Guest Post: Checking the “Staats” – in Broadening Reissue Practice, We Are Stuck in the “Doll”-drums

By David M. Longo, Ph.D. of Finnegan LLP1

This post addresses the Federal Circuit’s March 5, 2012, precedential opinion In re Staats, Appeal No. 2010-1443, in which Judge Dyk writes for the majority. In short, the Federal Circuit holds that it is bound by In re Doll, 419 F.2d 925 (CCPA 1970), and that both 35 U.S.C. § 251 and Doll permit the filing of a continuing reissue application to broaden patented claims beyond the statutory two-year periodeven when the continuation claims are broadenedin a manner unrelated to any broadening aspect identified within the two-year period. For a more in-depth discussion of 140 years of reissue case law, legislative history, and statutory shaping pertaining to broadening reissue practice, including an analysis of the facts and oral arguments in Staats leading up to the opinion, please see the author’s publication Checking the Staats: How Long is Too Long to Give Adequate Public Notice in Broadening Reissue Patent Applications?, 2011 Duke L. & Tech. Rev. 009 available at http://www.law.duke.edu/journals/dltr/articles/2011dltr009.

One of the most straightforward ways patent owners can expand the limited monopoly of a patent is by seeking increased claim scope by one or more broadening reissue patent applications. While patent owners may narrow the scope of patent claims at any time during the life of the patent, they may only broaden claim scope for a limited period of time after issuance of the patent. See MPEP § 1412.03, discussing implementation of 35 U.S.C. § 251. Despite this relatively clear statutory provision in § 251, however, an expansive body of case law has construed the provision, dating back well over a century.

The Staats opinion had the potential to become the most definitive statement in broadening reissue practice in almost twenty years. Passing on such a wonderful opportunity, the CAFC instead blandly upheld Doll and bluntly invited the USPTO to seek en banc review. In fact, Judge Dyk’s majority opinion states, “If the PTO believes we should overrule Doll, that is a matter that must be presented to the en banc court.” Slip Op. at 11. Judge O’Malley’s concurring opinion, which concurs in the opinion’s judgment but not its reasoning, states, “To the extent the majority opinion is no more than a begrudging nod to Doll‘s precedential effect with an invitation to reconsider that decision, the majority opinion is wrong.” Slip Op. at 12 (concurrence at 1).

The Staats case presents a collision between two robust statutory interpretations and two equally weighty sets of policy considerations. On the one hand, the public-notice function cited by both the USPTO and the Board—and regarded as a hallmark of the protections in § 251—is crucial. The public has the right to know what is claimed and disclaimed in a patent, and one could argue that patentees should not be permitted to reshape their inventions throughout the life of the patent simply by lodging a “placeholder” broadening reissue application within two years of patent issuance, from which any number of potentially disparate continuing reissue applications could be filed. Allowing such activity without adequate safeguards could result in a scenario in which a competitor could potentially spend an obscene amount of money based on the perceived bounds of the limited monopoly granted by a particular patent, only to face an infringement action years later after the boundaries of the limited monopoly have shifted. Likewise, such activity may make it difficult for a competitor to assess whether it has freedom to operate in a particular technology—again because of shifting boundaries of the limited monopoly. Consistent with this perspective, the USPTO’s position in Staats held firm against effectively giving an applicant a license to unforeseeably shift from one invention to another through reissue well beyond the two-year statutory period. See Ex parte Staats, No. 2009-007162, 2010 WL 1725728, at *9 (BPAI Apr. 26, 2010).

On the other hand, as argued by Apple in the Staats appeal to the Board, the CCPA in Doll held that the intervening rights provided by 35 U.S.C. § 252 are potentially sufficient to counterbalance damage to public notice done by broadening reissues. Having initial public notice within two years of patent issuance should adequately balance the needs of patentees and the public. See Brief of Appellant-Petitioner, In re Staats, No. 2010-1443 (Fed. Cir. Dec. 16, 2010), 2010 U.S. Fed. Cir. Briefs LEXIS 1111, at *9–11. That is, there is a clear quid pro quo—in exchange for a reissued patent, the patentee must “surrender” the original patent. Furthermore, given the recent transparency in publication and prosecution practice for pending applications and reissue applications at the USPTO, applicants already surrender a great deal of secrecy before issuance of a patent or reissue patent. Any broadening reissue patent claims would, of course, require support by the patent specification or other claims, which could have effectively been part of public knowledge for years before the broadening. Therefore, one can argue that nothing would serve to hamper a competitor from developing a competing and noninfringing product with improvements in the years it would undoubtedly take for the USPTO to wade through applications, reissues, and continuations of those reissues.

