Potential Reissue Pitfalls: The Recapture Rule

Under 35 U.S.C. § 251, applicants may file a reissue application to amend the claims contained in the issued parent patent. However, “claims that are ‘broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution’ are impermissible.” In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997) (internal quotation omitted). In other words, applicants cannot broaden claims to recapture subject matter surrendered during prosecution of the issued patent. Application of the recapture rules requires a three step process: (1) determine whether and in what aspect the reissue claims are broader than the patent claims; (2) determine whether the broader aspects of the reissue claims relate to surrendered subject matter; and (3) determine whether the surrendered subject matter has crept into the reissued claim. Id. at 1468-69.

Applicants must carefully consider whether filing a reissue application will result in worthwhile claims. If the applicants choose to amend the claims, they can avoid the recapture rule if the reissued claims materially narrow the issued patent claims, but only so long as the narrowing is related to the surrendered subject matter. Id. at 1470. In determining the scope of reissued claims, applicants should review the prosecution history to determine the portions of the original claims that have been amended and should further review the Notice of Allowance of the original patent. If the Examiner cited specific reasons or simply cited all of the independent claims for the reasons for allowance, the applicant may have difficulty in amending the claims. Therefore, applicants should seriously consider filing a continuation application if the claims in the issued patent are unacceptable.

Esther Queen

About Esther Queen

Esther Queen primarily focuses her intellectual property practice on patent law. She prepares patent applications for prosecution before the United States Patent and Trademark Office, conducts patent validity and infringement studies, and assists clients in patent matters. She has patent experience in the areas of chemistry, pharmaceuticals, biochemistry, business methods, and mechanical devices.


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