MPEP § 1412 — MPEP § 1412
Current through: 2022-07-01

1412-Content of Claims 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1412 
 

 
 
 
 
 
 1412 Content of Claims [R-08.2012]

 The content of claims in a reissue application is somewhat limited, as is
 indicated in MPEP §
 1412.01 through MPEP § 1412.03 .
 

 
 1412.01 Reissue Claims Must Be for Same General Invention [R-07.2022]
 I. ORIGINAL PATENT REQUIREMENT The reissue claims must be for the same invention as that disclosed as being the invention in the original patent, as required by
 35 U.S.C.
 251 . The entire disclosure, not just the claim(s), is
 considered in determining what the patentee objectively intended as the invention.
 The determination of the original patent requirement is “an essentially factual
 inquiry confined to the objective intent manifested by the original
 patent .” In re Amos, 953 F.2d 613, 618, 21 USPQ2d 1271,
 1274 (Fed. Cir. 1991) (quoting In re Rowand, 526 F.2d 558, 560,
 187 USPQ 487, 489 (CCPA 1975)) (emphasis added); See also In re
 Mead, 581 F.2d 251, 256, 198 USPQ 412, 417 (CCPA 1978) (“Thus, in
 Rowand and similar cases, ‘intent to claim’ has little to do
 with ‘intent’ per se, but rather is analogous to the requirement of § 112 , first
 paragraph, that the specification contain ‘a written description of the invention,
 and of the manner and process of making and using it.’”). 
 

 The “original patent” requirement of
 35 U.S.C.
 251 must be understood in light of In re Amos,
 supra, where the Court of Appeals for the Federal Circuit stated:
 

 
 We conclude that, under both Mead and
 Rowand, a claim submitted in reissue may be rejected under
 the “original patent” clause if the original specification demonstrates, to one
 skilled in the art, an absence of disclosure sufficient to indicate that a
 patentee could have claimed the subject matter. Merely finding that the subject
 matter was “not originally claimed, not an object of the original patent, and not
 depicted in the drawing,” does not answer the essential inquiry under the
 “original patent” clause of § 251, which 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. In short, the absence of an “intent,”
 even if objectively evident from the earlier claims, the drawings, or the original
 objects of the invention is simply not enough to establish that the new claims are
 not drawn to the invention disclosed in the original patent.
 

 
 953 F.2d at 618-19, 21 USPQ2d at 1275.

 Similarly, the disclosure requirement in
 Amos must be understood in light of Antares Pharma
 Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d
 1865 (Fed. Cir. 2014). In Antares Pharma, Inc., the court found
 "[n]owhere 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." Antares Pharma, Inc., 771 F.3d at 1363,
 112 USPQ2d at 1871. Specifically, the court stated “[a]lthough 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.” Antares Pharma, Inc., 771
 F.3d at 1363, 112 USPQ2d at 1871. In other words, the court found that the patent
 only disclosed one invention, which was a particular class of jet injectors, due to
 the clearly repetitive use of “jet injector” in the title, the abstract, the summary
 of the invention, and the entirety of the specification of the patent. As a result,
 the claims in the reissue patent to the safety features on a generic injector (e.g.,
 a non-jet injector) were held to violate the original patent requirement of
 35 U.S.C.
 251 .
 

 To satisfy the original patent requirement where a
 new invention is sought by reissue, “… the specification must clearly and
 unequivocally disclose the newly claimed invention as a separate invention.”
 Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871.
 Accordingly, claims drawn to an invention comprising a newly claimed combination of
 features that were only disclosed in the original patent as suggested alternatives
 (and not as a single combination) or only as part of the original invention and not
 as an invention separate from the original invention would not satisfy the original
 patent requirement. See also Forum US, Inc. v. Flow Valve, LLC, 
 926 F.3d 1346, 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019) (“nowhere do the written
 description or drawings disclose that arbors are an optional feature of the
 invention. Even if a person of ordinary skill in the art would understand that the
 newly claimed, arbor-less invention would be possible, that is insufficient to comply
 with the standard set forth in Industrial Chemicals [315 U.S. 668
 (1942)] and Antares .”). “The ‘original patent’ standard and the
 written description requirement are not the same. Where the written description
 requirement is based on what the skilled artisan would have understood was within the
 possession of the inventor, recent Federal Circuit case law indicates that the
 original patent requirement under § 251 requires something more.” See Ex
 parte Sandwick, Appeal No. 2018-008369, op. at 22 (PTAB July 23, 2019)
 (Rejection under 35 U.S.C. 251 was affirmed because the patent did not describe
 any fabrication method other than casting. While one of ordinary skill in the art
 would have understood that other fabrication methods, such as injection molding or 3D
 printing, were possible or conventional, the reissue claims that did not include
 casting did not comply with the original patent requirement.)
 

 Examiners should review the reissue application to
 determine whether the original patent requirement is satisfied, by considering if: 
 

 
 (A) the claims presented in the reissue application are described
 in the original patent specification and enabled by the original patent
 specification such that 35 U.S.C. 112 , first
 paragraph is satisfied; 
 

 (B) nothing in the original patent specification indicates an
 intent not to claim the subject matter of the claims presented in the reissue
 application; and
 

 (C) the newly claimed invention is clearly and
 unequivocally disclosed in the specification as a separate invention with the
 claimed combination of features. 
 

 
 Examiners should discuss any possible rejection under
 35 U.S.C.
 251 based on failure to meet the original patent requirement
 with their TQAS or SPRS. 
 

 The presence of the disclosure in the original patent should
 evidence that applicant intended to claim or that applicant considered the material
 now claimed to be the invention. 
 

 The original patent specification would indicate an intent not to
 claim the subject matter of the claims presented in the reissue application in a
 situation analogous to the following: 
 

 
 The original patent specification discloses that composition X is
 not suitable (or not satisfactory) for molding an item because composition X fails
 to provide quick drying. The patent issues with claims directed only to
 composition Y. After the patent issues, it is found that composition X would be
 desirable for the molding in spite of the failure to provide quick drying, because
 of some other newly recognized benefit from composition X. The addition of a claim
 to composition X or a method of use thereof would not be permitted in a reissue
 application, because the original patent specification contained an explicit
 statement that composition X or a method of use thereof was not 
 contemplated as the invention. 
 

 

 One should understand, however, that the mere failure
 to claim a disclosed embodiment in the original patent (absent an explicit statement
 in the original patent specification of unsuitability of the embodiment) would not be
 grounds for prohibiting a claim to that embodiment in the reissue.
 

 II. FAILURE TO TIMELY FILE A CONTINUING APPLICATION PRIOR
 TO ISSUANCE OF ORIGINAL PATENT Where a restriction (or an election of species) requirement was made
 in an application and applicant permitted the elected invention to issue as a patent
 without filing a continuing application on the non-elected invention(s) or on
 non-claimed subject matter distinct from the elected invention, the non-elected
 invention(s) and non-claimed, distinct subject matter cannot 
 be recovered by filing a reissue application. A reissue applicant’s failure to timely
 file a continuing application is not considered to be error causing a patent granted
 on the elected claims to be partially inoperative by reason of claiming less than the
 applicant had a right to claim. Accordingly, this is not correctable by reissue of
 the original patent under 35 U.S.C. 251 . See In re
 Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re
 Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re
 Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also
 In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). In this
 situation, the reissue claims should be rejected under 35 U.S.C.
 251 for lack of any defect in the original patent and lack of
 any error in obtaining the original patent. In addition, amended reissue claims that
 clearly fall within the scope of the original non-elected claims should also be
 rejected under 35 U.S.C. 251 . See Ex parte Sandwick, 
 Appeal No. 2018-008369, op. at 25 (PTAB July 23, 2019) (“narrower reissue claims fall
 clearly within the scope of the broader original non-elected claims, and thus within
 the scope of the non-elected and restricted inventions that should have been properly
 pursued in a divisional application, whether claimed more broadly or more
 narrowly.”). Compare with In re Doyle, 293 F.3d 1355, 63 USPQ2d
 1161 (Fed. Cir. 2002) where the court permitted the patentee to file a reissue
 application to present a so-called linking claim, a claim broad enough to read on or
 link the invention elected (and patented) together with the invention not elected.
 The non-elected invention(s) were inadvertently not filed as a divisional
 application.
 

 III. 
 OVERLOOKED ASPECTS Claims to separate inventions/embodiments/species that
 were disclosed but never covered by the claims in the original application
 prosecution are claims to overlooked aspects. In other words, the reissue claims are
 drawn to a separate invention or separate species or embodiment that was not covered
 by a claim (e.g., a generic claim) at any point during the prosecution of the
 original application. For example, if all the claims were drawn to species A in the
 original application, reissue claims drawn to species B are considered claims to
 overlooked aspects, assuming that there was not a generic claim that covered both
 species A and B in the original application. Stated another way, an added limitation
 that “was within the scope of at least one original claim” cannot be an overlooked
 aspect. In re General Electric Co., 789 F. App’x 857, 861, 2019
 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“Because the original claims encompass
 the jet assembly subcombination, that subcombination is not an overlooked aspect of
 the invention.”)
 

 Claims to overlooked aspects are not subject to
 recapture because the claims are, by definition, unrelated to subject
 matter that was surrendered during the prosecution of the original application. In
 the decision of In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed.
 Cir. 2012), the Federal Circuit explained: 
 

 
 Whereas the recapture rule applies when surrendered
 subject matter is being reclaimed, overlooked aspects by definition were never
 claimed and thus never surrendered. See Mostafazadeh, 643 F.3d
 at 1360 [98 USPQ2d at 1644]. Rather, as we explained in
 Mostafazadeh, "overlooked aspects" is a separate inquiry
 under reissue that is independent of whether or not the recapture rule
 applies.
 

