Recapture, Orita Doctrine & Same
Invention Limit Scope
As provided by 35 U.S.C. § 251,
Patent Reissue is a mechanism by which a Patent Owner may
correct an error in an issued patent. A proper reissue application
is directed to an error that renders an issued patent wholly, or
partly, inoperative. Such an error could be the mere absence of narrower dependent
claims. In re Tanaka (CAFC 2011)
Although patent reissue allows for the correction of mistakes in
claim scope, the proceeding is not a "do-over" of the
original prosecution — not even when broadening. For example,
claim scope previously surrendered may not be
"recaptured" via a broadening patent reissue. This same
public reliance policy reasoning is utilized in other obscure
aspects of patent reissue practice. For example, the Orita
doctrine, prevents Patent Owners from obtaining by
reissue, restricted claims that were never pursued.
