Demonstrating Unequivocal Intent to Broaden in Reissue

Takeaways:

• Patentees must demonstrate “unequivocal intent” to broaden claims in a broadening reissue.
• To establish a broadening reissue, a patentee’s actions must align with their words within the two year statutory period.

Reissue provides patentees with an opportunity to correct an “error” after a patent has issued. As provided in 35 U.S.C. § 251, correctable errors include “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 statute places a time limit on patentees seeking broader claim scope with the provision “[n]o reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.” This language raises several legal questions including the meaning of “applied for within two years” and how to demonstrate a patentee is seeking to broaden original patent claims during reissue.

Those unfamiliar with specialized reissue practice often make costly errors here.

First, a reissue application filed on the two-year anniversary date from the patent grant is considered to be filed within two years of the patent grant. Switzer v. Sockman, 333 F.2d 935 (CCPA 1964) (providing a similar rule in interferences).

Second, the courts have determined that patentees must provide “unequivocal intent” to broaden claims in a broadening reissue application. And that intent must be clearly filed within two years of the grant of the original patent. In re Doll, 419 F.2d 925, 928 (CCPA 1970). This requirement is founded in public policy to provide public notice as to the particular error which a patentee seeks to correct by reissue without imposing a degree of uncertainty to the nature of that error.

It is common for a patentee to parrot the statute’s error language of “by reason of the patentee claiming more or less than he had the right to claim in the patent” in their reissue declaration (or to merely check the corresponding box on the reissue declaration form without providing further explanation on the second page of the form.) But without more, this simply does not demonstrate an unequivocal intent to broaden.

Moreover, merely parroting the statute’s “more or less” language accompanied by a presentation of new broader independent claim(s) would not serve to demonstrate unequivocal intent to broaden as the error must be in the original patent. Similarly, solely broadening an original dependent claim is insufficient to establish unequivocal intent to broaden or created a broadening reissue. The rationale here is based on a dependent claim being construed to contain all the features of the claim upon which it depends. See MPEP 1412.03 II.

In a broadening reissue, a patentee’s declaration must include language indicating the specific independent claim language believed to be unnecessarily narrow and the reissue application must include a corresponding claim amendment or new claim broadening the identified overly narrow language.

Once broadening intent is unequivocally established, patentee may then present broadened claims throughout the life of the patent, including additional or different broadened claims in any properly filed reissue continuation and/or divisional applications. In re Staats, 671 F.3d 1350 (Fed. Cir. 2012). Staats held that “after a broadening reissue application has been filed within the two year statutory period, an applicant is ‘not barred from making further broadening changes’ after the two year period” regardless of whether the further broadening changes are unrelated to the prior broadening reissue application. Id. at 1355. This can add great value to the patent family, especially if the broadening reissue is filed prior to any patent litigation or patentability review proceedings.

Failure to establish “unequivocal intent” to broaden within two years can be catastrophic to the patentee. “The failure by an applicant 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.” In re Fotland, 770 F.2d 31 (Fed. Cir. 1985). In Fotland, there was no broadening amendment or statement of record that would have shown an intent to broaden within two years of the patent’s grant. Thus Fotland was precluded from broadening the patent.

Patentees considering broadening reissue are well-advised to seek experienced reissue counsel skilled at navigating costly pitfalls.