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...
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...
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
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...
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...
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...
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...
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...
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...
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...
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...
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...
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...
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...