Appeal No. 2004-0659
Application No. 09/111,978
Judge MacDonald, with whom Judge Jerry Smith joins, concurring.
A. DISCUSSION
1. RECAPTURE PRINCIPLES
(1)
THE STATUTE
The reissue statute expressly permits a patentee to correct an error thus permitting
patentee to obtain reissue claims broader than the originally issued patent claims at any
time within two (2) years from the date the original patent issues. More particularly,
35 U.S.C. § 251, ¶¶ 1 and 4, provide in pertinent part:
Whenever any patent is, through error without any deceptive intention,
deemed wholly or partly inoperative or invalid, by reason of a defective
specification or drawing, or by reason of the patentee claiming more or
less than he had a right to claim in the patent, the Director shall, on the
surrender of such patent and the payment of the fee required by law,
reissue the patent for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the unexpired part of
the term of the original patent.
No reissued patent shall be granted enlarging the scope of the claims of
the original patent unless applied for within two years from the grant of
the original patent.
(2)
RECAPTURE IS NOT AN ERROR
WITHIN THE MEANING OF 35 U.S.C. § 251
What has become known as the “recapture rule,” prevents a patentee from
regaining through a reissue patent subject matter that the patentee surrendered in an effort
to obtain allowance of claims in the patent sought to be reissued. In re Clement, 131 F.3d
1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997).
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