 679 F.3d at 1347, 102 USPQ2d at 1870.

 
 The overlooked aspects inquiry is only applicable when
 an examiner determines that the broadening aspect(s) of that reissue claim relate(s)
 to subject matter that applicant previously surrendered during the prosecution of the
 original application (which became the patent to be reissued) in step 2 of the
 recapture analysis. See MPEP § 1412.02 , subsection II.B.
 Recapture analysis would not need to be continued for claims drawn to overlooked
 aspects. 
 

 “Overlooked aspects, however, are not merely
 incidental features of the originally claimed invention. Rather, they are distinct
 elements which ‘were never claimed and thus never surrendered.’" Ex parte
 Yeo, Appeal No. 2020-001116, op. at 10-11 (PTAB March 2, 2020) (quoting
 Youman , 679 F.3d at 1347). In determining whether a reissue
 claim is drawn to overlooked aspects, the examiner must first determine if the claim
 meets the original patent requirement of 35 U.S.C. 251 . “A reissue claim
 that does not meet the original patent (‘same invention’) requirement under § 251
 cannot be an overlooked aspect of the invention because it is not directed to the
 disclosed invention of the patent. Therefore, as a first step, to determining whether
 reissue claim 6 is directed to an ‘overlooked aspect,’ we must determine whether
 reissue claim 6 meets the original patent (‘same invention’) requirement under §
 251.” Yeo at 34. See subsection I above for guidance on the
 original patent requirement. In Yeo, the board found that reissue
 claim 6 did not meet the original patent requirement, and therefore, was not drawn to
 an overlooked aspect. Yeo at 34-41. For reissue claim 9, the board
 found the claim met the original patent requirement but was not drawn to an
 overlooked aspect because originally filed claim 1 covered the subject matter of
 reissue claim 9. Yeo at 41-43. 
 

 If the examiner determines that claims are drawn to
 overlooked aspects, the examiner should state which claims are drawn to overlooked
 aspects on the record. 
 

 Note the following example illustrating the above:

 
 Assume that, in the original prosecution of the
 patent, applicant claimed a method of making glass lens, where the ion
 implantation step used a molten bath to diffuse ions into the lens, and that step
 was amended to recite a pressure of 50-60 PSI and temperature between 150-200
 degrees C to define the invention over the art. The pressure and temperature range
 are surrender generating limitations for any molten bath ion implantation claim,
 and if such limitations are completely or substantially eliminated by reissue,
 recapture will bar such claims. See MPEP § 1412.02 . However, if in
 the original application, applicant had failed to claim a disclosed embodiment to
 plasma ion implantation (i.e., using a plasma stream rather than a molten bath to
 provide the ions), and the original application was not subject to any restriction
 requirement, that is a proper 35 U.S.C. 251 error, which can
 be corrected by reissue. Applicant can, in a reissue application, add a set of
 claims to plasma ion implantation, without including the “50-60 PSI and
 temperature between 150-200 degrees C” limitations. The “50-60 PSI and 150-200
 degrees C" limitations are totally irrelevant to plasma implantation. Also, if in
 the original application that was not subject to any restriction requirement,
 applicant failed to claim the disclosed method of placing two lenses made by the
 invention in a specified series to modulate a laser for cutting chocolate, that
 too is a proper 35 U.S.C. 251 error, which can
 be corrected by reissue. In this lens placement method, it does not matter how the
 specific lens having the implanted ion gradient was made, and the “50-60 PSI and
 temperature between 150-200 degrees C” limitations are again not relevant. 
 

 

 Hester Industries, Inc. v. Stein,
 Inc., 142 F.3d 1472, 1482-83, 46 USPQ2d 1641, 1649-50 (Fed. Cir. 1998),
 addressed this concept of overlooked aspects, stating:
 

 
 [T]his principle [i.e., avoidance of the recapture
 rule], in appropriate cases, may operate to overcome the recapture rule when the
 reissue claims are materially narrower in other overlooked aspects of the
 invention.
 

 
 142 F.3d at 1482-83, 46 USPQ2d at 1649-50. 

 See also B.E. Meyers & Co. v. United
 States, 47 Fed. Cl. 200, 56 USPQ2d 1110 (Fed. Cl. 2000), where the Court
 of Federal Claims permitted the complete removal of a limitation that was added to
 obtain the patent, where the replacement limitation provided a separate invention. In
 Meyers , the patented invention pertained to night vision
 devices. The original patent application, as filed, contained only claims that
 included a pulsing infrared Light Emitting Diode (LED). The broadening reissue
 application sought claims that did not include the pulsing LED. The
 Meyers court found that the reissued claims were to an
 independent invention that used a light source funneled through a lens system, which
 had nothing to do with any type of pulsing circuitry.
 

 Even though claims drawn to overlooked aspects are not
 subject to recapture, the failure to present such claims may not be a proper error
 under 35 U.S.C.
 251 . Specifically, where a restriction (or an election of
 species) requirement was made in an application and applicant permitted the elected
 invention to issue as a patent without filing a continuing application on the
 non-elected invention(s) or on non-claimed subject matter distinct from the elected
 invention, the non-elected invention(s) and non-claimed, distinct subject matter
 cannot be recovered by filing a reissue application. See subsection II above for more
 information.
 

 

 
 1412.02 Recapture of Canceled Subject Matter [R-01.2024]

 A reissue will not be granted to 
 "recapture"
 
 
 claimed subject matter which was surrendered in an
 application to obtain the original patent. In re McDonald, 43 F.4th
 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. v. Xicor
 LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re
 Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re
 Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011);
 North American Container, Inc. v. Plastipak Packaging, Inc., 415
 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments
 Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester
 Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir.
 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997);
 Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289,
 295 (Fed. Cir. 1984); In re Wadlinger, 496 F.2d 1200, 181 USPQ 826
 (CCPA 1974); In re Richman, 409 F.2d 269, 276, 161 USPQ 359, 363-364
 (CCPA 1969); In re Willingham, 282 F.2d 353, 127 USPQ 211 (CCPA
 1960). The question as to whether a reissue patent violates the rule against recapture
 of subject matter surrendered during original prosecution is a question of law.
 Mostafazadeh, 643 F.3d at 1358, 98 USPQ2d at 1642.
 

 Claims to separate inventions/embodiments/species that
 were not claimed in the original application prosecution (i.e., “overlooked aspects”)
 are not a part of a recapture analysis. For this reason, none of the examples below
 involve amending claims to add overlooked aspects. See MPEP § 1412.01 ,
 subsection III, for more information on overlooked aspects. 
 

 I. DEFINITIONS Broadening Claim - A reissue claim is
 “broadened” where at least one limitation of the patent claims is either completely
 eliminated or is only presented in a broader way in the reissue claim relative to the
 broadest patented claim(s); see MPEP § 1412.03 for guidance as to
 the nature of a "broadening claim." 
 

 Canceled Claim – A claim canceled from
 the original application to obtain the patent for which reissue is being sought. In
 the context of recapture case law, claims are considered canceled if the claims were
 deleted and not replaced or were replaced (either through cancellation or amendment)
 by other claims that are more specific than the canceled claims in at least one
 aspect in order to overcome a rejection in the prosecution of the original
 application. In other words, claims replacing canceled claims can be new claims that
 are narrower than the canceled claims or amended claims that are narrower than the
 canceled version of the claims.
 

 Original Application - The "original
 application" includes the prosecution record of the application that issued as the
 patent for which the reissue application was filed. In addition, the “original
 application” includes the patent family’s entire prosecution history. MBO
 Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306,
 1316-18, 94 USPQ2d 1598 (Fed. Cir. 2010). See also In re McDonald, 
 43 F.4th 1340, 1347, 2022 USPQ2d 745 (Fed. Cir. 2022). For example, surrender may
 occur because of the prosecution history of related applications.
 

 Original Claim – A claim that was
 presented in the original application prior to surrender. See In re
 Youman, 679 F.3d 1335,1346 n.4, 102 USPQ2d 1862,1870 n.4 (Fed. Cir.
 2012). 
 

 Other or Unrelated Aspects/Limitations –
 Limitations that are not related to surrendered subject matter or surrender
 generating limitations. 
 

 Overlooked Aspects - Claims to separate
 inventions/embodiments/species that were never presented in the original application.
 See MPEP §
 1412.01 , subsection III, for more information on overlooked
 aspects.
 

 Patent Claim – A claim in the patent for
 which reissue is being sought. Some court decisions use the phrase "original patent
 claim" for patent claim. Patent claims are the claims in effect as of the date of
 filing of the reissue application. See 37 CFR 1.173(g) .
 

 Recapture – A doctrine based upon the
 error requirement in 35 U.S.C. 251 that prevents a
 reissue applicant from claiming subject matter surrendered during the prosecution of
 the original application.
 

 Surrender Generating Limitation (SGL) or
 Surrendered Subject Matter – An SGL is a “limitation” presented, argued, or
 stated to make the claims patentable (in the original application) and “generates”
 the surrender of claimed subject matter. An SGL or surrendered subject matter can be
 created by presentation of new/amended claims to define the invention over the art or
 an argument/statement by applicant that a limitation of the claim(s) (including a
 limitation in an original claim) defines the invention over the art. A patent owner
 (reissue applicant) is bound by the argument that applicant relied upon to overcome
 an art rejection in the original application for the patent to be reissued,
 regardless of whether the Office adopted the argument in allowing the claims.
 Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103
 USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be
 created by presentation of new/amended claims or an argument/statement to obviate a
 rejection based on other grounds. In re McDonald, 43 F.4th 1340,
 1348, 2022 USPQ2d 745 (Fed. Cir. 2022).
 

