Reissue Patent with Shifted Claim Focus Invalid: Not “clearly and unequivocally disclose[d] … as a separate invention.”

by Dennis Crouch

In Antares Pharma v. Medac Phama (Fed. Cir. 2014), the court has invalidated Antares’ reissue patent no. RE44,846 — finding that the reissued claims fail to comply with the “original patent” requirement of 35 U.S.C. 251.  This “original patent” requirement is roughly equivalent to both the written description requirement and the prohibition on new matter — all three basically require that the original patent specification disclose the particular invention now being claimed. Here, however, the court takes the requirement a major step further — indicating that the requirement is only satisfied if the newly claimed invention was described as the invention in the original disclosure.  The leading Supreme Court case on the topic is US Industrial Chem v. Carbide & Carbon Chem, 315 U.S. 668 (1942).  In that case, the Supreme Court held the asserted reissue invalid because claimed solution no longer required water even though the original specification had at least hinted that water was optional.  There, the court held that reissued claims must be “the same invention described and claimed and intended to be secured by the original patent.”   Under the Federal Circuit’s interpretation here, the requirement is that new or amended claims are only valid if the original specification “clearly and unequivocally disclose[s] the newly claimed invention as a separate invention.”  Going forward the biggest question is whether this requirement will also be extended to the written description requirement and new matter limitations.

Section 251 of the Patent Act creates the reissue process that allows a patentee to seek correction of errors in an original patent.  In the process, the patentee can broaden its patent scope, but only if the reissue application is filed within two-years of the original patent issuance. Further, a reissue application may not “recapture” scope that was surrendered during the original prosecution in order to obtain allowance nor may the reissue claim an invention that was not fully and expressly disclosed in the original written description.

Here, the patent covers the seeming torture device of a needle-assisted jet injector.  Soon after patent issuance, however, the patentee sought a reissue that removed the “jet injector” limitation and focused on novel safety features that were not originally claimed. The court writes:

The original specification here does not adequately disclose the later-claimed safety features to meet the Industrial Chemicals standard. The specification discussed only one invention: a particular class of jet injectors. . . . Although safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification. Rather, the safety features were serially mentioned as part of the broader conversation: how to build the patented jet injection device.  . . . Nowhere does the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention. This does not meet the original patent requirement under § 251.

Based upon this failure, the patented claims are invalid for violating the original patent requirement of Section 251.

= = = = =

This is an interesting and important case with regard to reissue applications and it may have important implications for the written description requirement as well.

A few limited remarks:

I should note first that the Federal Circuit here failed to explain how failure of the original patent requirement is a proper validity defense under 35 U.S.C. 282. [Update – I apologize, but I failed to express the point was thinking.  My basic point was that validity challenges for improper reissue are expressly stated in the statute while subject-matter challenges are not there.]

Second, the posture of this case is interesting – the patentee was appealing a denial of preliminary injunction. However, rather than simply affirming the denial (based upon likely invalidity), the Federal Circuit here ruled conclusively that the claims are invalid as a matter of law.

Finally, as alluded-to, this case appears poised to reach well beyond its reissue context and impact the entire population of patents under the context of the written description requirement.  Here, the court indicated that the standard from Industrial chemicals is “analogous to the written description requirement.”  Going forward, the USPTO may well begin limiting applications that shift claim focus under this newly revived doctrine.

Opinion by Judge Dyk, joined by Judges Reyna and Taranto.

80 thoughts on “Reissue Patent with Shifted Claim Focus Invalid: Not “clearly and unequivocally disclose[d] … as a separate invention.”

  1. 13

    Perhaps I’m missing something but the reasoning underlying this decision seems completely at odds with the reasoning and policy considerations underlying the CAFC’s 2012 decision regarding broadening reissue oaths, i.e., In re Staats (see, e.g., link to; link to

    As some may recall, Staats held that a broadening reissue filed within the 2 year time period was sufficient to open the door for subsequent broadening reissues (filed as continuations) directed to fixing “errors” (inevitably, the “failure to claim” a broader embodiment) that fell outside of the scope of the initial reissue oath. The reasoning in Staats was that no additional public notice was necessary beyond the fact that the patentee had filed for the broadening reissue within the 2 year time period. As I and others noted when the opinion was published, Staats effectively permitted the owner of a “completed” patent family (with no continuations or divisionals pending) to “restart” prosecution of the family provided that the broadening reissue request is made within two years from the date at which the last patent was granted (probably something for the risk liability folks to think about adding to their dockets).

