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. § 251, since Doyle attempted to broaden his claims to cover subject matter that he invented and disclosed, but that he inadvertently failed to claim in the original patent. The Federal Circuit held that the Orita doctrine, which prevents a reissue applicant from obtaining substantially identical claims to those of the non-elected groups, does not apply to Doyle’s reissue application.
The Court stated that Doyle’s broadened generic claims could have been prosecuted in the original application since, under In re Orita, they are linking claims. In other words, Doyle’s linking claims are neither identical to nor substantially similar to the non-elected claims, and therefore Doyle’s error is redressable by reissue.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.