 II. THREE STEP TEST FOR RECAPTURE: In Clement, 131 F.3d at 1468-70, 45 USPQ2d at
 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for
 recapture analysis. In North American Container, 415 F.3d at 1349,
 75 USPQ2d at 1556, the court restated this test as follows:
 

 
 We apply the recapture rule as a three-step
 process:
 

 
 (1) first, we determine whether, and in what
 respect, the reissue claims are broader in scope than the original patent
 claims;
 
 [NOTE: if the claims are not broader in
 scope than the original patent claims, there is no recapture; if the
 claims are broader in scope, then proceed to step (2).]
 

 
 

 (2) next, we determine whether the broader
 aspects of the reissue claims relate to subject matter surrendered in the
 original prosecution; and 
 
 [NOTE: if the broader aspects of the
 reissue claims do not relate to surrendered subject matter, there is no
 recapture; if the broader aspects of the reissue claims do relate to
 surrendered subject matter, then proceed to step (3).] 
 

 
 

 (3) finally, we determine whether the reissue
 claims were materially narrowed in other respects, so that the claims may
 not have been enlarged, and hence avoid the recapture rule. 
 
 [NOTE: if the reissue claims were
 materially narrowed in aspects related to the surrendered subject matter,
 there is no recapture; if the claims were not materially narrowed in
 related aspects or were narrowed in unrelated aspects, there
 is recapture.]
 

 
 

 
 
 In North American Container, the court cited
 Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600;
 Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50; and
 Clement, 131 F.3d at 1468, 45 USPQ2d at 1164-65 as cases that
 lead to, and explain the language in, the North American Container 
 recapture test.
 

 A. The First Step - Is There Broadening? In every reissue application, the examiner must first review each
 claim for the presence of broadening, as compared with the scope of the claims of
 the patent to be reissued. A reissue claim is broadened where some limitation of
 the patent claims is no longer required in the reissue claim; see
 MPEP §
 1412.03 for guidance as to the nature of a
 
 "broadening claim."
 
 
 If
 the reissue claim is not broadened in any respect as compared to the patent
 claims, the analysis ends; there is no recapture.
 

 B. The Second Step - Does Any Broadening Aspect of the Reissue Claim
 Relate to Surrendered Subject Matter? Where a claim in a reissue application is broadened in some
 respect as compared to the patent claims, the examiner must next determine whether
 the broadening aspect(s) of that reissue claim relate(s) to subject matter that
 applicant previously surrendered during the prosecution of the original
 application (which became the patent to be reissued). The
 
 "original application"
 
 
 includes the
 patent family’s entire prosecution history. MBO Laboratories, Inc. v.
 Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir.
 2010). Each limitation of the patent claims, which is omitted or broadened in the
 reissue claim, must be reviewed for this determination. This involves two
 sub-steps.
 

 1. The Two Sub-Steps: 
 (A) One must first determine whether applicant surrendered
 any subject matter in the prosecution of the original application that
 became the patent to be reissued.
 
 

 

 If an original patent claim limitation now being omitted
 or broadened in the present reissue application was originally relied
 upon by applicant in the original application to make the claims
 allowable, the omitted limitation relates to subject matter previously
 surrendered by applicant. The reliance by applicant to define the
 original patent claims over the art can be by presentation of new/amended
 claims to define over the art, or an argument/statement by applicant that
 a limitation of the claim(s) defines over the art. The reliance by
 applicant can also be created by presentation of new/amended claims or
 arguments/statements to obviate rejections based on other grounds. See
 In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d
 745 (Fed. Cir. 2022). To determine whether such reliance occurred, the
 examiner must review the prosecution history of the original application
 (of the patent to be reissued and any related application(s)) for
 surrender of claimed subject matter which may result in recapture. The
 prosecution history includes the rejections and applicant’s arguments
 made therein.
 

 
 

 

 With respect to whether applicant
 surrendered any subject matter, it is to be noted that a patent owner
 (reissue applicant) is bound by the argument that applicant relied upon
 to overcome, for example, an art rejection in the original application
 for the patent to be reissued, regardless of whether the Office adopted
 the argument in allowing the claims. Greenliant Systems, Inc. v.
 Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed.
 Cir. 2012). As pointed out by the court, “[i]t does not matter whether
 the examiner or the Board adopted a certain argument for allowance; the
 sole question is whether the argument was made.” Id. 

 
 

 

 If applicant did not surrender any subject matter in the
 prosecution of the original application, the analysis ends and there is
 no recapture.
 

 

 (B) If applicant did surrender subject matter in the
 original application prosecution, the examiner must then determine
 whether any of the broadening of the reissue claims is in the area of the
 surrendered subject matter. The examiner must analyze all of the
 broadening aspects of the reissue claims to determine if any of the
 omitted/broadened limitation(s) are directed to limitations relied upon
 by applicant in the original application to make the claims
 allowable.
 

 
 With respect to the “second step” in the
 recapture analysis, it is to be noted that if the reissue claim(s), are
 broadened with respect to the previously surrendered subject matter, then
 recapture will be present regardless of other unrelated narrowing
 limitations. In the decision of In re Mostafazadeh, 643 F.3d
 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
 

 
 [T]he recapture rule is violated when a
 limitation added during prosecution is eliminated entirely, even if other
 narrowing limitations are added to the claim. If the added limitation is
 modified but not eliminated, the claims must be materially narrowed relative
 to the surrendered subject matter such that the surrendered subject matter
 is not entirely or substantially recaptured. Id. at
 1361.
 

 
 The situation in Mostafazadeh 
 involved substantial recapture of the surrendered subject matter, which was
 determined under the third step of the recapture analysis. See subsection II.C
 below for more explanation. The focus in the analysis of the second step must
 be on the subject matter that was surrendered during the original application
 prosecution in the context of the then-existing claims (i.e., the original
 claims).
 

 When an examiner determines that the broadening
 aspect(s) of that reissue claim relate(s) to subject matter that applicant
 previously surrendered during the prosecution of the original application
 (which became the patent to be reissued) in step 2 of the recapture analysis,
 the overlooked aspects inquiry may be applicable. See MPEP §
 1412.01 , subsection III. 
 

 2. Examples of the Second Step Analysis: 
 (A) Example (1) - Argument without amendment:

 
 In Hester, supra , the Federal Circuit held that the surrender that
 forms the basis for impermissible recapture 
 "can occur through arguments alone."
 
 
 142
 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims
 is omitted in the reissue claims and no other amendments are made. This
 omission provides a broadening aspect in the reissue claims, as compared to the
 claims of the patent. If the omitted limitation A was argued in the original
 application to make the application claims allowable over the art in the
 application, then the omitted limitation relates to subject matter previously
 surrendered in the original application, and recapture will exist. Accordingly,
 where claims are broadened in a reissue application, the examiner should review
 the prosecution history of the original patent file for recapture,
 even where the claims were never amended during the
 prosecution of the application which resulted in the patent. Note: The argument
 that the claim limitation defined over the rejection must have been specific as
 to the limitation relied upon, rather than a general statement regarding the
 claims as a whole. A general 
 "boiler
 plate"
 
 
 sentence in the original application will not, by
 itself, be sufficient to establish surrender and recapture.
 

 An example of a general 
 "boiler plate"
 
 
 sentence of argument is:
 

 
 In closing, it is argued that the
 limitations of claims 1-7 distinguish the claims from the teachings of the
 prior art, and claims 1-7 are thus patentable.
 

 
 An argument that merely states that all the limitations of the
 claims define over the prior art will also not, by itself, be sufficient to
 establish surrender and recapture. An example is:
 

 
 Claims 1-5 set forth a power-train apparatus which
 comprises the combination of A+B+C+D+E. The prior art of record does not
 disclose or otherwise teach, providing a material-transfer apparatus as
 defined by the limitations of claim 1, including an A member and a B member,
 both connected to a C member, with all three being aligned with the D and E
 members.
 

 
 This statement is simply a restatement of the entirety of
 claim 1 as allowed. No measure of surrender could be gleaned from such
 "boiler-plate" applicant arguments. 
 

 In both of the above examples, the argument does not provide
 an indication of what specific limitations, e.g., specific element or step of
 the claims, cooperative effect, or other aspect of the claims, are being relied
 upon for patentability. Thus, applicant has not surrendered anything by the
 argument.
 

 
 (B) Example (2) - Amendment of the claims without
 argument:
 

 
 The limitation omitted in the reissue claim(s) was added in
 the original application claims for the purpose of making the application
 claims allowable over a rejection or objection made in the application. Even
 though applicant made no argument on the record that the limitation was added
 to obviate the rejection, the nature of the addition to the claim can show that
 the limitation was added in direct reply to the rejection. This too will
 establish the omitted limitation as relating to subject matter previously
 surrendered. To illustrate this, note the following example:
 

 
 The original application claims recite limitations A+B+C,
 and the Office action rejection combines two references to show A+B+C. In
 the amendment replying to the Office action, applicant adds limitation D to
 A+B+C in the claims, but makes no argument as to that addition. The examiner
 then allows the claims. Even though there is no argument as to the addition
 of limitation D, it must be presumed that the D limitation was added to
 obviate the rejection. The subsequent deletion of (omission of) limitation D
 in the reissue claims would be presumed to be a broadening in an aspect of
 the reissue claims related to surrendered subject matter. Accordingly, the
 reissue claims would be barred by the recapture doctrine (absent the
 addition of a materially narrowing limitation related to the surrendered
 subject matter). The above result would be the same whether the addition of
 limitation D in the original application was by way of applicant’s amendment
 or by way of an examiner’s amendment with authorization by applicant.
 

