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Clarifying patent law’s recapture bar

February/March IP Newsletter 2023

Patent applicants sometimes amend their original applications in response to a patent examiner’s rejection — for example, adding or withdrawing elements so that the invention isn’t obvious and, thus, unpatentable. Such amendments can have long-standing effects, though, as one inventor learned the hard way when he tried to obtain a reissue patent.

Search for patent protection

The inventor initially applied for a patent related to the display of search results. After the application was rejected for covering patent-ineligible claims under Section 101 of the Patent Act, the inventor amended the application to include a “processor.” The patent examiner found the amendment tied the claimed methods to a particular machine, making it patent-eligible. A patent (the 901 patent) was eventually issued.

While that application was pending, the inventor filed a continuation application with similar claims, including the processor limitation. This led to another patent (the 111 patent).

The inventor later filed a reissue application to amend the claims in the 111 patent. He added several new limitations but removed the processor limitation. This would essentially expand the scope of his patent protection by eliminating the need for a processor.

The examiner rejected the patent as obvious. The Patent Trial and Appeal Board affirmed — but it also rejected the reissue claims because the removal of the processor limitation was an improper “recapture of surrendered subject matter.” The inventor turned to the U.S. Court of Appeals for the Federal Circuit for relief.

Poor results

The U.S. Supreme Court has recognized that a patentee may seek reissue of a patent if it erroneously claimed less than it had a right to claim in the original patent. A statute later codified that ruling, allowing reissue when a patent is deemed wholly or partly inoperative or invalid due to an error.

The recapture rule stems from the reissue statute. It bars patentees from using reissue to “recapture” claims that were removed — or surrendered — from the original patent application. Patentees can, however, use reissue to acquire claims that are narrower than the claims canceled from the original application. The rule is intended to strike a balance between allowing a patentee to correct errors and the public interest in finality and certainty of patent rights.

The Federal Circuit found that the inventor here sought to reclaim a broader claim scope related to the surrendered claims. As it noted, he first deliberately added the “processor” claims during the prosecution of the 901 application to overcome the Sec. 101 rejection. He then removed terms referring to a processor from the reissue application.

While the reissue statute requires an error, the court said, the inventor in this case “made no mistake.” Deliberate withdrawal or amendment of claims to obtain a patent doesn’t involve the requisite inadvertence or mistake. The inventor couldn’t use the reissue application as “a Trojan horse to recapture that which he deliberately gave up.”

The court dismissed the inventor’s argument that the recapture rule applies only when claims are amended or withdrawn to overcome rejections based on Sec. 102 (which requires patented inventions be novel) and Sec. 103 (which requires such inventions be nonobvious). These are  known as “prior art” rejections, meaning applications that are rejected because earlier references (prior art) indicate the claimed inventions weren’t novel or were obvious.

While the court acknowledged that many of its previous decisions regarding the recapture rule involved prior art rejections, that didn’t mean the rule was limited to that context. The public’s reliance interest, it said, also applies to subject matter surrendered because of Sec. 101 rejections.

The Federal Circuit disagreed, too, with the inventor’s reliance on a provision in the Manual of Patent Examining Procedure (MPEP). The MPEP isn’t binding on the court. Moreover, it only summarizes the court’s underlying precedent — which refers to cases involving prior art rejections but doesn’t expressly prohibit the recapture rule from applying to amendments made for other reasons.

Gone but not forgotten

The court’s ruling is a strong reminder that deliberately limiting patent claims will preempt the possibility of recapture in a patent reissue. It’s also worth noting that the court considered not just the 111 patent for which reissue was sought but the entire patent family’s prosecution history — including the 901 patent.

Sidebar: Defective inventor declaration also dooms reissue application

The inventor in In re McDonald (see main article) alternatively contended that the Patent Trial and Appeal Board (PTAB) erred in rejecting his reissue claims because they were based on a defective “inventor reissue declaration.” Specifically, the PTAB found his declaration didn’t cite an error that qualified for correction by reissue. The reissue statute requires that the declaration identify at least one such error.

The declaration in question identified the error as the existence of allegedly unnecessary “processor” limitations. The U.S. Court of Appeals for the Federal Circuit agreed with the PTAB that this error was uncorrectable by reissue because doing so would violate the recapture rule. The inventor’s argument on the defectiveness of the declaration “rises and falls” with his argument on the violation of the recapture rule — and that argument failed.