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ARTICLE · 16 JUNE 2011

Perils of Reissue - Recapture Doctrine Has Teeth!

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Patent owners beware! Over the past year, the Federal Circuit has issued two major rulings1 which stand as a warning to patent owners that when requesting reissue of an arguably defective patent.

United StatesIntellectual Property
Bracewell LLP
Bracewell LLP
Constance Rhebergen
Constance Rhebergen

Patent owners beware! Over the past year, the Federal Circuit has issued two major rulings1 which stand as a warning to patent owners that when requesting reissue of an arguably defective patent, if you attempt to broaden aspects of the claims relating to subject matter surrendered during prosecution of the defective patent,2 courts (and now likely the U.S. Patent Office as well) will extensively examine the "entire" prosecution history of the defective patent and its family to determine if you are attempting to recapture the surrendered subject matter.3 This means that the review will not only include the prosecution history of the "defective" patent undergoing reissue, but also the prosecution history of any and all "ancestor patent applications."4 The warning is out. Improper recapture of surrendered subject matter will not be tolerated.

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