Patentee in Reissue Application Permitted to Add New Claims Broader Than Non-Elected Claims in Original Patent

Author:Mr Brian Seidleck
Profession:McDermott Will & Emery

In a case of first impression, the U.S. Court of Appeals for the Federal Circuit has held that broader generic claims may be presented in a reissue application even though they may encompass non-elected inventions from the original application. In re Doyle, Case No. 01-1439 (Fed. Cir. June 12, 2002).

The inventor Doyle originally filed an application in which the examiner imposed a nine-way restriction requirement. Doyle elected the method claims drawn to using a genus catalyst to insert carbene fragments into carbon-hydrogen, oxygen-hydrogen, nitrogen-hydrogen, and silicon-hydrogen bonds. The remaining claims were cancelled and no divisional applications were filed during the pendency of the application which covered the non-elected groups. However, within two years of the issuance of the patent in question, Doyle filed a reissue application. In his request for reissue, Doyle sought to broaden the claims to cover the reaction of the defined catalysts with a genus of prochiral molecules, not simply the insertion of the carbene fragments.

The Board of Patent Appeals and Interferences, citing In re Orita, precluded Doyle from obtaining claims in a reissue application that broadly read on the subject matter of non-elected groups. The Federal Circuit reversed, holding that Doyle's reissue application was permissible under 35 U.S.C. ß 251, since Doyle attempted to broaden his claims to cover subject matter that he...

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