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Patent Reissue after Eggert: Reclaiming the Ring

By Michael Messinger and Lori Gordon

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.

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