BPAI Clarifies Patent Reissue Recapture Doctrine

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...

Recapture of Subject Matter Through Patent Reissue

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...

Broadening Patent Reissue Requires Unequivocal Declaration Statement

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

Patents Post-Grant: CAFC Reverses USPTO on Important Question of Patent Reissue

In Re Tanaka Decision on "Bullet Claims" Reversed at CAFC Today, the CAFC has held that the addition of narrower, dependent claims in patent reissue is an "error" contemplated by the patent reissue statute. In re Tanaka (CAFC 2011) ( here ) As a reminder, Ex parte Tanaka...

Federal Circuit Allows Additional Claim on Patent Reissue as Hedge against Original Claim’s Possible Invalidity; Looks to Long-Standing Precedent in Reversing PTO/Board of Patent Appeals

The narrow rule relating to the addition of dependent claims as a hedge against possible patent invalidity is a reasonable and long-standing interpretation of the reissue statute, according to last week's Federal Circuit decision. Yasuhito Tanaka was issued U.S. Patent No. 6,093,991 , which...

Sutherland Legal Alert: New Dependent Claims in Reissue Are Permissible Under In re Yasuhito Tanaka

By Bill Warren and Louise Rains The ruling of the U.S. Court of Appeals for the Federal Circuit in In re Yasuhito Tanaka [ enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law ] has left no doubt that the patent reissue procedure can be used...

Patents Post-Grant: USPTO Changes Patent Reissue Practice

USPTO Updates Patent Reissue Practice to be Consistent with In re Tanaka The USPTO has now issued a Notice entitled " Clarification of Criteria for Reissue Error in View of In re Tanaka ." As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and...

Fitch, Even, Tabin & Flannery: UPDATE: USPTO Revises Policy to Comply with Tanaka Decision

By Kendrew H. Colton UPDATE : In a notice published August 23, 2011, the U.S. Patent and Trademark Office (USPTO) announced a revision to the Manual of Patent Examining Procedure . As held in the Tanaka case (discussed below in the IP Law Alert from April 18, 2011), the reissue statute permits the...

Narrowing Reissue Applications Can Again Be Used to Provoke Interferences!

In 2008, Charles L. Gholz wrote Can Narrowing Reissue Applications Still Be Used to Provoke Interferences? in response to a directive from John J. Love, the then Deputy Commissioner for Patent Examination Policy. In late 2009, an expanded panel of the Board of Patent Appeals and Interferences followed...

Patents Post-Grant: Defects in Patent Reissue Oaths Inefficiently Cured

Most practitioners are well aware that disputes with the USPTO over formal oath requirements in patent reissue are the rule, not the exception. I have written extensively in the past as to the significant delays caused by this seemingly straight forward formal requirement. In most cases, the...

Patents Post-Grant: Patent Reissue Oath Practice Revised by USPTO

Troublesome Oath Requirements Revised As anyone that has ever filed a patent reissue can attest, the inconsistent application of oath requirements can be maddening. In fact, the vast majority of patent reissue applications are delayed due to such informalities -aggravating an already significant...

Fitch, Even, Tabin & Flannery LLP: Federal Circuit Confirms Broadening Reissue Continuation May Be Filed After Two Years

Today, in In re Staats , the Court of Appeals for the Federal Circuit confirmed that a broadening reissue patent application may be filed outside of the two-year period specified in 35 U.S.C. 251 as a continuation of an earlier-filed broadening reissue application. In addition, Staats held that such...

Patents Post-Grant: CAFC Reverses USPTO on Patent Reissue Dispute

Continuation Practice in Broadening Patent Reissue Applications Examined Yesterday, the CAFC decided an important question pertaining to broadening patent patent reissue practice. ( I n re Staats, decision here ). The issue before the Court was whether a broadening patent reissue application of Apple...

Federal Circuit Emphasizes Limitation on Patent Reissue Claim Scope

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...