Reissue Recapture Rule

  • Reissue Recapture: Reissue Claims Invalid If Substantially Recapture Subject Matter Intentionally Surrendered During Original Prosecution: “a patentee’s reissue claims are invalid when the patentee broadens the scope of a claim in reissue to cover subject matter that he surrendered during prosecution of the original claims…. a patentee may violate the rule against recapture by claiming subject matter in a reissue patent that the patentee surrendered while prosecuting a related patent application.” MBO Labs. (Fed. Cir. 04/12/10) (aff’g invalidity of reissue claims attempting to recapture subject matter surrendered during prosecution of an ancestor application; extended discussion of test and reason for reissue-recapture rule); Greenliant (Fed. Cir. 08/22/12) (reissue claims invalid for recapture where omitted a product-by-process limitation that had been argued in original prosecution to impart structural differences); cf. AIA Eng’g (Fed. Cir. 08/31/11) (rev’g Summ. J. of invalidity); Cubist Pharm. (Fed. Cir. 11/12/15) (aff’g no violation of recapture rule, in part because claims were withdrawn in response to indefiniteness rejection not prior art). “The recapture rule applies to claim amendments made to overcome a § 101 patent eligibility rejection” to protect the public’s reliance interest. In re McDonald (Fed. Cir. 08/10/22) (overview of history of reissue recapture rule; there was an intentional surrender of claim scope where “processor” added to parent patent’s claims to overcome Sec. 101 rejection, and kept in claims of child patent; child patent cannot be reissued to remove “processor” from claims. Distinguishes Cubist as lacking intentional surrender of claim scope.)
  • Some Recapturing Permitted If Not Substantial: May avoid rule against recapture if reissue claims “materially narrow” the claims relative to original claims in manner that relates to the subject matter surrendered during the original prosecution, so that they do not recapture entire or substantially entire scope of what was surrendered. In re Youman (Fed. Cir. 05/08/12) (2-1) (confusing discussion); In re Mostafazadeh (Fed. Cir. 05/03/11) (aff’g PTO rejection of reissue application claims under rule against recapture: “the recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.”); In re Gen. Elec. (Fed. Cir. 10/18/19) (non-precedential) (aff’g PTO rejection of reissue claims where applicant added an attachment limitation to obtain allowance and reissue removes that limitation in favor of narrowed position limitation).

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