Broadening Reissue Applications: No Restrictions to Subject Matter

Addressing the ability of a patent holder to broaden claims of a patent more than two years after issuance where new claims are added that are unrelated to other broadened claims or to the originally issued claims, the U.S. Court of Appeals for the Federal Circuit reversed the USPTO’s rejection of claims in a multi-continuation broadening reissue application. In re Erik P. Staats et al., Case No. 10-1443 (Dyk, J.) (O’Malley, J., concurring).

On August 17, 1999, Staats was issued a patent directed to improvements to management of isochronous data transfers. The patent discussed two separate embodiments, yet all of the original claims were directed only to the first embodiment. In compliance with 35 U.S.C. § 251, within the two-year statutory deadline, Staats filed a first broadening reissue application directed to subject matter of the previously unclaimed first embodiment.

Afterwards Staats filed a second broadening reissue application, which was a continuation of the first reissue application. While the second application was filed outside the two-year deadline, it was filed during the pendency of the first reissue application. Like the first reissue application, the second reissue application was directed to the originally unclaimed first embodiment. Moreover, as the second application merely addressed errors in the first application, the USPTO allowed the application.

Still later, Staats filed a third broadening reissue application. This third application was filed as a continuation of and during the pendency of the second reissue application, but was directed to the subject matter of the originally claimed second embodiment. The USPTO rejected the application.

The examiner rejected the claims in the third reissue application on the basis that the claims were directed to subject matter “not related in any way to what was covered in the original broadening reissue.” In doing so, the examiner distinguished the case from In re Doll, a case in which the Federal Circuit held while that the two-year time bar of § 251 only applies to the first broadening reissue application, an applicant is not barred form making further broadening changes after the two-year period in the course of prosecution of the reissue application, even if they are broader in scope than both the original claims and claims filed in a previous broadening reissue application. The Board of Patent Appeals and Interferences affirmed the examiner’s rejection, noting that the claims on the third application were “independent and distinct” from the claims of the original patent and the earlier filed broadening reissue applications. Staats appealed.

The Federal Circuit reversed, noting that Doll makes no distinction between “related” or “unrelated” subject matter and as such, the USPTO had no authority to distinguish which claims were subject to Doll and which were not. The Court also noted that while Doll held that the two-year time limit applied only to the first broadening reissue application, its later decision in In re Graff clarified that so long as a broadening reissue application is filed within the two-year statutory period, an applicant is “not barred from making further broadening changes,” i.e., after the two-year statutory period, in the course of prosecuting the reissue application. In addition, the Federal Circuit found that if the USPTO’s relatedness approach were used, application of it would be “difficult to administer in a consistent and predictable way.”

In a concurring opinion, Judge O’Malley chastised the majority for placing too much emphasis on Doll and instead argued that “the plain language of 35 U.S.C. § 251, coupled with legislative history, long-standing unambiguous regulations implementing the statute, all relevant case law and common sense, all compel reversal in this case.” In a strong rebuke of the USPTO, O’Malley further opined, “the PTO’s policy arguments are overstated—substantially so. Even if those policy statements were not overstated, they would be an insufficient reed upon which to rest such a sweeping change in the law.”