Federal Circuit Ruling Clarifies Recapture Rule For Reissue Claims Of Intermediate Scope

On May 8, the Federal Circuit in In re Youman, No. 2011-1136, 2012 WL 1598089, clarified years of recapture law by vacating a decision of the Board of Patent Appeals and Interferences that rejected reissue claims being pursued by a Ropes & Gray client. The decision should significantly change how certain types of "intermediate scope" reissue claims are examined by the Patent Office.

Background

The Recapture Rule generally prevents a patent owner from reissuing a patent to claim subject matter that was deliberately surrendered during the original prosecution. The Recapture Rule involves a three-step analysis: (1) determine whether and in what aspect the reissue claim is broader than the patent claim; (2) determine whether the broader aspects of the reissue claim relate to surrendered subject matter; and (3) if the reissue claim is broader relative to the patented claim in a manner related to the surrendered subject matter, determine whether the surrendered subject matter has crept back into the reissue claim. If the answer to the last question is "yes," the Recapture Rule bars the reissue claim.

Impermissible recapture typically occurs when a patent owner, on reissue, attempts to remove entirely a claim limitation that was added or argued during the original prosecution to avoid prior art. Sometimes, however, a patent owner realizes that a claim in an issued patent was inadvertently narrowed too much during prosecution. In such a case, the patent owner might desire to reissue the patent to modify the added limitation to broaden it to some extent, but not eliminate it entirely. The result would be a claim that is intermediate in scope between the original patent application claim before the overly narrow limitation was added, and the claim as it issued in the original patent with the overly narrow limitation.

In years past, following the reasoning of In re Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Inter. 2003), the Patent Office allowed reissue claims of intermediate scope. The Recapture Rule as applied to such claims was embodied in Section 1402.02(I)(C) of the Manual of Patent Examining Procedure ("MPEP") (8th ed., rev. 5, Aug. 2006), which stated:

if the reissue claim recites a broader form of the key limitation added/argued during original prosecution to overcome an art rejection (and therefore not entirely removing that key limitation), then the reissue claim may not be rejected under the recapture doctrine. Ex Parte Eggert, 67 USPQ2d 1716...