    Staats was written by Dyk, with O’Malley and Reyna on the panel. This decision was also written by Dyk, with Reyna and Taranto on the panel, and seems like might represent a way to forestall some of the worst mischief potentially promoted by the Staats opinion.

      1. 13.1.1

        Perhaps the “completely at odds” view merely reflects the “attitude adjustment” which naturally flows from repeated brow-beatings from the Supreme Court….

        As noted by others, this too can be evidenced in the 180 in Ultramericial – which speaks to a change in law at a level of rewriting of a map instead of a mere re-reading of a map.

        This then would indicate that a change by Congress to remove the Supreme Court from hearing appeals of patent law cases would not by itself be enough to address the shell shock changes in law reverberating throughout the judicial branch.

  2. 12

    link to

    Ned, there you go. Today on the IPKat blog. Not sure you’ll like it though.

    I was myself wondering how many reissues go down with this one. Thanks for your estimate.

    I don’t know another country that does reissues. Just at the moment it does seem as if all those details of US patent law that distinguishes it from the patent law of the ROW are tumbling like skittles. We live in interesting times.

  3. 11

    There seems to be a difference of view in this thread, as to whether this decision impacts only on reissue cases, or goes wider.

    In my reading of the decision, what jumped out at me was the expression “same invention” which I take to impact only reissue cases.

    But that same term “same invention” crops up in the context of the Paris Convention and whether the priority document is an application to protect the “same invention” as that in the claim.

    In any First to File jurisdiction, the question whether the claim gets the priority date is, not infrequently, dispositive of the case. So, typically, an Opponent will argue for a strict harsh assessment of “same invention”.

    Of course, on novelty, that same Opponent will also argue that his prior art reference is also directed to the same invention and then will want a more expansive view on what is the “same”, to blow the claim away for want of patentable novelty over the reference.

    I’m not saying the USA must follow the EPO, you understand. I would never come to the idea. I’m just commenting on how tricky this “same invention” issue can be. In any jurisdiction under the sun.

    1. 11.2

      Nice job Max. I think it is pretty clear that this opinion —for the moment– is limited to reissues. I am a bit surprised that people don’t seem to realize that this opinion probably invalidates about 1/2 of the reissue claims I’ve seen.

    2. 11.3

      Max, regarding EPO, I would think the priority of a claim would depend upon whether the claim was supported in the priority document, not whether the claim at issue had the same invented feature as the claims in the priority document.

      I think there is a difference between providing support, and being directed to the essentially the same invention claimed in the referenced priority document or patent. But the jurisprudence cited by the court in the present case seem to blur the distinction.

      That is why I brought up Muncie Gear, a case decided on the very same day, March 30, 1942, by the same Supreme Court and involving similar issues as Industrial Chemicals. In Muncie Gear, the court seemed as focused on what was being claimed and described as being an invention within the 2year statutory bar limit for applications to be filed after a public use. Industrial Chemicals, in contrast, was decided because the removal of the requirement of water in the claimed process was new matter — it nowhere being described in the application as filed. However, Industrial Chemicals did echo the holding in Muncie Gear with in its very last observation on controlling law in the quote below.

      From Industrial Chemicals:

      The question is whether, in the light of the disclosures contained in the two patents, they are for the same invention. This court has said that they are

      1) if the reissue fully describes and claims the very invention intended to be secured by the original patent;

      2) if the reissue describes and claims only those things which were embraced in the invention intended to have been secured by the original patent;

      3) if the broader claims in the reissue are not merely suggested or indicated in the original specification but constitute parts or portions of the invention which were intended or sought to be covered or secured by the original patent.

      The required intention does not appear if the additional matter covered by the claims of the reissue is not disclosed in the original patent. If there be failure of disclosure in the original patent of matter claimed in the reissue, it will not aid the patentee that the new matter covered by the reissue was within his knowledge when he applied for his original patent.

      And it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification. It must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.

      (Additional formatting and numerals supplied for clarity.)

      It is this very last point that is at issue here — and that appears to be the concern of the court in Muncie Gear. Whether subject matter was disclosed such that it might have been claimed is not enough. It must be clear that it was “intended to have been covered.”