 
 
 (C) Example (3) - Who can make the surrendering
 argument?
 

 
 Assume that the limitation A omitted in the reissue claims was
 present in the claims of the original application. The examiner’s reasons for
 allowance in the original application stated that it was that limitation A
 which distinguished over a potential combination of references X and Y.
 Applicant did not present on the record a counter statement or comment as to
 the examiner’s reasons for allowance, and permitted the claims to issue. 
 

 Ex parte Yamaguchi, 61 USPQ2d 1043 (Bd.
 Pat. App. & Inter. 2001)(precedential) held that a surrender of claimed
 subject matter cannot be based solely upon an applicant’s failure to respond
 to, or failure to challenge, an examiner’s statement made during the
 prosecution of an application. Applicant is bound only by applicant’s revision
 of the application claims (including examiner's amendments authorized by
 applicant) or a positive argument/statement by applicant. An
 applicant’s failure to present on the record a counter statement or comment as
 to an examiner’s reasons for allowance does not give rise to any implication
 that applicant agreed with or acquiesced in the examiner’s reasoning for
 allowance. Thus, the failure to present a counter statement or comment as to
 the examiner’s statement of reasons for allowance does
 not give rise to any finding of surrender. The
 examiner’s statement of reasons for allowance in the original application
 cannot, by itself, provide the basis for establishing surrender and recapture . 
 

 It is only in the situation where applicant does file comments
 on the statement of reasons for allowance, that surrender may
 have occurred. Note the following scenarios in which an
 applicant files comments:
 

 
 Scenario 1- Limitation C is Surrendered Subject Matter: 
 The examiner’s statement of reasons for allowance in the original
 application stated that it was limitation C (of the combination of ABC)
 which distinguished over a potential combining of references X and Y, in
 that limitation C provided increased speed to the process. Applicant filed
 comments on the examiner’s statement of reasons for allowance essentially
 supporting the examiner’s reasons. Limitation C is thus established as
 relating to subject matter previously surrendered.
 

 
 
 Scenario 2- Limitation C is Not Surrendered
 Subject Matter: On the other hand, if applicant’s comments on
 the examiner’s statement of reasons for allowance contain a
 counter statement that it is limitation B (of the combination
 of ABC), rather than C, which distinguishes the claims over the art, then
 limitation B would constitute a surrender generating limitation, and
 limitation C is not surrender generating
 limitation.
 

 
 
 Scenario 3- There is No
 Surrender: If applicant replies to the examiner’s statement of
 reasons for allowance with a general statement that the claims are allowable
 because the prior art of record does not anticipate or render obvious the
 claims as a whole, then there will be no surrender.
 

 C. The Third Step - Are the Reissue Claims Materially Narrowed in Other
 Respects, and Hence Avoid the Recapture Rule? As pointed out above, this third step of the recapture
 determination, as set forth in North American Container, 
 considers the significance of the claim limitations that were added and deleted,
 during prosecution of the patent (to be reissued) to determine whether the reissue
 claims should be barred under the recapture doctrine. 
 

 In the decision of In re
 Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the
 Federal Circuit stated that to avoid the recapture rule "the claims must be
 materially narrowed relative to the surrendered subject matter such that the
 surrendered subject matter is not entirely or substantially recaptured."
 Id. at 1361, 98 USPQ2d at 1644. Under this third step, it
 must be determined if there is entire or substantial recapture of the
 surrendered subject matter because there is no or insufficient material narrowing
 to avoid the recapture rule.
 

 The following discussion addresses analyzing the reissue claims
 that have eliminated or modified a surrender generating limitation, as determined
 under step 2 analysis. In any broadening reissue application, the examiner will
 determine, under steps 1 and 2 of the recapture analysis on a claim-by-claim
 basis, whether the broadening relates to subject matter that was surrendered
 during the examination of the patent for which reissue is requested. Under step 3,
 it must be determined if such reissue claims are materially narrowed so as to
 escape the effects of the recapture doctrine. Note, examiners should consider any
 relevant preliminary applicant arguments of record as part of the recapture
 determination. See subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,”
 which points out how the recapture finding of the Office can be rebutted by
 applicant, in some limited instances, by showing that material narrowing is
 present in the claims.
 

 The modification of a surrender generating limitation (SGL) is
 broken down into several possibilities that will be addressed below. 
 

 
 Situation 1 - SGL entirely eliminated: If an SGL has been entirely
 eliminated from a claim present in the reissue application, then a
 recapture rejection under 35 U.S.C. 251 may be
 proper. For example, if a claim limitation present in the original patent
 that was added to overcome a rejection or that was argued by applicant to
 distinguish over the prior art is entirely eliminated from a claim in the
 reissue application and not replaced by a new SGL-related limitation, then a
 recapture rejection under 35 U.S.C. 251 is proper
 and must be made for that claim.
 

 Such an omission in a reissue claim, even if
 it is accompanied by other limitations making the reissue claim narrower
 than the patent claim in other unrelated aspects, is
 impermissible recapture. Pannu, 258 F.3d at 1371-72, 59
 USPQ2d at 1600. But note that even if the SGL limitation in the patent
 claims was entirely eliminated, the reissue applicant may have added a new
 limitation that relates to surrendered subject matter. See situation 3
 below.
 

 Situation 2 - SGL modified but not entirely
 eliminated: If the SGL has not been entirely eliminated from a claim in
 the reissue application (i.e., the amendment narrowing the claim or the
 argued limitation has not been entirely eliminated from the claim in the
 reissue application), but rather it has been made less restrictive in the
 reissue application claim (such that the claim is broadened), the analysis
 (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d
 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335,
 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: 
 
 It must be determined what portion of the
 amendment or argued limitation has been retained, and whether the
 retained portion materially narrows the original claims to avoid
 recapture.
 

 
 See Youman, 679 F.3d at
 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the
 claims before surrender'"). “[I]f the patentee modifies the added [or
 argued] limitation such that it is broader than the patented claim yet still
 materially narrows relative to the original claim, the recapture rule does
 not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. 
 

 If the retained portion of the modified
 limitation is well known in the prior art, then impermissible recapture
 exists, even in a case where a further limitation which is not related to
 the surrendered subject matter (i.e., a limitation that does not materially
 narrow the claims) has been added to define the claims over the art.
 Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644.
 Even if the retained portion of the modified limitation is not well known,
 there may still be impermissible recapture. For example, “[w]here the
 modified limitation was contained within the prior art relied upon by the
 examiner in the original prosecution … the limitation is not materially
 narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at
 1870. 
 

 

 Situation 3 - Materially narrowed in other respects relative to the
 surrendered subject matter: In both situations 1 and 2, even “[i]f the
 modified limitation does not materially narrow (or, in other cases, the
 limitation is eliminated),” it may be that “the reissued claims were
 materially narrowed in other respects so that the claims have not been
 enlarged, and hence avoid the recapture rule.” Youman, 
 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified
 limitation does not materially narrow, the reissue applicant may have added
 a new limitation that still relates to surrendered subject matter (e.g.,
 same characteristic or concept). 
 

 The material narrowing must relate to what
 was amended or argued by applicant in the original application, for example
 to define the claim over the art. Greenliant Systems, Inc. et al v.
 Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed.
 Cir. 2012). See also In re General Electric Co., 789 F.
 App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The
 additional limitations identified by General Electric, however, relate only
 to positioning of the synthetic jet assembly. Any narrowing accomplished by
 those limitations is thus unrelated to the surrendered subject matter [the
 attachment-related limitations] and therefore insufficient to avoid
 recapture”). If the reissue applicant believes that “the reissued claims
 were materially narrowed in other respects,” the reissue applicant should
 point out explicitly what limitation has been added
 to the claims to materially narrow and how it materially narrows the
 claims.
 

 

 III. Example
 Analysis The following examples are provided for analyzing the reissue
 claims for recapture.
 

 A. Comparing Reissue Claims 
 Narrowed/Broadened Vis-à-vis the Canceled
 Claims 1. Reissue Claims Are Same or Broader in Scope Than Canceled Claims
 in All Aspects: The recapture rule bars the patentee from acquiring,
 through reissue, claims that are in all aspects (A) of the same scope as,
 or (B) broader in scope than, those claims
 canceled from the original application to
 obtain a patent. Ball Corp. v. United States, 729 F.2d
 at 1436, 221 USPQ at 295. 
 

 2. Reissue Claims Are Narrower in Scope Than Canceled Claims in at
 Least One Aspect: The discussion below is directed to the situation where
 the reissue claims are narrower than the canceled claims in some
 aspect, but are broader than the patent claims in some other
 aspect . Note, as discussed above in subsection II.A, if the
 reissue claims are equal in scope to, or narrower than, the patent claims
 (as opposed to the canceled claims) in all aspects, then there can never
 be recapture and the discussion that follows is not applicable. 
 

 If the reissue claims are narrower in scope than the
 claims canceled from the original application by
 inclusion of the entirety of the limitation added to define the original application claims over a
 rejection , there will be no recapture, even if the reissue
 claims are broader than the canceled claims in some other aspect (i.e.,
 an aspect not related to the surrender made in the original
 application).
 

 For example, assume combination AB was originally
 claimed in the application, and the claim was amended in response to a
 rejection to add element C, and thus, provide ABC (after which the patent
 issued). The prosecution history of the original application does not
 include any patentability arguments based on limitation B alone or in
 combination with A, C, or A and C. The reissue claims are then directed
 to combination AB broadened C. The
 AB broadened C claims are
 narrower in scope when compared with the canceled
 claim subject matter AB with respect to the addition of
 C (which was added in the application to overcome the art).
 Because the reissue claim retains surrender-generating limitation C and
 the broadening was not in the area of the surrendered subject matter,
 there is no recapture. On the other hand, if the amendment paper that
 added element C in the prosecution of the original application included
 arguments that the combination of B and C defined the claimed invention
 over the prior art (e.g., there is synergistic effect of B and C), then
 there will be recapture unless the claim is materially narrowed in a
 manner related to the surrendered subject matter. See example (4) in
 subsection B below. 
 

