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Court Goes Over 3-Step Patent Recapture Rule Analysis

By Tanya Roth, Esq. on June 29, 2012 | Last updated on March 21, 2019

Attention patent practitioners! The Federal Circuit Court of Appeals recently came out with a decision that explains the court's Recapture Rule review process in three easy steps.

The case, In re. Youman, came out in May. Nevertheless, having stumbled on a brilliant analysis of the case in Thomson Reuters News & Insight, we figured this case was highly relevant to Federal Circuit practitioners. So we're bringing the basics of the case home.

The legal rule elaborated in the Youman case incidentally came from another case, In re. Mostafazadeh.

The rule is this: Patent owners can enlarge the scope of their original patent if they claimed less than they had a right to claim in the original patent.

But wait-- there's more. They can only do this if the failure to make those claims was through error and without a deceptive intent.

The reissue process may not be used to broaden claims of a patent if subject matter has been surrendered through purposeful amendments or through specific arguments made during prosecution to overcome prior art.

So how do patent owners overcome the Recapture Rule?

The Federal Circuit Court of Appeals reiterated the three-step process.

Step 1: The court will examine whether a proposed reissue claim is actually broader than the underlying patent claim. If so, the court will determine which aspect of the claim is broader.

Step 2: If it is determined that the reissue claim is broader than the patented claim, the court will then decide "whether the broader aspects of the reissue claims relate to surrendered subject matter," as stated in the decision.

Step 3: If the broader reissue claims relate to the surrendered subject matter, then the court must determine "whether the surrendered subject matter has crept into the reissue claim."

For a more detailed analysis on the Recapture Rule, have a look at the case in the related resources below.

Related Resources:

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