the U.S. Patent and Trademark Office (“USPTO”) for a broadened reissue of a U.S. patent to enlarge the scope of the claims of the original patent. The patent statute permits many types of errors in an issued patent to be corrected by filing a reissue application. See 35 U.S.C. ' 251. One type of error that is correctable by reissue application occurs when a patentee: “through error and without any deceptive intention ' claim[ed] ' more or less than he had a right to claim in the patent.” Id. The statute thus permits reissue claims having a different scope (including a broader scope) than the original patent. However, a request for a broadening reissue that enlarges the scope of the claims must be filed within two years of the issue date of the original patent. Id.

The Recapture Rule

Although the patent statute only requires that the potential defect in the patent be made through error and without deceptive intent, the courts have placed some additional limits on the ability of a patentee to broaden a patent. One judicially created rule limiting a patent owner's ability to broaden an issued patent is referred to as the recapture rule. The recapture rule is based on principles of equity that come into play when a patent owner pursues reissue claims that remove key claim limitations that were specifically added or argued during prosecution of the original patent to overcome prior art rejections. Hester Indus., Inc., v. Stein, Inc., 142 F.3d 1472, 1480-81 (Fed. Cir. 1998). The recapture rule prevents a patentee from pursuing claims that are the same or broader in scope in all respects than those claims that were surrendered to obtain allowance of the original patent over the prior art. Ball Corp. v. United States, 729 F.2d 1429, 1436-37 (Fed. Cir. 1984); In re Clement, 131 F.3d 1464, 1468-70 (Fed. Cir. 1997).

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