In In re Staats, the Federal Circuit interpreted the time limit set forth in 35 USC § 251 for filing a broadening reissue application, and held that the time limit is satisfied once a broadening reissue application has been timely filed, so that the applicant can present new, broadened claims directed to different subject matter many years later. Even if this interpretation is supported by the plain language of the statute, legislative history, and case law, I wonder if it strikes an appropriate balance between the rights of the patent holder and those of the public.
Staats’s Reissue Applications
Staats’s original patent (U.S. Patent 5,940,600) was granted August 17, 1999. As summarized in the Federal Circuit decision, “[t]he ’600 patent described improvements to the management of isochronous data transfers such as the transfer of real-time video data from one component in a computer system to another component in the computer system.”
Staats filed a first broadening reissue application on August 17, 2001, exactly 2 years after the ‘600 patent had granted. The first reissue application related to the “first embodiment” described in the patent, and was supported by a reissue declaration stating that the broadening reissue application was needed for “failure to claim or to further claim subject matter disclosed in the specification pertaining to a method for handling data transmitted on an isochronous channel using a linked list of buffers.” The first reissue patent (US RE38,641), was issued on October 26, 2004, with new claims specifically reciting “a linked list of buffers.”
Staats filed a second broadening reissue application on May 12, 2004, as a continuation of the first broadening reissue application. The second broadening reissue application also related to the “first embodiment.” The second reissue patent (US RE 39,763) was issued on August 7, 2007.
Staats filed a third broadening reissue application on August 11, 2006, as a continuation of the second broadening reissue application. During prosecution, on June 11, 2007, Staats added broadened claims directed to the “second embodiment” described in the ’600 patent, which had not been previously claimed. The USPTO rejected the third reissue application as time barred.
The Reissue Statute
The reissue statute (35 USC § 251) provides in relevant part:
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 Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
The court previously addressed the time limit of § 251 in In re Doll (C.C.P.A. 1970). In that case, the court rejected the USPTO’s interpretation of the statute as providing that broadened claims are time barred if they “are not submitted until more than two years after the grant.” Instead, the court held that the time limit was satisfied because a broadening reissue application had been filed within the two-year time period.
The Examiner of the Staats application distinguished Doll on the ground that the new broadened claims of the third reissue application were “not related in any way to what was covered in the original broadening reissue.” The Board agreed, holding that “Staats’s continuing reissue application could not ‘broaden patented claims beyond the statutory two-year period in a manner unrelated to the broadening aspect that was identified within the two-year period.'”
The Federal Circuit Decision
The Federal Circuit began its analysis by tracing the history of the two-year time limit. The court noted that the original reissue statute did not have a time limit, but Supreme Court jurisprudence applied the equitable doctrine of laches and developed the principal that “a delay of longer than two years should only be excused by ‘special circumstances.'” The court noted that the current statute stems from the 1952 Patent Act, and cited Frederico’s commentary to the effect that “the courts [had] developed a rule of laches according to which a broadening reissue could not be applied for more than two years after the grant of the original patent except under extraordinary circumstances excusing the delay.”
The court analyzed the USPTO’s arguments in view of Doll, and did not accept the USPTO’s arguments that Doll could be distinguished on its facts. The court concluded:
Here, Staats’s first broadening reissue application was filed within section 251’s two-year limit. Under Doll, that is sufficient to satisfy the two-year requirement.
Judge O’Malley wrote a separate concurring opinion to criticize the majority’s reliance on Doll and explain that
The plain language of 35 U.S.C. § 251, coupled with the legislative history, long-standing unambiguous regulations implementing the statute, all relevant case law, and common sense, all compel reversal in this case.
Twenty Years of Uncertainty?
This broad interpretation of § 251 in effect gives patent holders an opportunity to obtain broadened claims for as long as the original patent has any term remaining. That is, by filing a broadening reissue application within two years, and then maintaining a line of continuing reissue applications, the patentee could obtain claims that are broader in any respect supported by the original disclosure. While the ability to file a reissue application is limited by the requirement to identify a correctable error, and 35 USC § 252 provides some (limited) rights to those who practiced the newly claimed invention before the broadened reissue was granted, the public at-large still could be subject to twenty years of uncertainty surrounding the scope of a given patent. At a time when public interest often is weighed heavily against patent rights, it is striking to see a decision that gives such broad rights to patent holders.
Resurgence of Reissues?
This decision and the court’s decision last year in In re Tanaka underscore the opportunity to pursue reissue applications in appropriate circumstances. Reissue applications may gain further prominence once the Inter Partes Review and Post Grant Review provisions of the America Invents Act take effect, particularly if a post-grant proceeding brings to light an underclaiming “error” that only can be corrected in a reissue application. For example, a patentee may find that it needs to narrow the claims to overcome an issue raised in an Inter Partes Review or Post Grant Review proceeding, but might be able to broaden the claims in some other respect to maximize its surviving patent rights. Such an amendment would not be permitted in an Inter Partes Review or Post Grant Review proceeding, but possibly could be pursued in a broadening reissue application.