      And this is why this case gives one pause, as this appears to be the holding here.

      Thus, if a claim to subject matter disclosed such that it might have been claimed may be late if it is first presented after that subject matter has gone into public use, or one year thereafter considering the grace period.

      1. 11.3.1

        Thanks Ned. You say:

        “I think there is a difference between providing support, and being directed to the essentially the same invention claimed in the referenced priority document or patent. But the jurisprudence cited by the court in the present case seem to blur the distinction. ”

        I agree.

        Under the EPC, the caselaw does not blur the distinction. rather, it finesses out of having to address it.

        At the EPO, the same single test, applied claim by claim settles i) whether D1 takes away novelty ii) whether the claim is to the “same invention” as the priority filing and iii) whether a prosecution amendment to the claim is adding matter to the application. This (I think) inhibits blurring and so helps to bring clarity.

        As a separate matter under the EPC, the claim must (of course) enjoy “support” from the specification. But under the EPC, given the intensity of argument over i, ii and ii above, there is less caselaw on what “support” means.

        Not being immersed in US law, I find it hard to comment usefully on your cases. Perhaps others can do that for you.


          Max, thanks. The Paris Convention also recognizes that a priority document might disclose multiple inventions. I think from listening to you that if a purported divisional application is filed in the EPO on an alleged invention that is not clearly identified as being an invention in the patent application or priority documents that there may be a problem with new matter.

          I think the Supreme Court jurisprudence referenced by the present case only requires that the invention claimed in the reissue be disclosed as an invention in the patent regardless of whether it was claimed. Whether it is the same invention as claimed in the patent is irrelevant.


            Ned, you might be seeing a difference where there is None.

            Under the EPC, what counts is disclosure rather than what is claimed. Thus, it makes no diffrence whether your “Statements of Invention” are found in the priority document (Say, US pro) as separate independent claims or separate paragraphs of text in the specification. But, one way or another, you do have to disclose/discover/ announce or state, what you consider your inventive concept to be. In any First to File jurisdiction, that is inherently a sine qua non, it seems to me.

            Isn’t that what SCOTUS requires too?


              Perhaps the difficulty stems (as noted) from an unintended case of “patent profanity” and the reaction to being too explicit about “the invention.”

              Note that the statutory law speaks of a “general” invention, as opposed to a specific invention.

              Note that MPEP 1412.01 speaks of invention disclosed as opposed to any notion of invention as originally claimed.

              Note that same MPEP section indicates that as long as the description and enablement (inherent possession?) is met, and there is no clear disavowel, then a lack of a positive statement along the lines of “this IS my particular invention” is NOT enough to foreclose the new claim as meeting the “same general invention” requirement.

              Objective intent (and the typical boilerplate savings clause present in most applications) should boil down the inquiry into answering a simple question after ascertaining whether no new matter has been added: did the applicant expressly disavow the new claimed invention?


              Max, I think the Supreme Court does require that you disclose somewhere that XYZ is intended to be covered by the patent. These are the very words of the court.

              There can be multiple inventions, multiple embodiments, etc. The reissue is intended to cover these if unclaimed.

              The only problem it seems is if there was no indication that the subject matter was intended to be covered.

              This case says that such subject matter cannot be claimed in a reissue.

              Muncie Gear says such subject matter cannot be claimed if it has gone into public use plus a grace period.

              But the cases also suggest that such subject matter can be claim in an original prosecution and/or a continuation if there are no intervening rights problems.


                Ned, I’m furrowing my brow over what is covered by your word “covered”.

                Suppose your belated claim to XYZ is wide enough to include within its scope a load of embodiments/Examples, like XYZABA, XYZABB, XYZABC and so on. You originally claimed XYZAB.

                The EPO just relaxed its criteria for admitting claims that omit a feature presented on original filing as essential to the invention. Perhaps the USA is proceeding in the opposite direction, to the extent that the two jurisdictions have now met, somewhere in the middle?

                Now, long after, you want to claim XYZA (or even XYZ, or XYZB). Do I understand you right, that this would be case in which there is:

                “……no indication that the subject matter was intended to be covered.”

                1. Max, just to be clear, the “intended to be covered by the patent” is a problem now only in reissues and only in the rare circumstance where there are intervening public rights. Otherwise, the Supreme Court suggests that one can claim anything disclosed in one’s patent that might be an invention so long as it does not adversely affect the public.

