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Patent Reissue after Eggert: Reclaiming the Ring

By Michael Messinger and Lori Gordon
February 25, 2005

When considering a broadening reissue application, patent owners often confront a recurring issue: Can a limitation added or argued during prosecution of an original patent to gain allowance over prior art later be broadened during reissue? Recent developments in case law at the Federal Circuit Court of Appeals and U.S. Patent and Trademark Office (“USPTO”) suggest a way to permissibly broaden such limitations through reissue and still avoid recapture. We call it reclaiming the ring.

Reissue practice is corrective. It allows a patent owner to correct one or more errors in a patent and is authorized by statute, 35 U.S.C. '251. One of the recognized errors that may be corrected is when a patent owner has claimed less than he had a right to claim. In this instance, a patent owner can file for broadening reissue and seek broader claims. Certain restrictions apply, however, such as the patent owner must be diligent (a broadening reissue application must be filed within 2 years from the original patent issue date). In addition, filing requirements must be met, such as filing a reissue declaration signed by inventors, obtaining consent of an assignee, and remitting payment of reissue filing fees.

Recapture is frequently the chief obstacle to a broadening reissue strategy. The recapture rule is a judicial doctrine that prevents patent owners from impermissibly recapturing what was previously surrendered during prosecution of the original patent. Avoiding recapture is especially important in the scenario addressed here where a limitation added or argued during prosecution of an original patent to gain allowance over prior art (“added/argued limitation”) is sought to be broadened through reissue. Fortunately, the recent Eggert case, decided as a precedential opinion by the USPTO Board of Patent Appeals and Interferences (“BPAI”), outlines an approach where such added/ argued limitations may be broadened. See, Ex parte Eggert, 67 U.S.P.Q.2d 1716 (Bd. Pat. App. & Interf. 2003).

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