Federal Circuit Addresses Recapture Rule in Patent Reissue Proceedings


In its May 8 opinion In re Youman, the U.S. Court of Appeals for the Federal Circuit bolstered the utility of reissue proceedings as a means to broaden the scope of claims of issued U.S. patents. The Federal Circuit adopted a restricted interpretation of the recapture rule as applied in reissue proceedings before the U.S. Patent and Trademark Office, thereby expanding the claim scope that potentially is available to a patent owner in a broadening reissue.

On the heels of its March 5 decision In re Staats2, In re Youman marks the second time this year that the Federal Circuit has ruled for a patent owner in the context of a broadening reissue. The broadening of a claim in a reissue proceeding is limited by the recapture rule. The recapture rule prohibits a patentee from using a broadening reissue to regain claim scope that was relinquished during the original prosecution of the patent to obtain allowance. In re Youman helps to clarify those situations in which the broadening of a claim during reissue is permissible under the rule.

In re Youman involved an appeal from a decision of the Board of Patent Appeals and Interferences (Board) upholding a patent examiner’s rejection of broadening reissue claims as violating the recapture rule. The patent at issue relates to an electronic program scheduling system allowing users to navigate and access television programs using a remote control. Original claim 1 of the patent application recited an electronic television programming guide (EPG) comprising:

Please see full alert below for more information.

LOADING PDF: If there are any problems, click here to download the file.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© K&L Gates LLP | Attorney Advertising

Written by:


K&L Gates LLP on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.