• Reissue applications are subject to unique case law-developed legal doctrines based upon the error requirement of 35 U.S.C. § 251
  • One such doctrine is the recapture rule against recapture of surrendered subject matter whose lost subject matter is not a correctible error in reissue

One of the advantages of filing a reissue application within two years of the original patent’s grant is the ability to seek broader claims. More often than not, however, a broadening Reissue will be rejected by the CRU examiner based upon the doctrine of recapture. Understanding recapture begins with understanding the specific terms utilized in describing recapture, as also highlighted in our recent article, Four Pitfalls to Understand in Reissues.

Briefly stated, recapture is one of several reissue doctrines based upon the error requirement in 35 U.S.C. § 251 that prevents a reissue applicant from claiming subject matter “surrendered” during the prosecution of the original application. Recapture rejections are common in reissue applications, and recapture rejections have high affirmance rates on appeal to the Patent Trial and Appeal Board (PTAB) and later at the Federal Circuit.

Surrendered subject matter is created by a “limitation” presented, argued, or stated to make the claims patentable over the art in the original application, and can be created by presentation of new claims or amended claims to define the invention over the art, or by an argument or statement by applicant that a limitation of the claim(s) defines over the art. A patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261 (Fed. Cir. 2012).

Also of importance to the recapture doctrine is the meaning of “original application.” 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 (Fed. Cir. 2010). This means that surrender may occur because of the prosecution history of related applications, and the CRU examiners will review the entire family’s prosecution records. Recapture review across the entire patent family’s prosecution often surprises patent owners and their counsel.

The USPTO examines recapture under the three-step test for recapture succinctly restated in North American Container v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005),which states:

We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

While the recapture doctrine test itself seems relatively straight forward, application of the doctrine in reissue applications is much more nuanced. In addition to the detailed examples provided in MPEP 1412.02, the PTAB’s affirmance in Appeal 2023-004046 of Application 15/155,782 provides a clear walk-through of the recapture issue, rejection, and analysis of the recapture doctrine as applied by CRU examiners.

When seeking broader claims in reissue, a thorough consideration of the original and familial prosecution history and understanding of recapture doctrine is essential for patent owner’s and their counsel to success.

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