The Federal Circuit Affirms the Use of Continuing Patent Applications to Extend the Statutory Broadening Reissue Period beyond Two Years

by K&L Gates LLP
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In the recent decision In re Erik P. Staats and Robin D. Lash, No. 2010-1443 (March 5, 2012), the U.S. Court of Appeals for the Federal Circuit addressed the use of continuing applications under 35 U.S.C. §§ 120 or 121 to extend the two-year time limit imposed by 35 U.S.C. § 251 for broadening reissue patent applications. The Court held that a continuing reissue application filed after the two year time limit and presenting broadened claims satisfies the timeliness requirement, provided that the initial reissue application is filed within the two-year time limit. The Court rejected a requirement that broadened claims added in a continuing reissue application must relate to or be directed to the same embodiment claimed in the initial reissue application. The Staats decision permits broadening reissue practice where the full scope of the requested broadening is not set out in a first reissue application filed within the two-year statutory period. As such, the decision provides patentees additional leeway to seek patent protection for previously unclaimed subject matter long after the original patent has issued.

Reissue Patent Applications

The reissue statute, 35 U.S.C. § 251, permits the correction of wholly or partly inoperative or invalid patents by authorizing the Patent Office to reissue corrected patents where errors in the patents were made without deceptive intention. The errors correctable through reissue include inoperability "by reason of the patentee claiming … less than he had a right to claim in the patent." 35 U.S.C. § 251. The statute thus provides for the filing of so-called "broadening reissue applications" in which the scope of the claims sought in reissue extends beyond the scope of the patent’s claims. However, the reissue statute imposes a two-year time limit, beginning on the date of the grant of a patent, within which any broadening reissue application must be filed.

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