Reissue Practice Update

In the US, for a limited time, a patent may be reissued with broader claims.  The public policy behind permitting the broadening of a patent is to allow the patentee to correct an inadvertent error.  

Pursuant to the recapture doctrine, broadening cannot result in the recapture of the subject matter that was surrendered during the prosecution of the patent.  It has been understood that the purpose of the recapture doctrine is to prevent the broadening of a claim that was intentionally narrowed during the prosecution of the patent.  

To determine whether there is recapture the following three step test is applied:

(1) determining whether, and in what respect, the reissue claims are broader in scope than the original patent claims;

(2) determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) determining whether the surrendered subject has crept into the reissue claims.


Last week, the Federal Circuit issued In re Mostafazadeh in which the court clarified the application of the recapture doctrine.  The court stated that the recapture doctrine applies when a limitation added to the claims during prosecution is eliminated. The court further stated that recapture may be avoided if the limitation that was added during prosecution is not entirely eliminated but submitted in modified form as long as the modified limitation is materially narrower relative to the surrendered subject matter such that the surrendered subject matter is “not entirely or substantially recaptured.”  

When applying the test, the court found the narrowing limitation in the claims of the reissue application not material because it read on a feature disclosed in the prior art.  The prior art cited by the court was referred to in a footnote rather than in the body of the opinion.  In that footnote, the court explained that the prior art was disclosed in the background section of the specification of the patent and relied on by the examiner.

It appears, therefore, that the Patent Office could now demonstrate lack of materiality as long as the Patent Office can show that the narrowing limitation reads on the prior art.  It is, however, debatable whether the Patent Office is required to show that the prior art was cited and relied on by the examiner since the decision does not seem to indicate that such is necessary.   

In re Mostafazadeh summarizes the recapture doctrine well.  Given the importance of the recapture doctrine to patent prosecution practice, I highly recommend reading this decision.