Tag Archives: reissue patents

Federal Circuit Confirms Invalidity of Reissue Patent Claims That Violated Original Patent Requirement

by: Robert Wagner, patent attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

If an inventor discovers that he or she has failed to claim all that he or she could have in an issued patent, the patent statute provides a mechanism for going back and adding additional claims during a reissue proceeding. Certain requirements must be met before the patent office will allow such a correction. As the patent holder found out in a recent decision by the Federal Circuit in Antares Pharma, Inc. v. Medac Pharma Inc. (No. 2014-1648), failure to comply with these provisions can render the new claims invalid and unenforceable.

Background

USRE44846The inventor in Antares developed an automatic injection device to self-administer pharmaceuticals that involved using a needle to puncture the skin of a patient before administering a dose of medication. All of the claims in the original patent involved a “jet injection” limitation. Almost two years after the patent issued, Antares realized that it had failed to include claims directed to safety features on the injector. Because two years had not passed yet, Antares initiated a reissue proceeding with the USPTO under 35 U.S.C. § 251, which allows a patent holder to broaden or narrow claims if initiated within two years of the patent being issued. Antares then added a number of claims to cover safety features on general injection devices, and not just jet injection devices (see No. RE 44,846).

Antares filed suit against Medac, alleging that, among other things, it infringed some of the new claims that emerged from the reissue proceeding. Antares sought a preliminary injunction, but the district court denied the request after concluding that the new claims did not satisfy the original patent requirement of the reissue statute. Antares appealed, and the Federal Circuit affirmed.

Reissue Statute Requirements

Under § 251, a patentee that wants to add new claims that broaden the scope of the claims of an already issued patent must satisfy a number of requirements: (1) the reissue application must be filed within two years of the issuance of the patent; (2) the new claims must not violate the recapture rule (i.e., claiming scope that was surrendered during prosecution); (3) the new claims must not violate the original patent requirement; and (4) no new matter may be added to the specification. At issue in this case was the third requirement—the original patent requirement.

The original patent requirement requires that the specification adequately support and fully describe the new claims. It is not sufficient if the new, broader claims are “merely suggested or indicated in the original specification.” So, hints, suggestions, or mere indications are not enough. As with many things relating to the understanding of the scope of a patent, “the essential inquiry under the ‘original patent’ clause of § 251 . . . is whether one skilled in the art, reading the specification, would identify the subject matter of the new claims as invented and disclosed by the patentees.”

The Patent at Issue

Antares’ patent specification only described the safety features being on jet injection devices and repeatedly stated that the invention related to jet injectors. It did not generically describe how to use the safety devices with other types of injectors. Based on the limited nature of the specification, the Federal Circuit agreed that the new claims were invalid because they were directed to safety features on generic injectors that were not explicitly and unequivocally disclosed in the specification.

The Federal Circuit contrasted this result with that of another case, In re Amos, 953 F.2d 613 (Fed. Cir. 1991). In the Amos case, the patentee broadened his claims that were directed towards an invention for holding down work pieces on a moving table using rollers. In the specification, the patentee described how the rollers could be raised via mechanical or electronic means, but only claimed the mechanical version. During reissue, the patentee added claims directed towards the electronic version, which the Court found acceptable because the specification explicitly discussed that embodiment.

Conclusion

The reissue statute is a powerful tool to add new claim scope to issued patents. Care must be taken, however, to file the reissue application within the two-year period and to make sure that the new claims do not add scope that is not well-supported by the specification. This decision is another reason that patent drafters need to be careful when drafting the specification. The patent statute provides some opportunities for fixing claims, but it is difficult to fix a specification if it is lacking and the consequence can be losing claim scope that could have been otherwise available with better drafting.

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Patent Reissue as a Hedge Against Invalidity?

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

A recent decision from the Federal Circuit provides a boon for patent owners who are interested in filing suit against infringers but are concerned that their claims may be too broad to survive an invalidity attack. The decision in In re Takana (Case No. 2010-1262, April 15, 2011), allows a patent owner to file a reissue application before the US Patent and Trademark Office and add narrower claims to patent solely as a hedge against a potential invalidity challenge in future litigation.

A reissue application requires the patent owner to offer to surrender his or her patent and reopen the prosecution and amend the claims if the proposed changes were the result of an error and made without deceptive intent:

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 Patent Office determined that the patent owner could not simply add a dependent claim to his patent through the reissue process. The Federal Circuit disagreed and concluded that the patent owner’s desire to add a narrower dependent claim to his patent was an error–claiming less than he could have claimed during prosecution–and was not done with a deceptive intent. It found nothing improper with the reason for adding the narrower claim was a concern that a potential infringer might be able to invalidate the broad, original claims.

The decision creates a real opportunity for patent owners that want to enforce their patents through litigation, but are concerned that the claims were too broad as they were drafted to survive an invalidity attack. As with any such opportunity, there are drawbacks, however. A patent owner must offer to surrender the patent and reopen the prosecution of the patent. There is always the possibility that an examiner will discover a new reason the calls into question the validity of the patent. There are no guarantees that the surrendered patent will be allowed again. In addition, the patent statute provides for intervening rights that protect the public when a patent owner changes its patent after it has issued (either through reissue or reexamination). These intervening rights may grant absolute and equitable protections for products that were on sale before the patent owner added the new claims. Thus, a patent owner may not be able to enforce the patent against currently-selling products. Intervening rights generally provide fewer protections to future products, though.

This decision presents new opportunities for patent owners and an ability to correct older patents that contain novel ideas that may have been inartfully claimed.