                  Thus your hypotheticals about various combinations would have no meaning during conventional ex parte prosecution where the patent office would not concern itself with public rights.

                  Perhaps all this will change as we get more involved with to first to file. Time will tell.

                2. One more question Ned, if I may.

                  You tell me that:

                  “…the Supreme Court suggests that one can claim anything disclosed in one’s patent that might be an invention”

                  So, harking back to my hypo, have I “disclosed” XYZ as an invention? (What the EPO would hold depends on whether the PHOSITA derives from the app as filed, directly and unambiguously, that XYZ is NOT “inextricably linked” to AB). That’s a tough test question. But I guess that might also decide the issue in the USA. I don’t know. Yet.

                3. Max, at times, what is novel and important does not appear until well into prosecution. It is common practice here to file continuations on claims that eliminate as much unnecessary detail as possible so that the claims are focused on what is new. It is also true that at times that what is new has been added from the specification and was not in the original claims.

                  Now we speak of removing from the claims that which specification taught as essential. This more than likely is an issue of new matter. This certainly was the issue in the Industrial Chemicals case that sought to eliminate the use of water in the claimed process.

                  It seems that the elimination of what the specification teaches as essential is new matter just as much as adding new matter to a specification and then claiming it.

                4. Thanks Ned. For me what is interesting is that, following an international gathering of USPTO, JPO and EPO legal experts in Munich in Feb 2014 to discuss “new matter” the EPO has found itself persuaded to amend its own MPEP so that EPO Examiners can be marginally more permissive on the issue whether deletion of a claim term adds matter. The EPO caselaw on that subject is copious but by now rather condensed and certainly well-established. Perhaps we are going to see more international approximation, on this issue.

                5. I certainly hope that any change to our law that embraces any such “international approximation” reaches that end through the proper means of legislative and not judicial patent law writing.

  4. 10

    Even if not the basis of this reissue application claim change decision, it is also possible to invalidate claims that were extensively changed in other application prosection for absence of a 112 description of the newly claimed invention, even with a 112 enablement. See, e.g., Synthes USA v. Spinal Kinetics (Fed. Cir. 2013) and cases cited therein.

  5. 9

    Maybe you are right. Again it seems to me the standard of a POSITA is being removed.

    So, wait. I got a chance to read a bit of this. So, what has happened is they have moved the bar for 112. Now the standard is “the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention.” Whereas before the standard was would a PHOSITA recognize the claimed invention in the specification.

    1. 9.1

      That maybe you are right was to Ned, but he does say 251 and not 120.

      This new standard is about what you get in other countries that are like the EPO or maybe even China.

    2. 9.2

      So, they aren’t really being clever they are just importing onerous conditions for patentability from foreign countries. I think it is good to tighten this up and the absolute right thing. This new standard seems a bit too tight for me.

      Basically, this means you better start writing specs like they were for China.

      1. 9.2.1

        From what I’ve seen, this is the right way to go to tighten. But, my worries is that they have moved the boundaries with no notice and also I think without a lot of guidance of where the new boundaries are. And, also I think removing a PHOSITA from the standard is a disturbing trend as they are trying to do this in claim construction and enablement.

        Disturbing. It is like people that have never practiced patent law or understood science or technology are making rules absent any subtle understanding of how to make this work with our current system. Sad the Obama put in such untalented judges.

      2. 9.2.2

        The test at the EPO, for settling what any particular document teaches is “directly and unambiguously derivable”. Is that the same or different from “explicit and unequivocal”? I don’t know. Does anybody?

        Night, the way I see it, it’s a case of “What you gain on the roundabouts, you lose on the swings” or “You can’t have your cake and eat it too”. Thus:

        If you set a liberal low bar on the question whether amendments after filing offend the “written description” requirement, the consequence is that a wider range of prior art ought to be assessed as prejudicial to novelty. Or, other way around, if you set a high bar for what destroys novelty, that same high bar works against you, every time you want to amend after the filing date (because that prosecution amendment is adding something novel).

        At least, that’s the way it works, in the ROW.

        Of course that standard strikes prosecutors as too tight. The boot is on the other foot though, when you are innovative industry, and see your competitor sizing up your new product. Watch him then amend his pending case, and then come after you with his granted patent. It aint too tight then, is it?