Thus, a classic property-rights question looms large in the field of patent law: where do the rights of inventors end and the rights of the public begin? The rights of inventors to modify the scope of their claimed inventions, even after the patent issues, can directly conflict with the concepts of public notice and the public domain. The Patent Act currently permits broadening of claims so long as a reissue application showing intent to broaden is filed within two years of the original patent issue. Over the years, however, this relatively straightforward statutory provision has sparked a spate of disputes over its meaning and application.

Despite these disputes, the CAFC reaffirmed Doll, and Judge O’Malley’s concurrence expanded on its reasoning:

The MPEP and PTO Rule 175 are, moreover, consistent with all relevant case law interpreting § 251. As the majority notes, Doll concluded that § 251′s time limits are applicable only to the first broadening reissue application and do not, accordingly, bar further broadening changes thereafter. [In re Doll] 419 F.2d. at 928. This court has twice reaffirmed that reading of § 251, moreover. See In re Graff, 111 F.3d 874, 877 (Fed. Cir. 1997) (“The court in Doll simply held that the reissue applicant, in the course of prosecution of the reissue application, was not barred from making further broadening changes in the claims.”); In re Fotland, 779 F.2d 31, 34 (Fed. Cir. 1985) (“In Doll the Court of Customs and Patent Appeals held that when a broadening reissue application was on file within the two year period, the claims could be further broadened after the two year period.”). As the majority opinion makes clear, the PTO’s efforts to distinguish those cases so as to avoid the need to comply with their holdings stretch credulity. (Slip. Op. at 15, concurrence at 4.)

Even with the benefit of the last forty years of reissue case law—including Doll, In re Fotland (779 F.2d 31 (Fed. Cir. 1985)), Buell v. Beckestrom (22 USPQ2d 1128 (BPAI 1992)), In re Graff (111 F.3d 874 (Fed. Cir. 1997)), and now Staats—broadening reissue practice will likely remain a headache for patent attorneys. For the time being, though, we have a pill for that headache. Without any changes from a possible en banc review, broadening reissue patent practice permits a scenario where, as Apple argued, the possible or eventual scope of the initial broadening need not be fully laid out in the first reissue application filed within the two-year statutory window, as long as the initial intent to broaden appears within that window. See Ex parte Staats, No. 2009-007162, 2010 WL 1725728, at *2 (BPAI Apr. 26, 2010). Tipping the scales slightly away from robust public notice, Staats (vis-à-vis Doll) essentially tells us that “any intent” to broaden within two years of patent issuance permits any broadening in a later—and properly filed—continuation or divisional reissue application. Whether this is the best remedy for a fairly persistent headache remains to be seen.

1 This post represents the thoughts and opinions of the author alone and not those of Finnegan LLP. It is intended to convey general information only and should not be construed as a legal opinion or as legal advice.

50 thoughts on “Guest Post: Checking the “Staats” – in Broadening Reissue Practice, We Are Stuck in the “Doll”-drums

  1. As I mentioned, the client was purchased and the cont. app. was then handled by another firm. I have not looked at the entire litany of office actions and responses, except superficially and incredulously, as the transaction history is several pages long. My take is that the PTO just did not want to allow any claims.

  2. Assuming no new matter, the Office had the opportunity of a first look at all of your material in 1990.

    Having examined the complete application (as is required), you duly received a patent on that part you claimed, and then proceeded as you discuss.

    Pardon my french, but what the F takes the Office nearly 11 years to process the 09/437,414 application, eating through the entire patent term of the parent?

    One serious Charley Foxtrot.

  3. I filed and prosecuted US Patent 5214688. Then, within two years of the patent issue, I filed a broadening reissue, which then issued as RE36416. Then, in November 1999, before the reissue issued, I filed a continuation application (09/437414) for additional broadening/different claims. It is nice to know that the Fed. Cir. agrees with my presumption that I could validly file the continuation application. ((My client was subsequently purchased and prosecution of the continuation application was then handled by a different firm. Prosecution of the continuation application was later halted in 2010 because the term of the original 688 patent had expired, not because it was a broadening continuation.)

