1412.03 Broadening Reissue Claims [R-10.2019]

35 U.S.C. 251(d) and the corresponding final paragraph of pre-AIA 35 U.S.C. 251 prescribe a 2-year limit for filing applications for broadening reissues.

I. MEANING OF “BROADENED REISSUE CLAIM”

A broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent. If a disclaimer is filed in the patent prior to the filing of a reissue application, the disclaimed claims are not part of the “original patent” under 35 U.S.C. 251. The court in Vectra Fitness Inc. v. TNWK Corp., 162 F.3d 1379, 1383, 49 USPQ2d 1144, 1147 (Fed. Cir. 1998) held that a reissue application violated the statutory prohibition under 35 U.S.C. 251 against broadening the scope of the patent more than 2 years after its grant because the reissue claims are broader than the claims that remain after the disclaimer, even though the reissue claims are narrower than the claims that were disclaimed by the patentee before reissue. The reissue application was bounded by the claims remaining in the patent after a disclaimer is filed.

A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects. See, e.g., 37 CFR 1.175(b). A claim in the reissue application which includes subject matter not covered by the patent claims enlarges the scope of the patent claims. For example, if any amended or newly added claim in the reissue contains within its scope any conceivable product or process which would not have infringed the patent, then that reissue claim would be broader than the patent claims. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603, 120 USPQ 185, 186 (CCPA 1958). A claim which covers something that the original claims do not is a broadened claim. A claim would be considered a broadening claim if the patent owner would be able to sue any party for infringement who previously could not have been sued for infringement. Thus, where the original patent claims only the process, and the reissue application newly adds product claims, the scope of the claims has been broadened because a party could not necessarily be sued for infringement of the product based on the claims of the original patent (if it were made by a different process).

The addition of combination claims in a reissue application where only subcombination claims were present in the original patent could be a broadening of the invention. The question which must be resolved in this case is whether the combination claims added in the reissue would be for “the invention as claimed” in the original patent. See Ex parte Wikdahl, 10 USPQ2d 1546, 1549 (Bd. Pat. App. & Inter. 1989). The newly added combination claims should be analyzed to determine whether they contain every limitation of the subcombination of any claim of the original patent. If the combination claims (added in the reissue) contain every limitation of the subcombination (which was claimed in the original application), then infringement of the combination must also result in infringement of the subcombination. Accordingly, the patent owner could not, if a reissue patent issues with the combination claims, sue any new party for infringement who could not have been sued for infringement of the original patent. Therefore, broadening does not exist, in spite of the addition of the combination.

II. SCOPE OF DEPENDENT CLAIM ENLARGED – NOT BROADENING

As pointed out above, a claim will be considered a broadened reissue claim when it is greater in scope than each and every claim of the patent to be reissued. A corollary of this is that a claim which has been broadened in a reissue as compared to its scope in the patent is not a broadened reissue claim if it is narrower than, or equal in scope to, any other claim which appears in the patent. A common example of this is where dependent claim 2 is broadened via the reissue (other than the addition of a process step to convert an intermediate to a final product), but independent claim 1 on which it is based is not broadened. Because a dependent claim is construed to contain all the limitations of the claim upon which it depends, claim 2 must be at least as narrow as claim 1 and is thus not a broadened reissue claim.

III. NEW CATEGORY OF INVENTION ADDED IN REISSUE – GENERALLY IS BROADENING

The addition of process claims as a new category of invention to be claimed in the patent (i.e., where there were no method claims present in the original patent) is generally considered as being a broadening of the invention. See Ex parte Wikdahl, 10 USPQ2d 1546, 1549 (Bd. Pat. App. & Inter. 1989). A situation may arise, however, where the reissue application adds a limitation (or limitations) to process A of making the product A claimed in the original patent claims. For example:

• (1) a process of using the product A (made by the process of the original patent) to make a product B, disclosed but not claimed in the original patent; or
• (2) a process of using the product A to carry out a process B disclosed but not claimed in the original patent.

Although this amendment of the claims adds a method of making product B or adds a method of using product A, this is not broadening (i.e., this is not an enlargement of the scope of the original patent) because the newly claimed invention contains all the limitations of the original patent claim(s).

