Four Pitfalls to Understand in Reissues

Takeaways:

• Not all patent errors are correctible via Reissue.
• Restriction practice applies to Reissue applications.

1. Non-Elected Invention Recapture: A reissue application cannot add claims directed to a previously non-elected invention when a divisional or continuation application was not filed after the underlying application received a restriction requirement. MPEP 1412.01(II) forbids filing a reissue for any claim scope of a non-elected Group if the Applicant failed to first file a divisional or continuation application for the non-elected Group. This scenario is not considered an error correctable by reissue. For support, the MPEP relies on In re Watkinson, 900 F.2d 230 (Fed. Cir. 1990), In re Weiler, 790 F.2d 1576 (Fed. Cir. 1986), In re Orita, 550 F.2d 1277, 1280 (CCPA 1977) and In re Mead, 581 F.2d 251 (CCPA 1978). The Office will issue a rejection 35 U.S.C. § 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent.

2. Broadened Claims Face Potential for Restriction by Original Presentation Requirement: If a broadening reissue adds new claims that are patentably distinct from the original patent claims, the Examiner will likely issue a restriction based on original presentation and require a divisional reissue application be filed. MPEP 1450 explains that based on 37 C.F.R. 1.176(b) a “[r]estriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.” When this occurs “The claims to the original patented invention will continue to be examined and the non-elected claims (to any added invention(s)) will be held in abeyance in a withdrawn status. The non-elected claims will only be examined if filed in a divisional reissue application.”

3. Recapture Analysis Encompasses the Entire Family of Underlying Applications. Recapture disallows adding claim scope to an issued patent for any embodiments given up during prosecution across the entire family of underlying applications, and is not limited to only the patent requested to be reissued. For example, MPEP 1412.02 sets forth “The “original application” includes the prosecution record of the application that issued as the patent for which the reissue application was filed. In addition, the “original application” includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316-17 (Fed. Cir. 2010). For example, surrender may occur because of the prosecution history of related applications.”

4. Replies Require Reissue Format Amendments and a Separate Informal Annotated Section: Replies to a reissue office action must include a separate section discussing how the current filed claims were changed with respect to the issued patent and with respect to the last filed version of the claims. This explanation is required because new claims are required to be fully underlined each time they are filed and cannot show any formatting for new amendments. For example, MPEP 1453(V) explains:

“An amendment of a “new claim” (i.e., a claim not found in the patent, that was previously presented in the reissue application) must be done by presenting the amended “new claim” containing the amendatory material, and completely underlining the claim, including the claim number.…The presentation cannot contain any bracketing or other indication of what was in the previous version of the claim. This is because all changes in the reissue are made vis-à-vis the original patent, and not in comparison to the prior amendment. Although the presentation of the amended claim does not contain any indication of what is changed from the previous version of the claim, applicant must point out what is changed in the “Remarks” portion of the amendment.”