  4. On purpose?  Unless the record is clear that claims of a broader scope are declared by the PO to be unpatentable in a clear and unmistakable fashion, there is no "on purpose" that can be devined from the record.  The PO should not be asked to provide evidence about when he realized that he had made a mistake in not pursuing the broader claims.  He has a right to pursue them, IMHO, if he files within two years.

    But, I recognize the law is to the contrary.  It is just it makes no sense at all.

    What if we instead allowed the PO to simply file a continuation if he filed it within two years, with the caveat that that intervening rights apply?  Would there be a surrender here?  No!!! not at all.  

    Think, IANAE.  Think.

  5. there are recent cases that say that not obtaining broader claims is a mistake,

    I’m sure there aren’t any recent cases that say that not obtaining broader claims is a mistake when it’s done on purpose.

  6. IANAE, this is really a lot of bull… and you know it.  If one had a right to file broadening reissues within two years, a right mind you. and there are recent cases that say that not obtaining broader claims is a mistake, then there is no unambiguous surrender until the right to file a broadening reissue has expired.

  7. Unless an applicant unmistakably disclaims broader scope, he should have a right to claim it.

    Unmistakable disclaimer is exactly what happens when an applicant narrows his claims without also filing broader claims.

    And because it’s unmistakable, it can’t later be claimed as an “error”, which is what reissues are for fixing.

  8. IANAE, you are stating the current state of the law.  What I am saying is that it makes absolutely no sense.  

    Unless an applicant unmistakably disclaims broader scope, he should have a right to claim it.  The period of time for his right to claim is set by statute: two years from issue.  Everything else in the current jurisprudence is policy driven mumbo-jumbo that is wrong in concept.  There is no need for it at all, given intervening rights.

  9. The analysis should be that if the patent owner retained the right to argue broader scope in a continuation, he should not be estopped to pursue that broader scope in a reissue.

    One ceases to retain the right to argue broader scope in a continuation once the time for filing a continuation has passed.

    Reissues are supposed to be for correcting mistakes that are only noticed after the patent has issued. It’s not about giving notice or intervening rights, it’s about the patentee having given up scope on purpose. Otherwise, you might as well say that if the patentee could have broadened the claims within two years of the issue date, he should not be stopped from pursuing that broader scope in a later-filed reissue.

    A patentee who narrows his claims and lets them issue has made his decision. That’s it. No do-overs.

  10. L. Clark.  Exactly.

    There does not seem to be a rational basis for the recapture rule.  If a claim limitation is unnecessary and can be removed without affecting validity, it was a mistake to include it.  The whole purpose for reissues is to correct mistakes, especially of scope.  

    The concept that reissue practice has to be so constrained and crabbed to not recapture surrendered subject matter is ridiculous.   So long as the reissue is filed in time, intervening rights automatically handles any prejudice to the public.

    We need a revolution in thinking.  Subject matter should not be considered surrendered unless the applicant actually says something like the broader claims are unpatentable.  Merely saying that if one adds such and such a limitation to the claims and that the claims with such a limitation define over the art, without more, does not mean that one does not intend to continue the argument over the right to broader scope in a continuation.

    The analysis should be that if the patent owner retained the right to argue broader scope in a continuation, he should not be estopped to pursue that broader scope in a reissue.

      

  11. And the recapture How many times it said you had helped Richard Stroud… so many times I believed it, HAAA AAAHAAAHAAAHAAAHAAAHAAAHAAAAAAAAAHAAAAAAAAA. JOKES UP!

  12. Some clients prefer a narrow claim start, with a continuations with broader claims to follow.

    Sometimes this is driven from the desire to get one “under the belt,” sometimes this is driven to limit estoppel.

    The mistake of lost papers, though? Isn’t like the dog ate my homework? Isn’t it enough to say that you did not claim all that you were entitled to? You maybe referring to a case of broad, then narrow, then broad, but by starting out broad, can you genuinely claim mistake?

  13. practitioners all the time take narrower claims intending to file broader claims in a reissue.

    You misspelled “continuation” there, Ned.

  14. IANAE, practitioners all the time take narrower claims intending to file broader claims in a reissue.  What if the continuation papers got lost in the mail?  Is that not a mistake that cannot be remedied through reissue?

  15. Me too.

    Reissues are of public record.

    What effect of a reissue started but proceeds poorly for applicant? All claims are invalidated either under existing prior art or newly applied prior art.

    Applicant punts.

