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A recent ruling by the U.S. Court of Appeals for the Federal Circuit offers guidance on the patent application reissue process, which gives patent owners a two-year window to broaden patent claims after the patent issues. The Federal Circuit’s May 3 unanimous ruling in In re Mostafazadeh affirmed an August 2009 ruling by the U.S Patent and Trademark Office’s Board of Patent Appeals and Interferences, which rejected 13 claims in the Mostafazadeh patent reissue application. The Federal Circuit ruling, authored by Circuit Judge Timothy Dyk, stated that Shahram Mostafazadeh and Joseph O. Smith’s reissue application “impermissibly attempted to recapture subject matter surrendered during prosecution of the original patent application.” Judges Daniel Friedman and Sharon Prost joined in the ruling. The patent in the case is for lead frame-based semiconductor packaging, which protects a microchip and provides electrical pathways between the chip and external devices. The PTO issued the patent in 2000. In 2001, the applicants filed a reissue application with 12 new claims. The PTO examiner rejected the reissue claims as an improper recapture of subject matter surrendered during patent prosecution. The board affirmed. According to the Federal Circuit, the reissue statue allows a patent holder to ask the PTO to reissue an existing patent when the patent is wholly or partly inoperative or invalid due to an error. The error could be a defective specification or drawing or when the patent filer claims more or less than he or she had a right to claim in the patent. According to the patent reissue statue, “no new matter shall be introduced into the application for reissue.” Dyk also cited prior Federal Circuit case law, which states that a patent owner may not use the reissue process to regain or recapture patentable subject matter surrendered during the application process. In his analysis, Dyk wrote that both sides “agree that the reissue claims are broader than the patented claims and that the broader aspects relate to the surrendered subject matter.” The court’s job, Dyk wrote, is to “determine whether the surrendered subject matter has crept into the reissue claim.” Dyk concluded that patent owners seeking reissue of a patent cannot entirely eliminate a limitation to a patent claim that was added during the patenting process to overcome prior art — published information about the claimed invention’s subject matter, including issued patents. Allowing applicants to do that “would constitute recapture of the surrendered subject matter,” Dyk wrote. “The limitation [on the patent claim] may be modified, however, so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured,” Dyk wrote. Dyk also rejected the applicants’ narrowing limitations that were “unrelated to the surrendered subject matter” because they are “insufficient to avoid recapture.” Steve Beyer of the Beyer Law Group in Cupertino, Calif., said his firm took the appellants’ Federal Circuit appeal pro bono because the lawyers there believe the PTO’s rules don’t mesh with Federal Circuit case law. Although the Federal Circuit ruled against his clients by upholding the patent board, Beyer said the court’s language about allowing patent owners to seek changes to limitations made during the patenting process is important. The current PTO position is that patent owners seeking reissued patents “could never remove or alter a critical limitation added during prosecution,” Beyer said. “The positive part of the ruling was that the court held fairly clearly that the patent office position that you could not alter the new critical elements that were added…was wrong,” Beyer said. Unfortunately for his clients, however, the court said the narrowing of claims to avoid running afoul of the recapture rules “has to be related to claim elements added during prosecution,” Beyer said. “The second point we were trying to raise was you should be able to materially narrow the claims using other features as well, but unfortunately, the court didn’t see it our way on that one,” Beyer said. PTO spokeswoman Jennifer Rankin Byrne said the agency “will not have a comment.” Sheri Qualters can be contacted at [email protected].

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