 As another example, assume combination ABZ was
 originally claimed in the application, and the claim was amended in
 response to a rejection to add element C and thus provide ABZC (after
 which the patent issued). The prosecution history of the original
 application does not include any patentability arguments based on
 limitation Z. The reissue claims are then directed to combination ABC
 (i.e., element Z is deleted from the canceled claims, while element C
 remains present). The ABC claims of the reissue are
 narrower in scope as compared to the canceled claim
 subject matter ABZ with respect to the addition of C 
 (which was added in the application to overcome the art). Because the
 reissue claims retain surrender-generating limitation C, there is
 no recapture .
 

 B. Comparing Reissue Claims 
 Narrowed/Broadened Vis-à-vis the Patent Claims As pointed out above, where the reissue claims are narrower
 than the patent claims in all aspects, then there can never be recapture. If
 reissue claims are equal in scope to the patent claims, there is no recapture
 as to those reissue claims. Where, however, reissue claims are both
 broadened and narrowed as compared with the patent
 claims, the nature of the broadening and narrowing must be examined to
 determine whether the reissue claims are barred as being recapture of
 surrendered subject matter. If the claims are 
 "broader than they are narrower in a manner directly
 pertinent to the subject matter... surrendered during
 prosecution"
 
 
 ( Clement, 131 F.3d at
 1471, 45 USPQ2d at 1166), then recapture will bar the claims. This
 narrowing/broadening vis-à-vis the patent is broken down
 into four possibilities that will now be addressed.
 

 If a claim is presented in a reissue application that omits,
 in its entirety, the surrender-generating limitation, that claim impermissibly
 recaptures what was previously surrendered, and that claim is barred under
 35 U.S.C.
 251 . Note, however, subsection VII, below, “REBUTTAL BY
 THE REISSUE APPLICANT,” which points out how the recapture finding of the
 Office can be rebutted by applicant, in some limited instances, by showing that
 material narrowing is present in the claims.
 

 1. Reissue Claims Are Broader by Entirely Omitting Surrender Generating
 Limitation(s) and Are Narrower in Unrelated Aspect(s): In this case, there is
 recapture .
 

 Recapture exists because there is no
 addition of a new limitation that is related to the surrendered subject
 matter or if there is a new limitation that is related to the surrendered
 subject matter but it fails to materially narrow the claim (e.g., only adds
 what is known in the prior art). 
 

 This situation is where the patent claims are directed to
 combination ABC and the reissue claims are directed to ABD (which is not an
 overlooked aspect). Element C was either a limitation added to AB to obtain
 allowance of the original patent, or was argued by applicant to obviate a
 rejection (or both) in the prosecution of the original application. Thus,
 addition of C (and/or argument as to C) has resulted in the surrender of any
 combination of A & B that does not include subject matter related to C.
 Element C is a surrender generating limitation. Element D, on the other
 hand, is not related to the surrendered subject matter. Thus, the reissue
 claim, which completely eliminates C, is broadened in an area related to the
 surrender. The narrowing of the claim by the addition of D will not save the
 claim from recapture because D is not related to the surrendered subject
 matter. If, however, element D were related to the surrendered subject
 matter and materially narrowed the claim compared to the canceled claim,
 recapture may be avoided. See example 4 below.
 

 Reissue claims that are broader than the original patent
 claims by entirely omitting the surrender-generating limitation (element C,
 in the example given) without a related replacement limitation
 will be barred by the recapture rule even though
 there is narrowing of the claims by adding limitation(s) not related to the
 surrendered subject matter. As stated in the decision of In re
 Clement, 131 F.3d at 1470, 45 USPQ2d at 1165, if the reissue
 claim is broader in an aspect germane to a prior art rejection, but narrower
 in another aspect completely unrelated to the rejection (e.g., fails to
 materially narrow the claim relative to the surrendered subject matter), the
 recapture rule bars the claim. Pannu, 258 F.3d 1366, 59
 USPQ2d 1597, provides a fact situation in which this scenario was held to be
 recapture.
 

 2. Reissue Claims Are Narrower or Equal in Scope in Area Related to
 Surrendered Subject Matter and Are Broader in Unrelated Aspect(s): In this case, there is no
 recapture .
 

 This situation is where the patent claims are directed to
 combination ABCDE and the reissue claims are directed to ABDE (element C is
 omitted). Assume that the combination of ABCD was present in the original
 application as it was filed, and element E was later added to
 overcome a rejection . No patentability argument was ever
 presented based on elements A-C. 
 

 In this situation, the ABCDE combination of the patent can
 be broadened (in the reissue application) to omit element C, and thereby
 claim the combination of ABDE, where element E (the surrender generating
 limitation) is not omitted. There would be no 
 recapture in this instance. (If an argument had been presented as to element
 C defining over the art, in addition to the addition of element E, then the
 ABCDE combination could not be broadened to entirely
 omit element C and thereby claim combination of ABDE. This would be
 recapture; see the discussion above as to surrender and recapture based upon
 argument and see example 4 below.)
 

 Additionally, the reissue claims are certainly permitted to
 recite combination ABDE specific (where
 surrender-generating element E is narrowed ). The
 patent claims can be broadened in an area not directed to the surrender (by
 omitting element C) and narrowed in the area of surrender (by narrowing
 element E to E specific ) without violating the
 recapture doctrine.
 

 As another example, assume limitation C was added to
 application claims AB to obtain the patent to ABC, and now the reissue
 application presents claims to AC or AB broad C. Such
 reissue claims avoid the effect of the recapture rule because they are
 broader in a way that does not attempt to reclaim what was surrendered
 earlier. Mentor Corp. v. Coloplast, Inc., 998 F.2d 992,
 994, 27 USPQ2d 1521, 1525 (Fed. Cir. 1993). Such claims are considered to be
 broader in an aspect not 
 "germane to a
 prior art rejection,"
 
 
 and thus are not barred by
 recapture. In re Clement, 131 F.3d at 1470, 45 USPQ2d at
 1165.
 

 Reissue claims that are broader than the original patent
 claims by deletion of a limitation or claim requirement other than the
 
 "surrender-generating
 limitation"
 
 
 will avoid the effect of
 recapture, regardless of the nature of the narrowing in the
 claims, and even if the claims are not narrowed at all from the scope of the
 patent claims.
 

 3. Reissue Claims Retain Surrender Generating Limitation(s) without
 Change and Are Narrower or Broader in Unrelated Aspect(s): In this instance, there is clearly no
 recapture . In the reissue application, there has been no
 change in the claims related to the matter surrendered in the original
 application for the patent.
 

 In this instance, element C was added to the AB combination
 to provide ABC and overcome a rejection, and the patent was issued. The
 reissue omits element B and adds element Z, to thus claim ACZ. There is no
 recapture because the surrender generating element C has not been modified
 in any way. (Note, however, that if, when element C was added to AB,
 applicant argued that the association of newly added C with B provides a
 synergistic (unexpected) result to thus define over the art, then neither
 element B nor element C could be entirely omitted in the reissue
 application. See the discussion above as to surrender and recapture based
 upon argument and example 4 below.)
 

 4. Reissue Claims Retain, in Broadened Form, the Surrender Generating
 Limitation(s): In this case, there may be
 recapture .
 

 Assume the combination AB was originally claimed in the
 application, and was amended in reply to a rejection to add element C and
 thus provide the combination ABC (after which the patent issued). A reissue
 application is then filed, and the reissue application claims are directed
 to the combination ABC broadened . The
 ABC broadened claims are narrowed in scope when
 compared with the canceled claim subject matter AB (e.g., the original
 claims), because of the addition of C broadened . Thus,
 the claims retain, in broadened form, the limitation argued/added to
 overcome a rejection in the original prosecution. In this instance, a
 recapture rejection can be made even though
 ABC broadened is narrower than canceled claim
 subject matter AB, if C broadened was “well known in
 the prior art” or otherwise fails to materially narrow the application
 claims to avoid recapture of the surrendered subject matter. In
 Mostafazadeh , the panel explained that “if reissue
 claims ‘materially narrow[ed]’ the claims relative to the original claims,”
 there is no impermissible recapture, where “ full or substantial
 recapture of the subject matter surrendered during prosecution is
 avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98
 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the
 patentee modifies the added limitation such that it is broader than the
 patented claim yet still materially narrows relative to the original claim,
 the recapture rule does not bar reissue.” In re Youman et
 al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir.
 2012). Even if the retained portion of the modified limitation is not well
 known, there may still be impermissible recapture. For example, “[w]here the
 modified limitation was contained within the prior art relied upon by the
 examiner in the original prosecution … the limitation is not materially
 narrowing.” Id. Any recapture of surrendered subject
 matter that was contained in prior art of the original prosecution forms the
 ceiling for determining whether the modified limitation is materially
 narrowing. Id. 

 IV. REISSUE TO TAKE ADVANTAGE OF pre-AIA 35 U.S.C. 103(b): For patents issued on an application subject to the pre-AIA prior
 art regime (pre-AIA patents), a patentee may file a reissue application to permit
 consideration of process claims which qualify for pre-AIA 35 U.S.C. 103(b) 
 treatment if a patent is granted on an application entitled to the benefit of
 pre-AIA 35
 U.S.C. 103(b) , without an election having been made as a result
 of error without deceptive intent. See MPEP §
 2147 . This is not to be considered recapture. 
 The addition of process claims, however, will generally be considered to be a
 broadening of the invention ( Ex parte
 Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such
 addition must be applied for within two years of the grant of the original patent, or
 in an appropriate continuing broadening reissue application claiming the benefit of a
 prior-filed broadening reissue application filed within two years of the grant of the
 original patent. See also MPEP § 1412.03 as to broadened
 claims.
 

