1、BROADENING REISSUESBennett CelsaTC1600Quality Assurance Specialist1Broadening Reissues: Indexn Statutory Support: 35 U.S.C. 251, 4; n Definition of a “Broadened Claim” (Infringement Test);n “Unequivocal Intent To Broaden”: 2yrs of Issued Patent;n Case Law Examples of Proper/Improper Broadening;n Bar
2、s To Obtaining Broadening Reissues:n Two Year bar (35 USC 251; MPEP 1412.03);n New Matter and Restriction/Election bar (35 USC 251; MPEP 1412.01)n Recapture bar (MPEP 1412.02)235 U.S.C. 251 4 : Broadening Reissue35 U.S.C. 251 Reissue of defective patents.Whenever any patent is, through error without
3、 any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee r
4、equired by law, for reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amendedapplication, for the unexpired part of the term of the original patent.No new matter shall be introduced into the application for reissue.The Director may issue several
5、reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.The provisions of this title relating to applications for patent shall be applicable to applications for reissue
6、of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest ifthe application does not seek to enlarge the scope of the claims of the original patent.No reissued patent shall be granted enlarging the scope of the claims of the original patent unle
7、ss applied for within two years from the grant of the original patent.(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A).) 3MPEP 1412.03: “Broadened Reissue Claim” Definition: A claim which enlarges the scope of the claims of the patent, i.e
8、., a claim which is greater in scope than each and every claim of the original patent A reissue claim enlarges the scope of the patented claims if it is broader in at least one respect, even though it may be narrower in other respects Tip: Compare reissue claims to broadest patented claims.4Infringe
9、ment Test Infringement Test: A claim is broadened if the patent owner would be able to sue any party for infringement who previously could not have been sued for infringement Example: where the original patent claims only a process of making, and the reissue application newly adds a product claim, t
10、he scope has been broadened because a party could not necessarily be sued for infringement of the product based on the claims of the original patent if it were made by a different process. 5MPEP 1412.03 II: Broadening Scope of Patented “Dependent Claims” General Rule: broadening the scope of patente
11、d dependent claims is NOT BROADENING Example: where dependent patented claim 2 is broadened via the reissue, but independent claim 1 on which it is based is not broadened. Rationale: A dependent claim is construed to contain all the limitations of the claim upon which it depends, thus claim 2 must b
12、e at least as narrow as claim 16MPEP 1412.03 III. NEW CATEGORY OF INVENTION ADDED IN REISSUE - GENERALLY IS BROADENING Adding process claims as a new category of invention to be claimed in the patent (i.e., where there were no method claims present in the original patent) is generally considered as
13、being a broadening of the invention. See Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. or(2) a process of using the product A to carry out a process B disclosed but not claimed in the original patent. Although this amendment of the claims adds a method of making product B or adds a method of using
14、 product A, this is not broadening because the “newly claimed invention“ contains all the limitations of the original patent claim(s).7Bars To Obtaining Broadening Reissuesn Bars To Obtaining Broadening Reissues:n Two Year bar (35 USC 251; MPEP 1412.03);n New Matter and Restriction/Election bar (35
15、USC 251; MPEP 1412.01)n Recapture bar (MPEP 1412.02)8MPEP 1412.03 IV. WHEN A BROADENED CLAIM CAN BE PRESENTED A broadened claim can be presented within two years from the grant of the original patent in a reissue application. See 35 U.S.C. 251 4; A reissue application filed on the 2-year anniversary
16、 date from the patent grant is considered to be filed within 2 years of the patent grant. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) for a similar rule in interferences.9BROADENED CLAIM: “unequivocal intent” to broaden A broadened claim can be presented after two years from the g
17、rant of the original patent in a broadening reissue application which was filed within two years from the grant where any intent to broaden is “unequivocally” indicated in the reissue application within the two years from the patent grant. See MPEP 1412.03 IV.A statement that “the patent is wholly o
18、r partly inoperative by reason of claiming more or less than applicant had a right to claim“ (without more) is NOT an unequivocal statement of an intent to broaden.10BROADENED CLAIM: SUBMITTED AFTER TWO YEARS Thus, a broadened claim may be presented in a reissue application after the two years, even
19、 though the broadened claim presented after the two years is different than the broadened claim presented within the two years. Finally, if intent to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing (continuation or divisio
20、nal) reissue application after the two year period. In any other situation, a broadened claim cannot be presented.11MPEP 1414: Content of Reissue Oath/Declaration (“Intent To Broaden”) Reissue oaths or declarations must contain the following:- (A) A statement that the applicant believes the original
21、 patent to be wholly or partly inoperative or invalid (1) by reason of a defective specification or drawing, or(2) by reason of the patentee claiming more or less than patentee had the right to claim in the patent;- (B) A statement of at least one error which is relied upon to support the reissue ap
22、plication, i.e., the basis for the reissue. See also 37 CFR 1.175 (a)(1).12Broadening Reissue Oath Relevant “Inventor Oath Portion” (See: Reissue Inventor Oath Form: PTO/SB/51 at www.uspto.gov/forms/index.jsp ).13MPEP 1414 II: THE “SPECIFIC” BASIS FOR THE REISSUE The “at least one error” which is re
23、lied upon to support the reissue application must be set forth in the oath or declaration The oath/declaration must specifically identify an error Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error14MPEP 1414 II: NO
24、N- SPECIFIC BASIS Insufficient assertions of errorsEx. 1: merely reproduce the claims with brackets and underlining and state that such will identify the errorEx. 2: a statement of “ failure to include a claim directed to “ and then presenting a newly added claim15MPEP 1412.03: Broadening Case LawIn
