In a precedential panel opinion, In re Staats, the United States Court of Appeals for the Federal Circuit reversed a decision of the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences (“PTO”) and held that a continuing reissue application can be filed to add broadening claims after the two-year limit imposed by 35 USC § 251 has lapsed.1 The court further held that the broadened claims of the continuing reissue application need not be related to the broadened claims of the parent reissue application that was filed within the two-year limit. This decision reinforces the Federal Circuit’s predecessor court’s past decision in In re Doll 2 (possibly to the chagrin of the PTO) and invites the PTO to seek en banc review to pursue change in the law.

The Law

Once a patent grants, a patent owner has two years to expand the scope of the patent claims by filing a reissue application. In order to file a reissue application, the patent owner must surrender the granted patent and must submit that the patent is at least partly inoperative or invalid through error without any deceptive intention, as articulated in 35 U.S.C. §251. If the reissue application is applied for beyond two years from the grant of the original patent, then the patent owner can still file a reissue application but is foreclosed from broadening the patent claims.3

In In re Doll, the Federal Circuit’s predecessor court interpreted Section 251 and determined that the two-year time limit applied only to the filing date of a first broadening reissue application.4 Therefore, any continuing reissue applications based on the first broadening reissue application may be filed at a date more than two years from the original patent grant and still avail of the ability to broaden the issued claims. The Federal Circuit recently got a second chance to interpret §251 in In Re Staats.

The Facts

On April 1, 1996, inventors Erik P. Staats and Robin D. Lash filed a patent application with the PTO entitled, “Isochronous Channel Having a Linked List of Buffers”, which disclosed first and second embodiments. Based on the application, U.S. Patent Number 5,940,600 issued on August 17, 1999, with claims directed to the first embodiment.

Based on the ‘600 Patent, the patent owners filed three broadening reissue applications over the course of seven years, as depicted here.

The first reissue application RI 1 and the second reissue application RI 2 issued as reissue patents and are directed to the first embodiment of the patent specification.5 The third reissue application RI 3 was rejected by the PTO under § 251, because the new broadened claims were not related to what was covered in the original RI 1 application. The rejection was appealed within the PTO.

On appeal, the Board of Patent Appeals and Interferences of the PTO determined that the newly added broadening claims were in fact “directed to an invention that [was] independent and distinct’ from that claimed in the original patent application or the first broadening reissue application.”6 The BPAI explained that (a) the inventors sought “to broaden the patented claims. . . in a manner pertaining to a different embodiment than that specified” in the original reissue application, (b) the scope of the claims of the RI 3 application was “unforeseeable” from the original RI 1 application, and (c) the “public notice function of § 251” had not been met.7

The BPAI upheld the claim rejections and applicant appealed to the Federal Circuit. In its brief before the Federal Circuit, the PTO argued that § 251 does not suggest that a first broadening reissue can serve as a placeholder for the filing of later broader applications and that the RI 3 application did not give the public adequate notice within two years of what particular area of claim scope the patentee intends to broaden.

The Holding

The Federal Circuit reversed the decision of the BPAI, holding that 35 U.S.C. § 251 allows a continuing reissue application to add broadened claims unrelated to the broadened claims filed in a first reissue application timely filed. The Federal Circuit rejected the arguments of the PTO and relied on and reiterated the Court of Customs and Patent Appeals’s precedent of In re Doll. The Federal Circuit explained that Doll establishes that Section 251’s two-year time limit applies to the filing date only of the first broadening reissue application. The Federal Circuit thus passed on the opportunity to change this possibly-problematic settled law, but invited the PTO to seek en banc review to pursue a change in law.

The Concurrence

Circuit Judge O’Malley agreed with the reversal of the BPAI decision, but did not agree with the precise reasoning embraced by the majority. Judge O’Malley opined that “once a reissue is sought, the same provisions of Title 35 governing original patent applications – including those provisions permitting the filing of continuations and divisional applications – are ‘applicable to applications for reissue of a patent.’” In short, Judge O’Malley concluded that “nothing on the face of § 251 restricts the nature of any later-filed continuing reissue applications or ties the substance of such continuations to the broadened claims specified in the initial application.”

Conclusion

Until a statutory amendment of Section 251, or an en banc revision to the settled law of Doll occurs, patent owners may be able to keep the door open to the claiming of subject matter not previously claimed in an original patent by filing subsequent reissue patent applications, as long as a first reissue application is filed within the two year cutoff period following grant of the original patent. This is a potentially powerful tool for patent owners who seek to protect non-claimed subject matter of a patent that no longer has any pending applications, as long as the patent issued within no more than two years before the first reissue application.