          I don’t have any problem with a tighter standard per se. I basically agree with your analysis and would actually prefer a tighter standard. I think that trolls have exploited the looser standard whereas practicing companies tend not to use it.

          I am well aware of the standard of “directly and unambiguously derivable” and am used to writing applications for it. I think the problem we have is that we have all these judges that have no science background and no patent law background. They have no idea how to tighten the standard without causing massive problems.

          But, again, I think a tighter standard is good, but there is a lot of unfairness is tightening the standard through judicial fiat (and with basically ignorant nasty judges.)


          But again, a tighter standard would solve a lot of problems for the US patent system without unfairly limiting eligibility.


          Of course, Max, maybe they were directly copying but didn’t want to be caught at it. So they substituted words that they thought were synonyms, which they appear to be.

      1. 9.3.1

        112(a): “any person skilled in the art to which it pertains, or with which it is most nearly connected”


        103: “a person having ordinary skill in the art to which the claimed invention pertains”

      2. 9.3.2

        Am I to understand it, EG, that the OSITA and the PHOSITA have different levels of skill, that the notional reader of the appln as filed is a different animal from the notional reader of the prior art references that prejudice patentability? Different wording necessariliy imply different meanings? Is that what you would contend?
        If so, reading this, through your (not 112, not 103) eyes, which of your notional readers ought (in the interests of justice) in your eyes to have the higher level of skill, the OSITA or the PHOSITA


          Thanks Dennis. So 103 imposes the constraint “ordinary” while 112 has “any”. I take “any” to encompass the fullest range of skill levels found in the field in question.

          So in 112 disputes, does one side choose a notional person with sub-ordinary skill, while the other side chooses a person with a supra-ordinary level of skill?

          And, in 103 disputes they can instead argue how high is the level “ordinary”.

          What fun the litigators can have, with such arguments.


            MaxDrei, as you indicate, having a range leads to nonsense, and a go/no-go indicator that cannot work.

            It this cannot be the correct interpretation of the phrase.

            There can be only one (said in the best Duncan Macleod tones)


              …or does the bar necessarily be set at the lowest level? It would not make sense to set it at the highest level, becuase then you would be omitting the capability of some of that “any” from consideration (the desire to “tighten down” cannot be supported by the expansive language – you would need the explicit higher level language in the statute). This view would lead one to support the now questioned CAFC ambiguity reading of 112.

              Perhaps a better interpretation will be provided shortly.


                Yeah seems like since 251 was coming from the court that they decided to tighten it down. Really is pretty unfair to those that already wrote the spec’s and filed them.

  6. 8

    Wow, a whole bunch of reissues are on the block. Actually, you know a lot of NPEs use reissues. They buy patents and then repurpose them and assert them. I wonder if that had anything to do with this opinion. Although, I will note that Dyk is on the side of narrow patent rights and Taranto and Reyna are Google judges.

  7. 6

    I was pleased to see this Fed. Cir. decision [unlike some prior Fed. Cir. reissue decisions] noting that the current reissue statute differs from the prior reissue statute in force at the time of some of the cited pre-1952 Sup. Ct. reissue decisions. See the discussion on page 10 and note footnote 4 stating that: “As discussed below, prior to the 1952 Amendments, the original patent requirement was referred to as the ‘same invention’ requirement.” I think that statutory change should be significant, but apparently it did not make a difference in this case, which seemed to have a spec 112 “description of the invention” problem as to this broadening reissue.

      1. 6.1.1

        Yes, but the Fed. Cir. has now definitively held that 112 “description of the invention” is a seperate and additional 112 requirement from just “enablement” [disclosed].


          Paul, I must admit, I am still confused by this opinion.

          What was the whole point about the discussion of 120 vs. 121? If the safety features were adequately disclosed under 112(a), they could be claimed in a divisional case, right? If not, then why even discuss 121? The whole point of that discussion seemed to suggest that the disclosure was adequate for a divisional case. Otherwise, what was their point?

          What is the holding of this case? I really do not know.


            Ned, I don’t think this is complicated. All this is tied to broadening reissues and the “same invention.” So, they just tightened the screws on what it means to be the “same invention” when you broaden claims in a reissue.

            That’s it.