25、 re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970) (If the reissue application is timely filed within two years of the original patent grant and the applicant indicates in the oath or declaration that the claims will be broadened, then applicant may subsequently broaden the claims in the pen
26、ding reissue prosecution even if the additional broadening occurs beyond the two year limit.)In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985) (en banc) (A reissue application with broadened claims was filed within two years of the patent grant; however, the declaration was execut
27、ed by the assignee rather than the inventor. The Federal Circuit permitted correction of the improperly executed declaration to be made more than two years after the patent grant.);In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The failure by an applic
28、ant to include an oath or declaration indicating a desire to seek broadened claims within two years of the patent grant will bar a subsequent attempt to broaden the claims after the two year limit. There was no broadening amendment or statement of record in Fotland that would have shown an intent to
29、 broaden, even without a statement of broadening in the reissue oath or declaration.).16MPEP 1414 II: Continuation Reissue 37 CFR 1.175(e) “the filing of any continuing reissue application which does not replace its parent reissue application must include an oath or declaration, which pursuant to 37
30、 CFR 1.175(a)(1) , identifies at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application.” Not a reissuable “error”, where a continuation reissue application is filed with a copy of the reissue oath from the parent reiss
31、ue application, and the parent reissue application is not to be abandoned17MPEP1451:Divisional Reissue Applications; Continuation Reissue ApplicationsWhere the Parent is Pending Nonetheless, the mere fact that the application purports to be a continuation or divisional of a parent reissue applicatio
32、n does not make it a reissue application itself, since it is possible to file a 35 U.S.C. 111(a) continuing application of a reissue application. In re Bauman, 683 F.2d 405, 214 USPQ 585 (CCPA 1982). There must be an identification, on filing, that the application is a continuation reissue applicati
33、on, as opposed to a continuation of a reissue application (i.e., a Bauman type continuation application). 18Broadening Case Law: Continuing Reissue In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing reissue application were properly rejected un
34、der 35 U.S.C. 251 because the proposal for broadened claims was not made (in the parent reissue application) within two years from the grant of the original patent and the public was not notified that broadened claims were being sought until after the two-year period elapsed.) (with emphasis). 35 U.
35、S.C. 251, 4 does not permit a continuing reissue application to broaden the patented claims beyond the two-year statutory period in a manner unrelated to the broadening aspect that was identified within the two-year period. Ex parte ERIK STAATS and ROBIN D. LASH, (B.P.A.I. Appeal 2009-0071621 Applic
36、ation 11/503,541): Decided: April 26, 2010: appealed on June 24, 2010 to CAFC. Rationale: since broadening was “completely unforeseeable” by the public within the two-year statutory period-it runs counter to the Graff public notice function underpinning 251 19MPEP 1412.01: Reissue Claims Must Be for
37、 Same General Invention- No New Matter 35 U.S.C. 251 1: Reissue of defective patents.Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or
38、 less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the
39、 term of the original patent.No new matter shall be introduced into the application for reissue. The reissue claims must be for the same invention as that disclosed as being the invention in the original patent, as required by 35 U.S.C. 251. No New Matter is permitted. See MPEP 1412.01.20MPEP 1412.0
40、1: Restriction/Election Bar Restriction or an election of species requirement made without timely filing of a divisional directed to non-elected invention (s) cannot be recovered by filing a reissue application i.e. not considered to be “reissuable error”.Thus, failure to timely file a divisional ap
41、plication prior to issuance of original patent cannot be cured in a reissue.21MPEP 1412.02: Recapture of Canceled Subject Matter: 3 Part Test A reissue will not be granted to “recapture“ claimed subject matter which was surrendered in an application to obtain the original patent THREE STEP TEST FOR
42、RECAPTURE:(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and(3) finally, we determ
43、ine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture ruleNorth American Container, 415 F.3d at 1349, 75 USPQ2d 1545 at 1556(Fed. Cir. 2005).22Recapture: 1st StepA. The First Step - Was There Broadening
44、? Compare reissue claim scope with scope of patented claims A reissue claim is broadened where some limitation of the patent claims is no longer required in the reissue claim see MPEP 1412.03 previously discussedIf the reissue claim is not broadened in any respect as compared to the patent claims, t
45、he analysis ends; there is no recapture23Recapture: 1st Step SummaryWhere the reissue claims:n are narrower than the claims of the original patent in all aspects OR n are equal in scope to the patent claims, there is no recapture as to those reissue claims. Where, reissue claims are:a. broader in at
46、 least one respect; ORb. both broadened and narrowed compared with the patent claims the nature of the broadening and narrowing must be examined to determine whether the reissue claims are barred as being recapture of surrendered subject matter24Recapture: 1st step (cancelled claims)Comparing Reissu
47、e Claims with Canceled Claims: “Canceled claims“: claims canceled from the original application to obtain the patent for which reissue is now being sought:n can simply be canceled and not replaced by others, orn can be canceled and replaced by other claims which are more specific than the canceled c
48、laims in at least one aspect to thereby define over the art of record.25Recapture: 1st step (cancelled claims) The recapture rule bars the patentee from acquiring, through reissue, claims that are in all aspects of the same scope as, or broader in scope than, those claims canceledfrom the original a
49、pplication to obtain a patent. Ball Corp. v. United States, 729 F.2d 1429 at 1436, 221 USPQ 289 at 295 (Fed. Cir. 1984).26Recapture: 2nd step B. Second Step: determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution “Surrender-generating limitation” The “limitation” presented, argued, or stated to make the claims patentable over the art (in the application) “generates” the surrender of claimed subject matter27Recapture: 3rd Step C. The