 V. REISSUE FOR ARTICLE CLAIMS WHICH ARE FUNCTIONAL DESCRIPTIVE MATERIAL STORED ON
 A COMPUTER-READABLE MEDIUM: A patentee may file a reissue application to permit consideration of
 article of manufacture claims (not presented in the patent to be reissued) which are
 functional descriptive material stored on a computer-readable medium, where these
 article claims correspond to the process or machine claims which have been patented.
 The addition of these “article” claims will generally be considered to be a
 broadening of the invention ( Ex parte
 Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such
 addition must be applied for within two years of the grant of the original patent.
 See also MPEP §
 1412.03 as to broadened claims.
 

 VI. REJECTION BASED UPON RECAPTURE: Reissue claims which recapture surrendered subject matter should be
 rejected using form paragraph 14.17 .
 

 ¶ 14.17 Rejection, 35 U.S.C. 251, Recapture

 Claim [1] rejected under 35 U.S.C. 251 as being an impermissible
 recapture of broadened claimed subject matter surrendered in the application for the patent
 upon which the present reissue is based. In re McDonald, 43 F.4th 1340,
 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor
 LLC , 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re
 Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram
 Mostafazadeh and Joseph O. Smith , 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011);
 North American Container, Inc. v. Plastipak Packaging, Inc. , 415 F.3d
 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc. , 258
 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein,
 Inc. , 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re
 Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v.
 United States , 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The
 reissue application contains claim(s) that are broader than the issued patent claims. The
 record of the application for the patent family shows that the broadening aspect (in the
 reissue) relates to claimed subject matter that applicant previously surrendered during the
 prosecution of the application. Accordingly, the narrow scope of the claims in the patent was
 not an error within the meaning of 35 U.S.C. 251 , and the broader scope of
 claim subject matter surrendered in the application for the patent cannot be recaptured by the
 filing of the present reissue application.
 

 

 [2] 

 Examiner Note:

 In bracket 2, the examiner should explain the specifics of why
 recapture exists, including an identification of the omitted/broadened claim limitations in
 the reissue which provide the “broadening aspect” to the claim(s), where in the original
 application the narrowed claim scope was presented/argued to obviate a rejection/objection,
 and that the reissue claim is not materially narrowed so as to avoid recapture (i.e.,
 explain the prima facie analysis done for steps 1-3). See
 MPEP
 § 1412.02 . 
 

 
 VII. REBUTTAL BY THE REISSUE APPLICANT The reissue applicant may rebut a recapture rejection by
 demonstrating that a claim rejected for recapture includes one or more claim
 limitations that “materially narrow” the reissue claims in a way that relates to the
 subject matter surrendered during original prosecution. 
 

 Examples of reissue application claims that are to be rejected for
 recapture under 35
 U.S.C. 251 include:
 

 Assume that the original application claim ABCD was amended during
 prosecution and results in a patent claim ABCD E .
 

 1. ABCD → Eliminates E , the surrender generating
 limitation (SGL).
 

 2. ABCD F → Eliminates E , the SGL; adds
 narrowing limitation F , which was determined to be not materially
 narrowing under step 3.
 

 3. ABCD E broader → Broadens E , the SGL;
 E broader is well known in the art.
 

 4. ABCD E broader F → Broadens E ; E broader is well
 known in the art; adds narrowing limitation F , which was determined to
 be not materially narrowing under step 3.
 

 In these four examples, a recapture rejection would be made. For
 examples 2 and 4, applicant may try to rebut the recapture rejections by showing that
 limitation F “materially narrows” the reissue claims in a way that
 relates to the subject matter surrendered during original prosecution. If such is the
 case, the reissue applicant should point out explicitly what limitation has been
 added to the claims (in this case, limitation F) and how it materially narrows the
 claims.
 

 VIII. FLOWCHART See the recapture-analysis flow chart which follows for assistance
 in determining whether recapture is present, consistent with the case law discussed
 above.
 

 

 

 
 1412.03 Broadening Reissue Claims [R-10.2019]

 
 35 U.S.C. 251 
 Reissue of defective patents 

 *****

 
 (d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—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.
 

 
 

 35 U.S.C.
 251(d) and the corresponding final paragraph of pre-AIA 35 U.S.C.
 251 prescribe a 2-year limit for filing applications for
 broadening reissues.
 

 I. MEANING OF “BROADENED REISSUE CLAIM” A broadened reissue claim is a claim which enlarges the scope of the
 claims of the patent, i.e., a claim which is greater in scope than each and every
 claim of the original patent. If a disclaimer is filed in the patent prior to the
 filing of a reissue application, the disclaimed claims are not 
 part of the “original patent” under 35 U.S.C. 251 . The court in
 Vectra Fitness Inc. v. TNWK Corp., 162 F.3d 1379, 1383, 49
 USPQ2d 1144, 1147 (Fed. Cir. 1998) held that a reissue application violated the
 statutory prohibition under 35 U.S.C. 251 against broadening
 the scope of the patent more than 2 years after its grant because the reissue claims
 are broader than the claims that remain after the disclaimer, even though the reissue
 claims are narrower than the claims that were disclaimed by the patentee before
 reissue. The reissue application was bounded by the claims remaining in the patent
 after a disclaimer is filed. 
 

 A claim of a reissue application enlarges the scope
 of the claims of the patent if it is broader in at least one 
 respect, even though it may be narrower in other respects. See, e.g.,
 37 CFR
 1.175(b) . A claim in the reissue application which includes
 subject matter not covered by the patent claims enlarges the scope of the patent
 claims. For example, if any amended or newly added claim in the reissue contains
 within its scope any conceivable product or process which would not have infringed
 the patent, then that reissue claim would be broader than the patent claims.
 Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 4
 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729,
 730, 126 USPQ 155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601,
 603, 120 USPQ 185, 186 (CCPA 1958). A claim which covers something that the original
 claims do not is a broadened claim. A claim would be considered a broadening claim if
 the patent owner would be able to sue any party for infringement who previously could
 not have been sued for infringement. Thus, where the original patent claims only the
 process, and the reissue application newly adds product claims, the scope of the
 claims has been broadened because a party could not necessarily be sued for
 infringement of the product based on the claims of the original patent (if it were
 made by a different process).
 

 The addition of combination claims in a reissue application where
 only subcombination claims were present in the original patent could be a broadening
 of the invention. The question which must be resolved in this case is whether the
 combination claims added in the reissue would be for “the invention as claimed” in
 the original patent. See Ex parte Wikdahl, 10 USPQ2d 1546, 1549
 (Bd. Pat. App. & Inter. 1989). The newly added combination claims should be
 analyzed to determine whether they contain every limitation of the subcombination of
 any claim of the original patent. If the combination claims (added in the reissue)
 contain every limitation of the subcombination (which was claimed in the original
 application), then infringement of the combination must also result in infringement
 of the subcombination. Accordingly, the patent owner could not , if a
 reissue patent issues with the combination claims, sue any new party for
 infringement who could not have been sued for infringement of the original patent.
 Therefore, broadening does not exist , in spite of the addition of the
 combination. 
 

 II. SCOPE OF DEPENDENT CLAIM ENLARGED - NOT BROADENING As pointed out above, a claim will be considered a broadened reissue
 claim when it is greater in scope than each and every claim of the
 patent to be reissued. A corollary of this is that a claim which has been
 broadened in a reissue as compared to its scope in the patent 
 is not a broadened reissue claim if it is narrower than, or equal in scope to, any
 other claim which appears in the patent. A common example of this is where dependent
 claim 2 is broadened via the reissue (other than the addition of a process step to
 convert an intermediate to a final product), but independent claim 1 on which it is
 based is not broadened. Because a dependent claim is construed to contain all the
 limitations of the claim upon which it depends, claim 2 must be at least as narrow as
 claim 1 and is thus not a broadened reissue claim.
 

 III. NEW CATEGORY OF INVENTION ADDED IN REISSUE - GENERALLY IS BROADENING The addition of process claims as a new category of invention to be
 claimed in the patent (i.e., where there were no method claims present in the
 original patent) is generally considered as being a broadening of the invention. See
 Ex parte Wikdahl, 10 USPQ2d 1546, 1549 (Bd. Pat. App. &
 Inter. 1989). A situation may arise, however, where the reissue application adds a
 limitation (or limitations) to process A of making the product A claimed in the
 original patent claims. For example:
 

 
 (1) a process of using the product A (made by the process of the
 original patent) to make a product B, disclosed but not claimed in the original
 patent; or
 

 (2) a process of using the product A to carry out a process B
 disclosed but not claimed in the original patent.
 

 
 Although this amendment of the claims adds a method of making
 product B or adds a method of using product A, this is not
 broadening (i.e., this is not an enlargement of the scope of the
 original patent) because the newly claimed invention contains all the limitations of
 the original patent claim(s).
 