    Can this public record then be used in an Inter Partes Reexamination? Even in the new systems, it appears that Office determinations may have deletorious effects and that mere punting may not fully save the applicant.

    So technically, the applicant does not surrender the original patent by abandoning the reissue effort, but do the actions create a formidable cloud on that original patent?

  16. IANAE, you see to suggest there are no mistakes

    All I’m saying is that if you expressly narrow your claims, and at that time (from that time until the patent issues) you make a decision to not file a continuation seeking that claim scope, it’s clearly not a mistake. It’s something you did on purpose.

  17. Score card,
     
    You seem to neglect to notice that surrender is voluntary and does not take place until the reissue actually issues.  If you are disastisfied with the reissue at all, just abandon it.  Your original patent stays in place, as is.

  18. Say there Hi, you too do not know the basics.  Anyone want to help the poor soul?
     
    BTW, you are not qualified to represent real clients if you provide such bad advice as this.

  19. There should be no absolute surrender until after the two-year period.

    If you don’t want to absolutely surrender scope that you deliberately amended out of your claim, you should file a continuation. It’s not like the PTO doesn’t give you advance warning that your patent is about to issue.

  20. Thanks MPEP, Ned’s contributions to the scorecard have been appropriately weighted by the reputation factor. It is ironic that he has lamented in the past about the applicaiton of BRI during the reissue process, as his comments seem to neglect his own prior views.

  21. 37 CFR 1.176. Examination of reissue.
    (a)A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications.

    MPEP 1445 Reissue Application Examined in Same Manner as Original Application
    As stated in 37 CFR 1.176, a reissue application, including all the claims therein, is subject to “be examined in the same manner as a non-reissue, non-provisional application.” Accordingly, the claims in a reissue application are subject to any and all rejections which the examiner deems appropriate. It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a rejection was not made in the prosecution of the patent, or could have been made, or was in fact made and dropped during prosecution of the patent; the prior action in the prosecution of the patent does not prevent that rejection from being made in the reissue application. Claims in a reissue application enjoy no “presumption of validity.” In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not have any bearing on, or prevent, its use as prior art during prosecution of the reissue application.

    Soooo, according to Ned, the surrender and re-examination of a re-issue patent poses no threat the patent holder…?

    What patent courses did Ned Heller take?

  22. IANAE, OR, you could deem all that if you fail to promptly (within two years) file a reissue to fix your errors.  Adding unnecessary limitations to one's claims has to be the most typical error of them all.

    Now, for notice and reliance purposes, there are both absolute and equitable intervening rights.  If a member of the public actually relied on presence of an added claim limitation to make substantial investments, the judge can provide equitable intervening rights to allow him to continue to make and use the broadened subject matter claimed in the reissue.  There should be no absolute surrender until after the two-year period.

  23. IANAE You’re essentially disavowing any scope you affirmatively surrendered during prosecution, and all you can recapture by a broadening do-over is what you neglected to claim through error.

    Exactly right. I’m pretty sure the cases affirming the recapture rules and what constitutes “error” are quite clear about this.

  24. Sounds about right.

    The law allows you that door to be opened, but only in the first two years after issue.

    Once the door is open, it’s like a vampire has been invited in (once is enough).

  25. Scorecard:

    “You roll the dice by surrendering your patent. There is no guarantee that you get the patent back at all.”

    Scorecard, you are not qualified to post on this board. If I were you, I would go to school and take a few patent courses.

  26. There seems to be no policy reason for the difference that I can see.

    Maybe it’s because by letting your patent issue without a continuation, you’re implicitly making a statement to the public that you’ve gotten all the protection you want. You’re essentially disavowing any scope you affirmatively surrendered during prosecution, and all you can recapture by a broadening do-over is what you neglected to claim through error.

  27. MM, but why the distinction, especially where reissues have intervening rights.  There seems to be no policy reason for the difference that I can see.

  28. What are you suggesting?

    See the next line in the comment you quoted from, sockie.

    Gxd, you’re a dxxxaxx.

  29. In contrast to continuations, you cannot claim either subject matter that was subject to a restriction requirement or subject matter that was “surrendered.”

    No shxt, sherlock.

  30. (Slight) Corrections:

    Any claims you want that are supported by the as filed application.

    LOL. Yes, and they also have to consist of one sentence. Thank you so much for clarifying that. I’m sure many, many people were confused.

    [pats sockie on head]

    Man, this blog has the dxmbest trolls.