          BTW, trying to add new and different claims to something previously only incidentally mentioned in a spec and not related to any prior claims or suggestions of inventiveness was always an issue in interferences.
          As noted it tends to be ignored in ex parte examination of “continuations” and divisionals of still-pending applications, which as this decision notes are not the same as broadening reissues of issued patents.


            Paul, “only incidentally mentioned in a spec and not related to any prior claims or suggestions of inventiveness” “was always an issue in interferences.”

            Paul, it may have been an issue in a interference, but why?

            It seems that the Federal Circuit spoke about these incidental inventions as being claimable in a continuation or a divisional but not in a reissue according to the case at bar, and not in a interference according to you. Is this something peculiar about interferences and reissues as opposed to continuations and divisionals? Because if the issue really is 112(a), the subject matter is not supported and cannot be claimed even in the original ex parte case, or in a continuation or a divisional.

            Thus even though the case is talking about “same invention,” it appears to instead be talking about lack of adequate disclosure. The only problem, though, is that the the various safety features were disclosed, but were not identified as being inventive.


            True, interferences always required more than the mere 112 threshold of describing enough to show “possession.” And extending that to reissues is probably not earth-shaking.

            But regular applications (including divisional/continuations) *never* required any sort of special “appreciation” or anything else beyond the mere description/possession. The suggestion that such could happen is indeed chilling, especially considering that’s been the one thing patentees have left after all the other ways patent rights are being weakened.


              I do take some solace in this except, though, which seems to at least acknowledge that this standard applied here is indeed different from the standard that applies with regular continuations (which it later suggests need only satisfy 112):

              “Whether or not the written description requirement of §112 was satisfied here . . . for §251, ‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ 315 U.S. at 676. Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.”


          My opinion is that the Federal Circuit does not “definitively hold” anything. For instance, when I read some means plus function (MPF) cases, particularly in the area of computer-implemented inventions, I find their rules riddled with exceptions and replete with one three-group set of judges basically going against rules another three-group set of judges just espoused. (Or modify “three” to “two” in the last sentence, depending on the situation.)

          For my own edification, could you elaborate on this idea of a “description of the invention” requirement in 112?


            Patent Bob, indeed, it would be helpful to understand what the point of this case is. I am confused by the discussion that subject matter of these claims could be claimed in then the original ex parte prosecution, or continuation or a divisional, but not in a reissue.


          Paul, I do not understand your notation of “enablement [disclosed]”

          You appear to assume the conclusion that disclosed as here is only going to enablement as opposed to disclosed going to both enablement and possession.

          Can you clarify?


            (and I would also warn of the unintended consequences of patent profanity that may result from any attempt to force “scriviners” to include in applications such language as “this and only this is the invention”. We have already been on this merry-go-round with “this invention is,” “the object of the invention,” “an aspect of the invention,” and the related (now de facto) boiler plate that basically says “I possess all the combinations of what is in this specification.”)

  8. 5

    Switching to a First to File mentality has many consequences. To a reader looking in from outside, shoes seem to be dropping now, all over the shop. I wonder (only joking) is there a hotline connecting those who draft opinions at the Federal Circuit with those in EPO-DG3 who compile the “White Book” of the established caselaw of the EPO?

    It all makes sense, once you grasp that it is a priority contest. The race belongs to the swiftest. Swiftest to deposit at the PTO a package that comprises i) a Statement of what the Invention is, and ii) an enabling disclosure (that in its scope is commensurate with the breadth of the Statement). You do have to declare what you think your Invention is though. That would correspond to the Constitution’s “…discoveries….” because the act of discovery alluded to in the patents clause is the discovery that happens when your package gets to the PTO.

    How to draft? Do it for the EPO and you will then be well set up, less for the USPTO than for the Courts of the USA.

    1. 5.1

      Max, to you, what is the take-away here, the statement that the safety features were not adequately disclosed, that they were not separately identified, or that the the combination of feature claims was not disclosed?

    2. 5.2

      Max – You have to disclose what you believe the invention is. But you don’t have to know the entirety of the prior art. Therefore, you might disclose something that you did not realize at the time of filing was new and not obvious. If it was disclosed and enabled by your filing, I see no reason why you should be denied the filing date simply because at that time you did not appreciate the significance of every aspect of what you invented.

      1. 5.2.1

        Les, I assume for the sake of argument that you are correct as a general proposition.

        Assume further that what each safety feature was disclosed, just not that the inventor considered them to be a separate invention.