IV. WHEN A BROADENED CLAIM CAN BE PRESENTED

A broadened claim can be presented within two years from the grant of the original patent in a reissue application. In addition, a broadened claim can be presented after two years from the grant of the original patent in a broadening reissue application which was filed within two years from the grant. Where any intent to broaden is unequivocally indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. (Note: A statement that “the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim” is NOT an unequivocal statement of an intent to broaden.) Thus, a broadened claim may be presented in a reissue application after the two years, even though the broadened claim presented after the two years is different than the broadened claim presented within the two years. Finally, if intent to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing (continuation or divisional) reissue application after the two year period. See In re Staats, 671 F.3d 1350, 101 USPQ2d 1930 (Fed. Cir. 2012) which dealt with a continuation of a first reissue application in which the first reissue application was filed within two years of the patent grant. The broadened claims in the continuation reissue application were to an embodiment “alternative” to, and “unrelated” to, the broadened claims of the first reissue application that were filed within the 2-year limit. Notice of broadening was found to be sufficient in this instance, with the court holding that there is no basis for requiring the later broadened claims in the continuation reissue application to be related to, or directed to the same embodiment as in the first reissue application. Id. at 1355, 101 USPQ2d at 1934. “[A]fter a broadening reissue application has been filed within the two year statutory period, an applicant is ‘not barred from making further broadening changes’ after the two year period” regardless of whether the further broadening changes are unrelated to the prior broadening reissue application. Id. A reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) for a similar rule in interferences.

See also the following cases which pertain to broadened reissues:

In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing reissue application were properly rejected under 35 U.S.C. 251 because the proposal for broadened claims was not made (in the parent reissue application) within two years from the grant of the original patent and the public was not notified that broadened claims were being sought until after the two-year period elapsed.)

In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The failure by an applicant to include an oath or declaration indicating a desire to seek broadened claims within two years of the patent grant will bar a subsequent attempt to broaden the claims after the two year limit.)

In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985) (en banc) (A reissue application with broadened claims was filed within two years of the patent grant; however, the declaration was executed by the assignee rather than the inventor. The Federal Circuit permitted correction of the improperly executed declaration to be made more than two years after the patent grant.)

In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970) (If the reissue application is timely filed within two years of the original patent grant and the applicant indicates in the oath or declaration that the claims will be broadened, then applicant may subsequently broaden the claims in the pending reissue prosecution even if the additional broadening occurs beyond the two year limit.).

Form paragraphs 14.12 and 14.13 may be used in rejections based on improper broadened reissue claims.

V. BROADENING REISSUE – OATH/DECLARATION REQUIREMENTS

A. Reissue Application Filed On or After September 16, 2012

Any reissue application filed on or after September 16, 2012 must be applied for by all of the patentees. However, in a broadening reissue application filed on or after September 16, 2012, the original reissue oath or declaration must be signed by all of the inventors, unless the application for the patent (for which reissue is requested) was filed under 37 CFR 1.46 by the assignee of the entire interest (see 37 CFR 1.175(c)(2)). See also MPEP § 1414. A supplemental oath or declaration to account for errors corrected subsequent to the original oath or declaration is not needed for the application; however, a replacement oath or declaration would still be required where there is a failure to identify any error, or a failure to identify at least one error of the type that would support a reissue. Such a replacement oath or declaration must be signed by all of the inventors, unless the application for the patent (for which reissue is requested) was filed under 37 CFR 1.46 by the assignee of the entire interest.

For any broadening reissue application filed on or after September 16, 2012, the inventor’s oath or declaration must identify a specific claim that the application seeks to broaden. See 37 CFR 1.175(b). A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement.

B. Reissue Application Filed Before September 16, 2012

A broadening reissue application filed before September 16, 2012 must be applied for by all of the inventors (patentees), that is, the original reissue oath or declaration must be signed by all of the inventors. See also MPEP § 1414. The error in not presenting broader claims must have been made without deceptive intent. If a supplemental oath or declaration in a broadening reissue application is needed in the application in order to fulfill the requirements of 37 CFR 1.175, the supplemental reissue oath or declaration must be signed by all of the inventors. See In re Hayes, 53 USPQ2d 1222 (Comm’r Pat. 1999) and MPEP § 1414.03.