 IV. WHEN A BROADENED CLAIM CAN BE PRESENTED A broadened claim can be presented within two years from the grant
 of the original patent in a reissue application. In addition, a broadened claim can
 be presented after two years from the grant of the original patent
 in a broadening reissue application which was filed within two
 years from the grant. Where any intent to broaden is unequivocally indicated in the
 reissue application within the two years from the patent grant, a broadened claim can
 subsequently be presented in the reissue after the two year period. (Note: A
 statement that “the patent is wholly or partly inoperative by reason of claiming more
 or less than applicant had a right to claim” is NOT an unequivocal statement of an
 intent to broaden.) Thus, a broadened claim may be presented in a reissue application
 after the two years, even though the broadened claim presented after the two years is
 different than the broadened claim presented within the two years. Finally, if intent
 to broaden is indicated in a parent reissue application within the two years, a
 broadened claim can be presented in a continuing (continuation or divisional) reissue
 application after the two year period. See In re Staats, 671 F.3d
 1350, 101 USPQ2d 1930 (Fed. Cir. 2012) which dealt with a continuation of a first
 reissue application in which the first reissue application was filed within two years
 of the patent grant. The broadened claims in the continuation reissue application
 were to an embodiment “alternative” to, and “unrelated” to, the broadened claims of
 the first reissue application that were filed within the 2-year limit. Notice of
 broadening was found to be sufficient in this instance, with the court holding that
 there is no basis for requiring the later broadened claims in the continuation
 reissue application to be related to, or directed to the same embodiment as in the
 first reissue application. Id. at 1355, 101 USPQ2d at 1934.
 “[A]fter a broadening reissue application has been filed within the two year
 statutory period, an applicant is ‘not barred from making further broadening changes’
 after the two year period” regardless of whether the further broadening changes are
 unrelated to the prior broadening reissue application. Id. A
 reissue application filed on the 2-year anniversary date from the patent grant is
 considered to be filed within 2 years of the patent grant. See Switzer v.
 Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) for a similar rule in
 interferences.
 

 See also the following cases which pertain to broadened
 reissues:
 

 In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir.
 1997) (Broadened claims in a continuing reissue application were properly rejected
 under 35 U.S.C.
 251 because the proposal for broadened claims was not made (in
 the parent reissue application) within two years from the grant of the original
 patent and the public was not notified that broadened claims were being sought until
 after the two-year period elapsed.) 
 

 In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985),
 cert. denied, 476 U.S. 1183 (1986) (The failure by an applicant
 to include an oath or declaration indicating a desire to seek broadened
 claims within two years of the patent grant will bar a subsequent
 attempt to broaden the claims after the two year limit.)
 

 In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir.
 1985) (en banc) (A reissue application with broadened claims was
 filed within two years of the patent grant; however, the declaration was executed by
 the assignee rather than the inventor. The Federal Circuit permitted correction of
 the improperly executed declaration to be made more than two years after the patent
 grant.)
 

 In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970) (If
 the reissue application is timely filed within two years of the original patent grant
 and the applicant indicates in the oath or declaration that the claims will be
 broadened, then applicant may subsequently broaden the claims in the pending reissue
 prosecution even if the additional broadening occurs beyond the two year limit.). 
 

 Form paragraphs 14.12 and
 14.13 may be used in rejections based on improper
 broadened reissue claims.
 

 ¶ 14.12 Rejection, 35 U.S.C. 251, Broadened Claims After Two Years

 Claim [1] rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. [2] A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which
 would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
 

 Examiner Note:

 The claim limitations that broaden the scope should be identified and
 explained in bracket 2. See MPEP § 1412.03 .
 

 

 ¶ 14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed by
 Assignee
 

 Claim [1] rejected under
 35 U.S.C.
 251 as being improperly broadened in a reissue application made and
 sworn to by the assignee. The application for reissue may be made and sworn to by the assignee
 of the entire interest only if the application does not seek to enlarge the scope of the
 claims of the original patent or, for reissue applications filed on or after September 16,
 2012, the application for the original patent was filed by the assignee of the entire interest
 under 37 CFR
 1.46 . 
 

 [2] A claim is broader in scope than the
 original claims if it contains within its scope any conceivable product or process which would
 not have infringed the original patent. A claim is broadened if it is broader in any one
 respect even though it may be narrower in other respects.
 

 Examiner Note:

 The claim limitations that broaden the scope should be identified and
 explained in bracket 2. See MPEP § 1412.03 .
 

 
 V. BROADENING REISSUE - OATH/DECLARATION REQUIREMENTS 

 A. Reissue Application Filed On or After September 16, 2012 Any reissue application filed on or after September 16, 2012 must
 be applied for by all of the patentees. However, in a broadening reissue
 application filed on or after September 16, 2012, the original reissue oath or
 declaration must be signed by all of the inventors, unless the application for the
 patent (for which reissue is requested) was filed under 37 CFR
 1.46 by the assignee of the entire interest (see
 37
 CFR 1.175(c)(2) ). See also MPEP § 1414 . A
 supplemental oath or declaration to account for errors corrected subsequent to the
 original oath or declaration is not needed for the application; however, a
 replacement oath or declaration would still be required where there is a failure
 to identify any error, or a failure to identify at least one error of the type
 that would support a reissue. Such a replacement oath or declaration must be
 signed by all of the inventors, unless the application for the patent (for which
 reissue is requested) was filed under 37 CFR 1.46 by the assignee of
 the entire interest.
 

 For any broadening reissue application filed on or
 after September 16, 2012, the inventor’s oath or declaration must identify a specific
 claim that the application seeks to broaden. See 37 CFR
 1.175(b) . A general statement, e.g., that all claims are
 broadened, is not sufficient to satisfy this requirement. 
 

 B. Reissue Application Filed Before September 16, 2012 A broadening reissue application filed before
 September 16, 2012 must be applied for by all of the inventors (patentees), that
 is, the original reissue oath or declaration must be signed by all of the
 inventors. See also MPEP § 1414 . The error in not presenting broader claims
 must have been made without deceptive intent. If a supplemental oath or
 declaration in a broadening reissue application is needed in the application in
 order to fulfill the requirements of 37 CFR 1.175 , the supplemental
 reissue oath or declaration must be signed by all of the inventors. See
 In re Hayes, 53 USPQ2d 1222 (Comm’r Pat. 1999) and
 MPEP § 1414.03 .
 

 

 
 1412.04 Correction of Inventorship By Reissue [R-11.2013]

 The correction of misjoinder of inventors has been held to be a ground
 for reissue. See Ex parte Scudder, 169 USPQ 814, 815 (Bd. App. 1971)
 wherein the Board held that 35 U.S.C. 251 authorizes reissue
 applications to correct misjoinder of inventors where 35 U.S.C. 256 is
 inadequate. See also A.F. Stoddard & Co. v. Dann, 564 F.2d 556,
 567 n.16, 195 USPQ 97, 106 n.16 (D.C. Cir. 1977) wherein correction of inventorship from
 sole inventor A to sole inventor B was permitted in a reissue application. The court
 noted that reissue by itself is a vehicle for correcting inventorship in a patent.
 

 See MPEP §§ 602.01(c) et seq. for correction of inventorship in an application other than a
 reissue application.
 

 I. CERTIFICATE OF CORRECTION AS A VEHICLE FOR CORRECTING INVENTORSHIP While reissue is a vehicle for correcting inventorship in a patent,
 correction of inventorship should be effected under the provisions of
 35 U.S.C.
 256 and 37 CFR 1.324 by filing a request
 for a certificate of correction if:
 

 
 (A) the only change being made in the patent is to correct the
 inventorship; and 
 

 (B) all parties are in agreement and the inventorship issue is not
 contested.
 

 
 See MPEP § 1481.02 for the procedure to be followed to obtain
 a certificate of correction for correction of inventorship.
 

 II. REISSUE AS A VEHICLE FOR CORRECTING INVENTORSHIP Where the provisions of 35 U.S.C. 256 and
 37 CFR
 1.324 do not apply, a reissue application is the appropriate
 vehicle to correct inventorship. The failure to name the correct inventive entity is
 an error in the patent which is correctable under 35 U.S.C. 251 . The reissue oath
 or declaration pursuant to 37 CFR 1.175 must state that the
 applicant believes the original patent to be wholly or partly inoperative or invalid
 through error of a person being incorrectly named in an issued patent as the
 inventor, or through error of an inventor incorrectly not named in an issued patent,
 and, for applications filed before September 16, 2012, must also state that such
 error arose without any deceptive intention on the part of the applicant. The reissue
 oath or declaration must, as stated in 37 CFR 1.175 , also comply with
 one of 37 CFR
 1.63 , 1.64 , or 1.67 if
 the reissue application is filed on or after September 16, 2012, or comply with
 pre-AIA 37
 CFR 1.63 if filed before September 16, 2012. 

 The reissue application with its reissue oath or
 declaration under 37 CFR 1.175 provides a complete
 mechanism to correct inventorship. See A.F. Stoddard & Co. v.
 Dann, 564 F.2d at 567, 195 USPQ at 106. A request under
 37 CFR
 1.48 or a petition under 37 CFR 1.324 cannot be used to
 correct the inventorship of a reissue application. If a request under
 37 CFR
 1.48 or a petition under 37 CFR 1.324 is filed in a
 reissue application, the request or petition should be dismissed and the processing
 or petition fee refunded. The material submitted with the request or petition should
 then be considered to determine if it complies with 37 CFR
 1.175 . If the material submitted with the request or petition
 does comply with the requirements of 37 CFR 1.175 (and the reissue
 application is otherwise in order), the correction of inventorship will be permitted
 as a correction of an error in the patent under 35 U.S.C.
 251 . 
 