        Is the issue here that they could not be claimed apart from the jet injector limitations in a reissue, or that they could not be claimed even in a divisional case for lack of adequate disclosure?

        I am still quite puzzled by the holding here.


          Dear Les and Ned, I put it to you that multiple dependency influences drafting standards, and how liberal jurisdictions are, about post-filing amendments.

          An inventor comes to you with a prototype. Your job is to identify the underlying invention, then define it and write an enabling disclosure.

          You work with the Inventor to identify the irreducible number of features it takes to express the inventive concept at its most abstract. That is, Feature Combination ABC. If you could take that claim through to issue, your wildest dreams are fulfilled.

          That’s your Claim 1. There should never be any question of widening it. If you do, you’re talking about a different invention.

          Now you have 14 dependent claims in which to define your fall-back positions DEFGHIJKLMN. You start with Claim 2: ABCD.

          You continue with Claim 3 (which of course is directed to ABC plus one (or both) of D and E).

          Next up, Claim 4, to ABC plus one or more of individual features D, E and F.

          Continue in that vein, till you get to N in Claim 15. How many million combinations of features do you have, in that set of claims?

          If you have no basis in that set of claims, for the amendment to claim 1 you want after you see the EPO’s search opinion, well then you haven’t claimed your client’s invention competently.


            …and if you attempt to ignore the jurisdictional differences, you likewise have not been competent.


              The prohibition in the USA of a multiple dependent claim itself depending from a multiple dependent is what forces the US courts to be more liberal about what sorts of prosecution amendment are allowable. That was my point.

              A combination of US claim drafting rules with EPO-style tightness on allowability of amendment is not fair to inventors.

              But that is exactly what China imposes on aliens applying for patents at its Patent Office. Food for thought?


                As I recently posted, patent law is first and foremost sovereign law.

                China can do what ever China wants to do.

                I accord China respect to its national sovereignty.

  9. 4

    Current section 282 explicitly says that “any requirement of section 251” is a defense to a claim of patent infringement. Was this defense not in the statute before?

    Also, if the parties didn’t raise the fact that a section was an allegedly improper defense, it’s not surprising the court didn’t. Did the parties discuss that issue?

    1. 4.1

      Maybe he was thinking broadening reexamination, not reissue. Non-compliance with 251 is a defense under 282, but non-compliance with the prohibition on broadening reexamination claims (e.g., 35 USC 305) is not listed as a defense in 282.

  10. 3

    “the USPTO may well begin limiting applications that shift claim focus under this newly revived doctrine.”

    So what is the prosecution practice tip — include a mess of different independent claims of different focus in the original filing? Or is it sufficient to have those “claims” rewritten as paragraphs in the Summary portion of the application?

  11. 2

    Denis, as an aside, Muncie Gear (new matter) also noted the newly claimed invention was not even suggested to be an invention in the original specification that was solely focused on a different feature as being the invention. People have been confused by this case because some of the claims held invalid were arguably supported by the disclosure as originally filed. It was just that the new claims dropped from them any requirement directed to the originally conceived inventive feature.


                Is that feigned surprise Malcolm?

                Given the awesome number of your own comments that have been deleted, I am shocked, shocked I say, that you of all people would express surprise here.

                Me, I must have missed the content of this ‘best comment ever’ before it was “fixed.”

    1. 2.2

      Just one caveat, in Muncie Gear, the court found that the claims filed on Dec. 28, 1928 did not disclose the invention claimed in March 29, 1929 even though the Dec. 28, 1928 claims had dropped any requirement for the anti-torque plate which was the subject of the original claims.

      Also note that at least two claims filed in March 29, 1929, specifically claims 11 and 13, did not include or reference the new matter added to the specification in that amendment. The court made a point of this.

      Finally, this is a bit odd, the patentee admitted to commercial production by its exclusive licensee more that two years prior to the December 28th amendment. The significance of the March 29 amendment was that it was more than two years after January 1927, the date of first commercial use by a competitor. Under today’s law, as interpreted by the Federal Circuit, the commercial use of an invention by the patentee is a statutory bar. Was there a change in the on sale of requirements in the ’52 Act?

  12. 1

    Dennis, good point on 282 — the legal basis must be either 251 or 112. Is the same invention requirement of 251 different from 112’s written description?

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