Broadening Reissue Application Filed Within Two Years Allows Subsequent Broadening Reissue Applications After the Two Year Bar Regardless of Whether the Claim Language is Related

By Kevin M. Repper

In the case of In re Erik P. Staats and Robin D. Lash, No. 2010-1443 (Fed. Cir. 2012), the Federal Circuit made a decision based on their interpretation of 35 U.S.C. §251 and the precedent court case In re Doll, 419 F.2d 925 (C.C.P.A).  35 U.S.C. §251 discloses that “whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent,…reissue the patent… for the unexpired part of the term of the original patent.” The reissue statute imposes a two-year limit when the patentee intends on broadening the scope of the claims of the original patent.

Doll interpreted section 251 and explicitly rejected the PTO’s argument that “claims presented in a reissue application filed within two years of the original patent grant are barred by 35 U.S.C. §251 when such claims are not submitted until more than two years after the grant and are broader in scope than both the original patent claims and the broadening reissue claims originally submitted.” Therefore, it is allowable for one to file broadening claims outside of the two year window as long as the patent holder filed initial broadening claims within the two year window. In the present case, the court must decide whether the Board correctly held that a broadening reissue application filed outside of the two year period is not timely if it is not related to an earlier application filed within the two year period.

Staats filed an application for a patent with the USPTO and it was issued on August 17, 1999 as U.S. Patent Number 5,940,600 (‘600 patent). The ‘600 patent described improvements to the management of isochronous data transfers such as the transfer of real-time video data from one component in a computer system to another component in the computer system. The ‘600 patent included a first embodiment, which used a linked list of buffers and a second embodiment that did not use the linked list of buffers. Both the first and second embodiments were described in the specification, however only the first embodiment was claimed in the original patent.

Staats timely filed a broadening re-issue application relating to the first embodiment in the specification.  Staats filed a second broadening reissue application on May 12, 2004, as a continuation of the first broadening reissue application. Again, the second broadening reissue application only addressed errors related to the first embodiment.  Almost seven years after the original ‘600 patent issued, Staats filed a third broadening reissue application as a continuation of the second broadening reissue application.  In the third broadening reissue, Staats added claims that were drawn towards the second embodiment that did not include the linked list of buffers.

Although acknowledging the precedent in Doll, the examiner rejected the third reissue application under 35 U.S.C. §251 after finding that the new broadened claims were not related in any way to what was covered in the original broadening reissue.  On appeal, although recognizing that it was bound by Doll, the Board found that the newly added broadening claims were directed to an invention that was independent and distinct from that claimed in the original patent application and the first broadening reissue application. According to the Board, the broadening sought in the third application was unforeseeable from the original reissue application and the public notice function of 35 U.S.C. §251 had not been met.

The PTO argued that the language of the statute, requiring that the broadening reissue be applied for within two years, does not suggest that the first broadening reissue can serve as a placeholder for later applications. The PTO contended that a patentee must give the public adequate notice within two years of what the patentee intends to broaden and Staats clearly did not do in regards to the claims listed in the third broadening re-issue application.

The PTO continued to argue that while Doll is binding it is nevertheless distinguishable. According to the PTO, the broadened claims challenged in Doll were related to the subject matter covered by the claims identified and broadened within the two-year window and thus was adequately notified of Doll’s later broadening.  The court rejects this argument because the court in Doll never made the distinction between related and unrelated claims.  Doll simply ruled that the two year window only applies to the first broadening reissue application.  The court further points out that the PTO’s approach is unmanageable because it would be difficult to distinguish one patent embodiment from another or to determine when a later claim is related to an earlier one.

According to the court, as long as you file the first broadening reissue application within section 251’s two year limit, you may continue to file reissue applications outside of the two year limit, regardless of whether the claim language is related. Staats filed his first broadening reissue application within the two year window and therefore the Board’s rejection of the third reissue application was remanded for further proceedings consisting with the opinion.

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