  31. This presents a real problem when otherwise competent patent attorneys begin adding unnecessary limitations to the claims in order to gain their allowance. It happens all the time. [Perhaps they ought to be sued for their incompetence.]

    Uhoh, those are IANAE’s toes you just stepped on.

  32. Fish:

    If you add or argue the materiality of a limitation to gain allowance or cancel a claim in face of a prior art rejection, you cannot in a reissue application remove it unless the claims are materially narrowed in other respects.

    link to uspto.gov

    This presents a real problem when otherwise competent patent attorneys begin adding unnecessary limitations to the claims in order to gain their allowance. It happens all the time. [Perhaps they ought to be sued for their incompetence.]

    The philosophical basis for this doctrine is lost on me given that one can claim subject matter that is disclosed but previously unclaimed and further given the doctrine of intervening rights. Moreover, if one can prove that a limitation was truly unnecessary, I don’t see why one cannot remove it.

  33. MM: “You can go after any claims you want, and take as much time as you want, by filing successive continuation reissue applications (as long you file the continuation reissue applications before the immediate parent is granted).”

    No.

    In contrast to continuations, you cannot claim either subject matter that was subject to a restriction requirement or subject matter that was “surrendered.”

  34. A major problem is the present inexcusably long PTO delays in handling reissue applcations, contrary to the MPEP and important public policy reasons why reissues are supposed to be treated with high priority.
    Yes, the [somewhat less than consistent] case law preventing “recapture” of claim scope previously surrendered in the original prosection can be a major issue in enforcing a reissue once the PTO finally issues it.

  35. You can go after any claims you want, and take as much time as you want

    (Slight) Corrections:

    Any claims you want that are supported by the as filed application.

    Time will run out as any additional patents (barring PTA) will run out on the same date as your originally issued patent.

  36. No, but it’s not necessary to cancel any claims to obtain a broadening reissue patent (or any reissue for that matter). You can get all your original claims and more in the reissued patent.

    Maybe. You roll the dice by surrendering your patent. There is no guarantee that you get the patent back at all.

    Also, this does not answer the question posed by Please Clarify.

    I’m not suggesting that…

    What are you suggesting? Do I score your post as “E”?

  37. “no worries. Just file a broadening reissue application”

    Is that a complaint?

    No, sockie. Just a fact. Keep your italics in your pants.

  38. Do you surrender your (possibly soon to be) patent when you file for a continuation?

    No, but it’s not necessary to cancel any claims to obtain a broadening reissue patent (or any reissue for that matter). You can get all your original claims and more in the reissued patent.

    To be clear, I’m not suggesting that filing a broadening reissue is *better* or even strategically equal to keeping a family alive by timely filing a continuation application. I’m just saying that according to current law, you’re broadening reissue filed within two years is effectively a restart of the prosecution of the family. You can go after any claims you want, and take as much time as you want, by filing successive continuation reissue applications (as long you file the continuation reissue applications before the immediate parent is granted).

  39. Do you surrender your (possibly soon to be) patent when you file for a continuation?

    Let’s not lose sight of that difference.

  40. Please, there are major difference regardless of what MM says. Reissues have a lot more baggage than continuations. But, logically, why should they?

  41. no worries. Just file a broadening reissue application

    Is that a complaint? It sounds like it meets the intent of the law. Or are you saying that that particular law is not really a law?

  42. MM, they are not the same. Intervening rights an all.

    As well, the reissue folks are very keen on another issue one simply does not face in ordinary prosecution: recapture.

  43. Tipping the scales slightly away from robust public notice, Staats (vis-à-vis Doll) essentially tells us that “any intent” to broaden within two years of patent issuance permits any broadening in a later—and properly filed—continuation or divisional reissue application.

    To put it another way, if you can’t afford to file a continuation or you simply forget to file a continuation before your patent issues: no worries. Just file a broadening reissue application and you’ve effectively re-started prosecution as if the failure to file the continuation had never happened.

  44. I would be sympathic to the “notice” argument but for the fact that reissues have intervening rights and continuations from the original application do not. Both vehicles can be used to late claim unclaimed subject matter; but only one has an intervening right.

    If there were any real policy issues involved here, one would think that intervening rights evenly apply to late claimed subject matter — i.e., broadening, regardless of source. But that would, I think, require an act of Congress, not an en banc review given the long and well established precedent to the contrary.

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