 The correction of inventorship does not enlarge the scope of the
 patent claims. Where a reissue application does not seek to enlarge the scope of the
 claims of the original patent, the reissue oath may be made and sworn to, or the
 declaration made, by the assignee of the entire interest under 37 CFR 1.172 .
 An assignee of part interest may not file a reissue application to correct
 inventorship where the other co-owner did not join in the reissue application and has
 not consented to the reissue proceeding. See Baker Hughes Inc. v.
 Kirk, 921 F. Supp. 801, 809, 38 USPQ2d 1885, 1892 (D.D.C. 1995). See
 35 U.S.C.
 251 . On the other hand, an assignee of the entire interest can
 consent to and sign the reissue oath/declaration that adds or
 deletes the name of an inventor by reissue (e.g., correct inventorship
 from inventor A to inventors A and B) without the original inventor’s consent. Thus,
 the assignee of the entire interest can file a reissue to change the inventorship to
 one which the assignee believes to be correct, even though an inventor might
 disagree. The protection of the assignee’s property rights in the application and
 patent are statutorily based in 35 U.S.C. 118 . For additional
 information pertaining to the right of an assignee to take action, see
 MPEP §
 324 (for applications filed before September 16, 2012) and
 §
 325 (for applications filed on or after September 16,
 2012). Where the name of an inventor X is to be deleted in a reissue application to
 correct inventorship in a patent, and inventor X has not assigned his/her rights to
 the patent, inventor X has an ownership interest in the patent. Inventor X must
 consent to the reissue ( 37 CFR 1.172(a) ), even though
 inventor X’s name is being deleted as an inventor. If X’s name is being deleted as an
 inventor, X consents to the reissue application, and the remaining inventors sign the
 reissue oath or declaration, X need not sign. If, however, an assignee signs the
 reissue oath or declaration, inventor X’s signature must also be included in the
 reissue oath or declaration as an assignee.
 

 

 

 
 1412.05 Correction of Inventorship in a Broadening Reissue
 Application [R-08.2017]
 
 I. REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012 [Editor Note: See subsection II, below, for reissue applications filed
 before September 16, 2012.] 

 Where a reissue application to correct inventorship is filed on or after
 September 16, 2012 , and the application for the original patent was
 filed under 37
 CFR 1.46 by the assignee of the entire interest, the assignee
 may sign the inventor’s oath or declaration even where the application also seeks to
 enlarge the scope of the claims of the original patent. If the application for the
 original patent was not filed under 37 CFR 1.46 by the assignee of
 the entire interest, then the signature of all of the inventors is needed on the oath
 or declaration except as provided for in 37 CFR 1.64 . Note that under
 37 CFR
 1.64 , the assignee of the entire interest may sign a substitute
 statement where the inventor is deceased, legally incapacitated, refuses to execute
 the reissue oath or declaration, or cannot be found or reached after diligent effort.
 See MPEP §
 604 .
 

 In situations where a reissue application seeks to
 correct inventorship in the patent and the inventors sign the reissue oath or
 declaration for a broadening reissue application, the correct inventive entity must
 sign the reissue oath or declaration. 
 

 If an inventor is being deleted in a
 reissue application to correct inventorship in a patent and the inventors are
 required to sign the oath or declaration, the inventor being deleted need not sign
 the reissue oath or declaration. For example, a reissue application is filed to
 correct inventorship from inventors A, B, and C (listed as inventors on the patent)
 to inventors A and B. Inventor C is being deleted as a named inventor. In such a
 case, A and B are the correct inventors, and accordingly, (in situations where the
 assignee is not permitted to sign) inventors A and B must sign the reissue oath or
 declaration but inventor C need not sign the reissue oath or declaration. 
 

 If an inventor is being added in a
 reissue application to correct inventorship in a patent or to correct an error in the
 scope of the claims that results in the addition of one or more inventors, the
 inventor being added must sign the reissue oath or declaration together with the
 inventors previously designated on the patent. 
 

 
 Example 1: A reissue application is filed to
 correct the inventorship from inventors A and B (listed as inventors on the
 patent) to inventors A, B, and C. Inventor C is the inventor being added. 
 

 

 
 Example 2: Inventors A and B are correctly listed
 on the patent. A reissue application for the patent is filed to add new claims.
 Inventor C is being added because of the addition of the new claims.
 

 

 In both examples, A, B, and C are the correct
 inventors in the reissue application, and accordingly, each of A, B, and C must sign
 the reissue oath or declaration. If inventor C refuses to sign, the assignee of the
 entire interest may sign a substitute statement under 37 CFR
 1.64 . Thus, even where an application changes the claims to
 enlarge the scope of the patent claims in addition to the inventorship change, and
 the application for the original patent was not filed under 37 CFR 1.46 
 by the assignee of the entire interest, the assignee can add an inventor who refuses
 to sign by making use of 37 CFR 1.64 .
 

 

 II. REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012 [Editor Note: See subsection I, above, for reissue applications filed on or
 after September 16, 2012.] 

 Where a reissue application to correct inventorship
 is filed before September 16, 2012 , and that application
 also changes the claims to enlarge the scope of the patent claims, the signature of
 all the inventors is needed. However, if an inventor refuses to
 sign the reissue oath or declaration because the inventor believes the change in
 inventorship (to be effected) is not correct, the reissue application can still be
 filed with a petition under pre-AIA 37 CFR 1.47 without that
 inventor’s signature, provided the written consent of all owners/assignees as
 required by pre-AIA
 37 CFR 1.172(a) is also submitted. Compare, however, the
 situation where a patent to inventors X and Y has no assignee, a reissue application
 is filed by inventor Y to delete the name of inventor X as an inventor and to broaden
 the patent. Inventor X refuses to sign the reissue oath or declaration and refuses to
 provide the consent as required by pre-AIA 37 CFR 1.172(a) . In this
 instance, a pre-AIA 37 CFR 1.47 petition would not be appropriate to
 permit the filing of the reissue application because the consent requirement of
 pre-AIA 37 CFR
 1.172(a) for each owner/assignee is not met. Resort to the
 courts would be required to delete the name of inventor X as an inventor where X will
 not consent to the filing of a reissue application. As stated in the second paragraph
 of pre-AIA 35
 U.S.C. 256 , “[t]he court before which such matter is called in
 question may order correction of the patent on notice and hearing of all parties
 concerned and the Director shall issue a certificate accordingly.”
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1400.01-Introduction 

 1401-Reissue 

 1402-Grounds for Filing 

 1403-Diligence in Filing 

 1404-Submission of Papers Where Reissue Patent Is in Litigation 

 1405-Reissue and Patent Term 

 1406-Citation and Consideration of References Cited in Original Patent 

 1407-1409-[Reserved] 

 1410-Content of Reissue Application 
 1410.01-Reissue Applicant and Inventor's Oath or Declaration 

 1410.02-Assignee Consent to the Reissue 

 
 

 1411-Form of Specification 
 1411.01-Certificate of Correction or Disclaimer in Original Patent 

 1411.02-New Matter 

 
 

 1412-Content of Claims 
 1412.01-Reissue Claims Must Be for Same General Invention 

 1412.02-Recapture of Canceled Subject Matter 

 1412.03-Broadening Reissue Claims 

 1412.04-Correction of Inventorship By Reissue 

 1412.05-Correction of Inventorship in a Broadening Reissue Application 

 
 

 1413-Drawings 

 1414-Content of Reissue Oath/Declaration 
 1414.01-Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012 

 1414.02-Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012 

 1414.03-Supplemental Reissue Oath/Declaration 

 
 

 1415-Reissue Application and Issue Fees 
 1415.01-Maintenance Fees on the Original Patent 

 
 

 1416-No Physical Surrender of Original Patent 

 1417-Claim for Priority Under 35 U.S.C. 119(a)-(d) 

 1418-Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability 

 1419-1429-[Reserved] 

 1430-Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette 

 1431-1439-[Reserved] 

 1440-Examination of Reissue Application 

 1441-Two-Month Delay Period 
 1441.01-Protest and Pre-issuance Submission in Reissue Applications 

 
 

 1442-Special Status 
 1442.01-Litigation-Related or PTAB Trial-Related Reissues 

 1442.02-Concurrent Litigation or Trial Before the Patent Trial and Appeal Board 

 1442.03-Litigation Stayed 

 1442.04-Litigation Involving Patent 

 1442.05-Court Ordered Filing of Reissue Application 

 
 

 1443-Initial Examiner Review 

 1444-Review of Reissue Oath/Declaration 

 1445-Reissue Application Examined in Same Manner as Original Application 

 1446-1447-[Reserved] 

 1448-Fraud, Inequitable Conduct, or Duty of Disclosure Issues 

 1449-Protest Filed in Reissue Where Patent Is in Interference or Contested Case 
 1449.01-Concurrent Office Proceedings 

 1449.02-Interference in Reissue 

 1449.03-Reissue Application in Derivation Proceeding 

 
 

 1450-Restriction and Election of Species Made in Reissue Application 

 1451-Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending 

 1452-Request for Continued Examination of Reissue Application 

 1453-Amendments to Reissue Applications 

 1454-Appeal Brief 

 1455-Allowance and Issue 

 1456-Reissue Review 

 1457-Design Reissue Applications and Patents 

 1458-1459-[Reserved] 

 1460-Effect of Reissue 

 1461-1469-[Reserved] 

 1470-Public Access to Reissue Applications 

 1471-1479-[Reserved] 

 1480-Certificates of Correction — Office Mistake 
 1480.01-Expedited Issuance of Certificates of Correction - Error Attributable to Office 

 
 

 1481-Certificates of Correction - Applicant’s Mistake 
 1481.01-Correction of Assignees’ Names 

 1481.02-Correction of Named Inventor 

 1481.03-Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits 

 
 

 1482-1484-[Reserved] 

 1485-Handling of Request for Certificates of Correction 

 1486-1489-[Reserved] 

 1490-Disclaimers 

 

 

 
 

 
 
 

 
 

 

 
 
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