By: Steve Petkovsek
Part 1 of this series gives a basic overview of recapture, its statutory basis, and notes some of the changes to the treatment of inequitable conduct post-AIA (America Invents Act). Part 2 discusses how the court has interpreted limitations such as recapture doctrine and intervening rights. It also covers some general strategies on how to use reissue effectively. Part 3 compares patent reissue to other post-grant proceedings a prosecutor may have in his or her arsenal in both a legal and practical context.
PART 2- LIMITATIONS ON REISSUE: RECAPTURE DOCTRINE AND INTERVENING RIGHTS
Part 2 discusses how the court has interpreted limitations such as recapture doctrine and intervening rights. It also covers some general strategies on how to use reissue effectively.
The language of the original claims and original prosecution record limit to what extent a patent’s claims can be changed during reissue, which is a doctrine known as recapture. There is a three-step approach taken by courts to analyze recapture, which has not been changed by the AIA. If the answer to a question is no, then recapture is not present and the analysis ends. The approach is as follows:
- Is the proposed reissue claim broader than the underlying patent claim?
- Are the broader aspects related to the surrendered subject matter?
- Has surrendered subject matter crept into the reissue claim?
A claim is broadening under the first inquiry if any limitation present in the original claims is no longer required, even if the claim is narrower in other respects. Thus, if the new claims cover any conceivable product, process, etc. which would have not infringed the original patent, the claims are broadening. A new claim must be broader than each and every original claim of the patent to be broadening during reissue. A new category of invention is generally broadening but not necessarily so if the new category contains all of the limitations of the original claim. Finally, broadening subject matter can be added within two years of original issuance only.
If broadening is present, it must be related to surrendered subject matter for recapture to apply. Subject matter is considered “surrendered” if a limitation was relied upon for allowance. Evidence can be from anywhere in the prosecution history, including amendments or even argument. If no limitation was necessary for allowance, there is no surrender and no recapture. If surrender does exist, the examiner must determine that the broadening occurred in the same area of subject matter. Importantly, the focus of analysis of this second step is on the subject matter surrendered during the original application in the context of the original claims and not subsequent amendments.
The third question determines whether the reissued claims are materially narrowed in other respects to compensate for the broadening in the area of surrender. This analysis takes place in two parts. First, the reissue claim is compared to any claims canceled or amended during prosecution of the original application, and if the claim is as broad as or broader than a claim which was cancelled or amended to define over the art, recapture applies. Second, if a reissue claim omits any limitation which was added or argued during the original prosecution to overcome prior art, recapture applies, even if the claim is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects. However, recapture does not always apply if the limitation is merely broadened; if it materially narrows relative to the original claim, recapture does not apply. This approach ensures that a patentee is unable to reclaim what was deliberately surrendered while allowing room for error. Thus recapture doctrine allows for some flexibility in broadening claims, allowing patentees to recoup what should have been claimed while still preventing them from arguing identical issues a second time.
The second half of the reissue statue is in 35 U.S.C. § 252, which describes what rights a reissued patent gives with respect to the original patent and where these rights are limited. The original patent is surrendered, and the reissued patent takes its place with the same expiration date as the original. The reissue is treated as if it were the original patent in its amended form for any causes of action after the date of reissuance. Pending causes of action based on substantially unchanged claims are also not affected, and damages can be collected from as early as the original date of issuance. Thus, reissuance is a valid way to shore up a patent’s claims for litigation without running the risk of losing damages.
However, if a claim has been substantially changed, it is possible that a potential infringer has gained intervening rights. These rights, known as absolute intervening rights, allow the infringer to continue to sell, offer for sale, use, or purchase the product without a license despite the new claims, but do not allow the infringer to continue to make or import the infringing product. Intervening rights usually occur where a reissue claims are broader in some respect than the original claims. The rights may be granted to one who did not infringe the original claims but has become an infringer due to the reissue. They may not occur where the language of a claim has not been amended. Intervening rights may also be granted if an intentional infringer knew of the patent but had a good defense to infringement under the original claims, such as a piece of invalidating prior art. This question is settled in litigation, and reissue prosecution history may be a factor if the prior art in question was addressed. Since intervening rights work on reliance rationale, if an infringer has made substantial preparations prior to the reissuance, the infringer might be granted not only the basic intervening rights but also equitable intervening rights, which include the ability to make and import the infringing product. This is the case as long as there was actual reliance on the scope of the original claims, and the term is determined as a matter of equity on a case-by-case basis.
Strategies of Reissue Generally
Reissue is best used to cure a substantial error in a patent which might cause it to be invalid, and thus it should be used either when it is the only option available or when a patentee wishes to make multiple corrections to a patent at the same time. This is because the patentee must necessarily admit a defect in the patent and put the entire issued patent at risk for a second time. However, it is the only way to change the specification or drawings of a patent after it has issued. All prosecution options are on the table, so a patentee can file divisional applications and request for continued examination, a less limited appeal than through reexamination proceedings. The reissue application can be abandoned at any time.
One strategic way to use reissue is to add claims of narrower scope in order to hedge against invalidity. This practice was expressly allowed by the Federal Circuit in In Re Tanaka. There is no need to amend the broader claims of the originally issued patent; especially if the claims are added within two years of the original issue date, there will be no need to argue that they are not broadening. Adding narrower claims also avoids the possibility of creating intervening rights to a competitor. However, an error in conduct must still be demonstrated in addition to the error in the patent. In Tanaka, the error was a misunderstanding of U.S claiming process by the foreign attorney. However, under the AIA, the USPTO will not make an inquiry into the origin of the error other than its sufficiency, so the patentee has an increased amount of flexibility in this respect as compared to prior cases.
Other strategic reasons to file for reissue include attempting to tailor claims to a new invention of a competitor or, for pre-AIA patents, attempting to provoke an interference with a third party patent holder. The patentee must be careful not to create intervening rights if attempting to broaden claims. If the only issue is a potentially invalidating piece of prior art, a patentee should forgo reissue and either wait for litigation on the issue or attempt to resolve it via an ex parte reexamination proceeding, as described below.
Patent reissue can sometimes be a great mechanism to prepare for litigation, licensing negotiations, or other assertions of a patent. But patent reissue, of course, is not the only option. Practical concerns like cost or time constraints may require that other post-grant avenues are pursued. Part 3 will compare patent reissue to other post-grant proceedings a prosecutor may have in her arsenal both in a legal and practical context.
 Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 28.
 MPEP § 1412.02.
 See MPEP § 1412.03
 There is a special case for biological claims which qualify for pre-AIA 35 U.S.C. 103(b) in this regard. See MPEP § 1412.02 II for details.
 MPEP § 1412.02.
 See In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)).
 See id.
 See Marine Polymer Technologies, Inc. v. HemCon, Inc., No. 2010-1548, slip op. at 26 (Fed Cir. March 15, 2012) (en banc).
 Emery, David P., Reissue and Reexamination of Patents, 15-19 (2008).
 In re Slimfold Mfg. Co. v. Kinkead Industries, Inc., 1 USPQ2d 1563 (Fed. Cir. 1987).
 See In re Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011).
 Marion, Michael B., In Re Tanaka (2014), http://www.postgrantproceedings.com/patent_modification/Article-In_re_Tanaka.html.
 See In re Tanaka, 640 F.3d at 1247-48.
 See Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1564 (Fed. Cir. 1989).
 Emery, David P., Reissue and Reexamination of Patents, 15-21(2008).
 MPEP § 1412.02